Bermuda: The Benefits Of Registering Trade Marks In Bermuda

Last Updated: 10 August 2017
Article by Kit Cunningham

Trade and Service Marks are the most popular form of registered intellectual properties in Bermuda. Bermuda is a member of the Intellectual Property Caribbean Association, and is considered to be part of the Caribbean and Latin American region for intellectual property matters. Considering the importance a trade mark bears for a company, this is no surprise given that Bermuda is one of the Caribbean's largest offshore economies.

Internationally Recognised Systems

In Bermuda trade marks are regulated and are registrable under the Trade Marks Act 1974 (as amended) (1974 Act). Registration of a trade mark gives the registered owner exclusive rights to use the mark on the goods/services covered by the application, referred to a classes. Bermuda uses the International Nice Classification, established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957) (Nice Classification). Under the Nice Classification there are 45 classes, the first 34 classes covering goods, and classes 35-45 embrace services. When making a trade mark application it is important to choose the class(es) which are appropriate to cover the goods/services the trade mark covers.

For example, if a company produces guitars the appropriate class to apply for in its trade mark application would be class 15. Since the Nice Classification is international and is recognised by numerous countries, the system makes the application for trade marks in multiple jurisdictions more streamlined. This ability to streamline applications in multiple jurisdictions is a great tool for international corporations who wish to protect their trade marks in every jurisdiction they are provided.

At common law under passing off, an unregistered trade mark may still be protected, provided the condition of passing off are satisfied. One of the benefits of registering a trade mark is infringement protection. When the trade mark is registered and someone infringes on the trade mark, enforcement proceedings are usually cheaper and more straightforward than pursuing enforcement proceedings for passing off.

Independent Register

Since Bermuda is a British Overseas Territory it is no surprise that the 1974 Act is largely derived from the UK Trade Marks Act 1938. However Bermuda, unlike some other British Overseas Territories, operates an independent trade mark Register – maintained by the Registry General – which does not allow owners to "extend" a UK registered trade mark. The 1974 Act provides for the filing of single class applications, unlike other jurisdictions which allow for a single application for multiple classes, each class for the same trade mark requires its own application to be filed in Bermuda. It is not necessary to establish use of a trade mark in Bermuda to secure registration, and application can be made based on intent to use. However, where an application is made on intent to use the mark, a registered mark may become exposed to cancellation by a third party if the mark is not used for a continuous five (5) year period. A registered trade mark is valid for an initial period of seven (7) years and may be renewed for further fourteen (14) year periods on payment of a renewal fee. Trade marks in series with very minor differences are permissible.

The Register is divided into Parts A and B. With Part A being reserved for those marks considered inherently distinctive and Part B used for less distinctive marks. Where a trade marks is registered in Part A, the trade mark is considered valid after seven years and can only be challenged on very limited grounds. Someone who infringes a mark that is registered on Part A is not allowed to rely on the statutory defence that there is no likelihood of confusion; this is a defence only available to the infringer of a mark registered on Part B of the Register.

Straightforward Application Procedure

A trade mark application requires the full name and address of the applicant, a clear copy of the mark to be registered and an exhaustive list of the goods/services to be covered. The Registry will usually accept full class headings as specifications. A power of attorney or authorisation of agent signed on behalf of the applicant which provides a local address for service is to be filed along with the application. Once the application is filed the Registry will issue an Application Acknowledgement, which is an official filing receipt, confirming the filing particulars and allocating an application number. The application number will eventually mature into the registration number. This filing receipt is important when it comes to proving priority of a registered mark if an objection or infringement arises.

Following the Application Acknowledgment is the examination report, which tends to be issued within six months of the initial filing. The application will either be accepted unconditionally, given a conditional acceptance or rejected; a conditional acceptance may include the mark being registered on Part B of the Register or contain a disclaimer. Applicants are given six months to respond to the examination report; however, time extensions are available in two month blocks.

If a mark is accepted, the mark will be advertised to allow for any opposition to the registration of the mark to be filed. If no third party opposition is filed within the statutory two month period, an application is made for entry of the mark on the Register and a request for issuing of the certificate of registration. The application for entry must be filed within twelve months of advertisement.

The Bermuda Advantage

The value of having a mark registered in Bermuda has been recognised by many international corporations. The local legislation and independent register provide a framework which provides trust and confidence in protecting marks for local and international corporations. Bermuda has lead the way in intellectual property protection for British Overseas Territories (BOTs). As one of the first BOTs to have an independent register, the value, streamlined approach to applications, and protection this adds to marks registered in Bermuda has been noticed by other BOTs including the Cayman Islands which has recently legislated to establish a trade mark registry in the Cayman Islands, whereby it will no longer be necessary nor possible to extend United Kingdom or European Union marks to the Cayman Islands. Bermuda is continuing to strive forward to improve intellectual property rights, with great help from the Bermuda Bar Association IP Committee. The Registrar General advised last year that the extensions of designs registered in the United Kingdom will commence as early as 1 August 2017. Bermuda recognises the value in protecting intellectual property rights and strives to be at par with internationally recognised standards and developments.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions