By Karen Gilbert, senior associate and Alfida Cruz, associate.
The British Virgin Islands (the “BVI”) has recently reformed its trade mark legislation with the enactment of the Trade Marks Act, 2013 (the “New Act”). T New Act has been passed but has not yet come into force. The New Act will repeal the Trade Marks Act (Cap.158) of the Laws of the Virgin Islands and the Registration of United Kingdom Trade Marks Act (Cap. 157) of the Laws of the Virgin Islands. Some interesting features of the New Act are set out below.
The statutory definition of a trade mark is any sign that is capable of (a) being represented graphically, and (b) distinguishing the goods or services of one person from those of another person and, unlike under the current legislation, includes a certification trade mark (i.e. a sign that is capable of (i) being represented graphically; and (ii) distinguishing the goods or services of members of the collective association that is the owner of the sign from those persons who are not members of the collective association) and a collective trade mark (i.e. a sign that is capable of (i) being represented graphically; and (ii) distinguishing, in the course of trade, (1) goods that are certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic from goods that are not so certified; or (2) services that are certified by any person in respect of quality, accuracy, performance or other characteristic from services that are not so certified.) What is included in the definition of a sign is much wider than under the current legislation and includes (a) a brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word and “numeral” and “word” in this regard shall be construed to include a foreign numeral and foreign script or word; and (b) any combination of signs.
An application for the registration of a trade mark may only be made by a registered trade mark agent. This differs from the current position where an application may be made by or on behalf of any person claiming to be the owner of a trade mark (albeit this was usually through a trade mark agent).
A sign may constitute a trade mark although it is used in relation to a service that is ancillary to the trade or an undertaking and whether or not the service is provided for money or money’s worth. In addition, any use of a sign with respect to goods or services shall be construed to include a reference to the audible use of the sign in relation to those goods or services.
Protection is also provided to the owner of a trade mark which is entitled to protection under the Paris Convention as a well known trade mark.
Under the New Act a registered trade mark is transmissible either in connection with the goodwill of a business or independently. The owner’s rights to assign may therefore be exercised with or without goodwill. This can be contrasted with the current position where a trade mark may only be assigned with the goodwill of a business.
The Registrar will maintain a register of trade marks and the New Act provides for the registration of certain transactions, namely (a) an assignment of a trade mark or any right in it; (b) the grant of a licence under a registered trade mark; (c) the granting of any security interest, whether fixed or floating, over a registered trade mark or any right in or under it; (d) the making by a personal representative of an assent in relation to a registered trade mark or any right in or under it; and (e) an order of a court, or any authority recognised by the BVI Financial Services Commission as a competent authority, transferring a registered trade mark or any right in or under it.
