The laws that govern trademark registration The Trade Marks Act, 2020 r/w in conjunction with the Trade Marks Rules, 2015.
Overview of Trademark Registration in the British Virgin Islands
There are two types of marks, i.e. trademarks and service marks. A trademark distinguishes the source of goods, whereas a service mark distinguishes the source of services, which implies that a trade or service mark distinguishes the goods and services of an individual or an enterprise from those of others. Marks are usually 2-dimensional, but can also be 3-dimensional. E.g. forms of containers, holders or packages or the shape of the goods themselves can be used as trademarks.
Trademark Registration can be beneficial for the entrepreneur as it helps in safeguarding the identity, i.e. the symbol/mark of the business. Trademark Registration in the British Virgin Islands can be completed seamlessly through proper advice and assistance.
Laws and Authority responsible for trademark registration in the British Virgin Islands
The registration of trademarks in the British Virgin Islands is governed by The Trade Marks Act, 2020, r/w in conjunction with the Trade Marks Rules, 2015, and the authority responsible for trademark registration on this island is the BVI Financial Services Commission (BVIFSC).
Eligible signs of being registered as a Trademark in the British Virgin Islands
A sign can be registered as a trademark if it can be graphically represented and distinguishes the goods and/or services of one person from those of another person. Examples of acceptable trademarks include words, names, acronyms, letters, numbers, devices, colours, colour combinations, shapes, sounds, smells, tastes and any combination of signs. The definition of trademark encompasses trademarks, service marks, collective marks and certification marks.
What cannot be considered a trademark in the British Virgin Islands?
The following shall not be registered as trademarks under the Trademarks Act:
- signs that are unable to fulfil the definition of a ‘trademark
- trademarks that don't have any distinctive character
- trademarks consisting of exclusively signs or indications that can serve in trade for designating the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or provision of services, or other characteristics of goods or services;
- trademarks that consist exclusively of signs or indications which have become customary in the current language or in bona fideand established practices of the trade;
- signs that consist exclusively of a shape which results from the nature of the goods themselves;
- signs that consist exclusively of a shape of goods which is necessary to obtain a technical result;
- signs that consist exclusively of a shape which gives substantial value to the goods;
- signs that consist exclusively of letters, numerals or numbers, or a combination of letters, numerals or numbers, which are not defined in such a manner as to give them a distinctive character;
- signs that are contrary to public policy or to accepted principles of morality;
- trademarks that contain a protected geographical indication and relate to specified goods that do not originate from the place indicated in the protected geographical indication;
- trademarks, the use of whom is prohibited in the British Virgin Islands by any law;
- trademarks that are filed in bad faith;
- trademarks consisting of or containing national or international flags, armorial bearings, official signs or hallmarks without the requisite authorisation; and
- Trademarks that, in relation to the United Kingdom, consist of or contain any of the following without the requisite consent:
- any of the principal armorial bearings of the arms, or the royal arms
- any insignia or device that so nearly resembles the royal armsor
- any such armorial bearing which can be likely to be mistaken for the royal arms or the principal armorial bearings thereof;
- a representation of Her Majesty or any other member of the royal family
- a representation of the royal flag or royal crown
- Or any colourable imitation thereof; or words, letters or devices that are likely to lead persons to think that the applicant either has or recently has had royal patronage or authorisation.
Documents Required for Trademark Registration in BVI
The below-mentioned documents are required for Trademark Registration in the British Virgin Islands:
- A request for registration of the trade mark;
- The name and address of the applicant;
- A statement of the goods or services in relation to which it is sought to register the trade mark;
- A representation of the trade mark; and
- Such other information, document or matter as may be prescribed;
- The application shall state, If —
- The trade mark is used, by the applicant or with his consent, for the goods or services regarding which it is sought to be registered; or
- The applicant has an honest intention to use the trade mark or to allow it to be used for the goods or services concerned.
- The application shall be filed in the English language.
- Where a representation of the trade mark is accompanied or described by words or numerals other than English words or numerals and form part of the trade mark sought to be registered, the application shall have a certified translation into, or equivalent meaning or transliteration in, the English language of those words or numerals attached to the original application.
Procedure of Trademark Registration in the British Virgin Islands
The procedure which must be followed for trademark registration in the British Virgin Islands is elaborated below -
Identification of the class of goods/services
As per the International Classification of Goods and Services as prescribed by the Nice Agreement to classify trademarks, the applicant is required to decide on the types of goods/services for which trademark registration is needed. Multi-class applications will be allowed if the goods/services match with more than one type in the Nice Agreement.
Searching for existing trademarks and intellectual property in BVI
After determining the type of goods/services, there will be a requirement to search if it exists or not. In order to conduct a search, the applicant must search with the name of the trademark.
Filing the Application
The applicant must file the application for the registration of a trademark in Form TM1 and submit it to the British Virgin Islands Registrar. The Registrar shall assign a registration number, upon the filing of an application.
An application for trademark registration can be made in more than one class of the Nine Classification and must specify the class or classes of goods/services to which the application is related.
Review of the application by the Registrar
Upon the receipt of the application form, the Registrar would review the documents to make sure they satisfy the minimum requirements according to the Trade Marks Rules 2015.
If the Registrar is not satisfied with the fulfilment of the prerequisites as prescribed under the said rules, they shall send a notice to inform the applicant in respect of such non-fulfilment and direct them to comply with the requirement. If, after 60 days period, the applicant fails to comply with a notice. The application shall be treated as abandoned or never to have been made.
Advertisement for public and successful registration
After the completion of the above-mentioned steps, the application will be published and made available for publication in the Gazette. Once approved by the Registrar, a trade mark is registered as of the date of the filing of the application for registration.
Any interested party will be able to oppose the registration within 2 months, If the office receives an objection from the opponent, the applicant will be notified and must respond. A decision will be made after fearing both parties.
Renewal of Trademark Registration in the British Virgin Islands
The validity of a trade mark registered in the British Virgin Islands is 10 years, after which it can be renewed for like periods. The application for renewal must be filed in Form TM 11 prior to the expiration date of the registration.
It usually takes six months or less for the Registrar to process an application for renewal. Once the renewal is complete, the Registrar will issue a Notice of Renewal.
Frequently Asked Questions
The authority responsible for trademark registration in the British Virgin Islands is the British Virgin Islands Financial Services Commission (BVIFSC).
Marks are usually 2-dimensional but can also be 3-dimensional. E.g. forms of containers, holders or packages or the shape of the goods themselves can be used as trademarks.
The validity of a trade mark registered in the British Virgin Islands is 10 years, after which it can be renewed for like periods.