British Virgin Islands (BVI): Changes to trademark law

ProtégerThe New Trademark Act 2013 and the Trademark Rules 2015 have since September 1, 2015, effected sweeping changes to the local trademark regime of the British Virgin Islands (BVI).

Already in 2004, the subject had stirred up Dreyfus’s interest. Indeed, previous articles have mentioned the adoption of those two laws which aim to update the UK law that was in force since the 19th century. Two years later, those laws are finally published.

Thanks to this amendment, the BVI are now moving away from the UK system which required the prior registration of a UK trademark to be able to register a trademark in the BVI.

The BVI are thus finally building an autonomous and independent system.

This new law is applicable to all trademarks registered or renewed as from September 1, 2015, while trademarks registered or filed before this date will continue to be governed by the former law, meaning the UK law.

What does this change in the law mean for the registration of trademarks in the BVI?

  • First and foremost, this new system means that it will no longer be possible to extend the protection of trademarks registered in the UK to the BVI. For a trademark to be registered in the BVI, the trademark would need to be filed locally at the Registry of Corporate Affairs.
  • Equally important will be the fact that from now on it will be possible to register service marks. Indeed, under the former UK law, trademarks could only be registered for goods; which were moreover classified according to a somewhat obsolete system.
  • The system will now be based on the latest version of the Nice Classification (45 classes of goods and services).
  • It will also be possible to make a foreign priority application for a trademark in the BVI in accordance with the Paris Convention or the WTO agreement (TRIPS agreements).
  • The registered trademark will be protected for a period of 10 years, renewable every 10 years as from the registration date with a grace period of 6 months.
  • It will be possible to oppose the registration of a trademark in the BVI within the three months following the publication of the application – which will be available on the website of the local Gazette.

The only question that remains to be answered in the wake of this new amendment relates to the trademark registration fees in the BVI. Relatively cheaper under the former law, like the designation of  French Polynesia for trademarks registered in France, trademark holders fear a rise in the registration fees following the coming into force of this new law.

Watch this space for further developments…And do not hesitate to contact us for any question relating to the protection and defence of trademarks worldwide.