1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The Trade Marks Act, 2013 (Law 9/2013), to be read in conjunction with the Trade Marks Rules, 2015.
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark protection is acquired by registration. However, unregistered rights can be acquired through use where goodwill protectable under the common law of passing off is created.
1.3 What is the statutory or other source of the trademark registration scheme?
The Trade Marks Act and the Trade Marks Rules.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
Any sign that is capable of being represented graphically and of distinguishing the goods or services of one person or undertaking from those of others may serve as a trademark under the Trade Marks Act. A ‘sign' includes:
- a brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word (‘numeral' and ‘word' in this regard shall be construed to include foreign numerals and foreign script or words); and
- any combination of signs.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
A designation or other identifier must be capable of distinguishing the goods or services of one undertaking from those of others in order to function as a trademark.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
The following shall not be registered as trademarks under the Trade Marks Act:
- signs that do not fulfil the definition of a ‘trademark';
- trademarks that are devoid of any distinctive character;
- trademarks that consist exclusively of signs or indications which may serve in trade to designate 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 fide and 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 whose use is prohibited in the British Virgin Islands by any law;
- trademarks that are filed in bad faith;
- trademarks that consist of or contain 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: the royal arms or any of the principal armorial bearings of the arms, or any insignia or device that so nearly resembles the royal arms or any such armorial bearing as to be likely to be mistaken for the royal arms or the principal armorial bearings thereof; a representation of the royal crown or any of the royal flags; a representation of Her Majesty or any member of the royal family, 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.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The BVI Financial Services Commission (www.bvifsc.vg/).
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
US$200 for an application in one class and US$100 for each additional class.
3.3 Does the trademark office use the Nice Classification scheme?
The Nice Classification system is used.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
The applicant may use class headings or otherwise identify the specific goods or services on which the mark will be used. Where the trademark is proposed to be registered in respect of all the goods or services in a particular class or in respect of a large variety of goods or services, the registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use that the applicant has made of the trademark or by the use that the applicant intends to make of the trademark if it is registered.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
When filing a trademark application, the applicant must declare that:
- the trademark is being used by it or with its consent in relation to the goods or services applied for; or
- it honestly intends to use the trademark or allow the trademark to be used in relation to those goods or services.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
The Registrar of Trade Marks, Patents and Copyright shall carry out a search of earlier trademarks to such extent as he considers necessary as part of the examination process.
3.7 What types of examinations does the trademark office perform other than relative examination?
Upon receipt of an application for the registration of a trademark, the Registrar of Trade Marks, Patents and Copyright will examine the application in order to ensure that the requirements for registration under the Trade Marks Act have been satisfied, including any requirements that may be prescribed. If it appears to the registrar that an application for registration of a trademark does not satisfy any requirement of Rule 6(1), (2) or (3), 7(1) or (2) or 8(1), or Section 36, of the Trade Marks Act, the registrar shall send a notice to the applicant informing it of the requirement that has not been satisfied and directing it to comply with the requirement.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
The full list of grounds on which a mark is ineligible for registration – including public policy reasons – is set out in question 2.3.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
There is no separate or supplemental register on which descriptive marks may be registered.
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
There is no provision for the submission of such a letter in the Trade Marks Act. However, where an application has been published, any person, at any time before registration of the trademark, may make observations in writing to the Registrar of Trade Marks, Patents and Copyright as to whether the trademark should be registered and the registrar shall inform the applicant of those observations.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
There is no requirement for the applicant to use the trademark commercially in order to obtain a registration. The application can be filed on an intent to use basis.
3.12 How much time does it typically take from filing an application to the first office action?
Substantive examination is generally conducted within 30 to 60 days of completion of the preliminary examination. If acceptable, the application will then be published for opposition purposes for a period of three months (the opposition period cannot be extended). If there are objections, an office action should be issued shortly after completion of the substantive examination.
3.13 How much time does it typically take from filing an application to publication?
Normally, 60 to 90 days, assuming that there are no deficiencies to be remedied prior to publication.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
An appeal lies to the order of the High Court from any decision or order of the Registrar of Trade Marks, Patents and Copyright under the Trade Marks Act.
4.2 What is the procedure for appealing a trademark office refusal?
The provisions of the Civil Procedure Rules 2000 shall apply. There is a period of 28 days in which an appeal can be filed further to the date of the refusal. The appeal must be supported by a notarised affidavit.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
Yes, to the Court of Appeal.
5.1 Can a third party oppose a trademark application?
Third parties can oppose trademark applications.
5.2 Who has standing to oppose a trademark application?
Any person "with interest" has standing to oppose a trademark application. A person may be considered to have interest in an application for the registration of a trademark if it:
- claims to be the owner of the trademark;
- is the holder of a licence in respect of the trademark;
- establishes such a connection with the trademark as convinces the Registrar of Trade Marks, Patents and Copyright that it has a legitimate interest to protect;
- is the owner or licensee of a prior trademark which is identical or similar to the trademark that is the subject of the application and any registration of the latter trademark would likely confuse or mislead the public;
- claims that registration of the trademark will not be in the public interest and provides the reason for that claim, which the registrar accepts as reasonable;
- establishes that registration of the trademark will violate a provision of the Trade Marks Act or any rule, regulation or order made thereunder; or
- establishes any other reason that is prescribed.
5.3 What is the timeframe for opposing a trademark application?
The opposition period is open for a period of three months from the date of publication. A notice of opposition (Form TM8) and statement of grounds must be filed. The opposition deadline cannot be extended.
5.4 Which body hears oppositions?
The Registrar of Trade Marks, Patents and Copyright shall hear the opposition proceedings.
5.5 What is the process by which an opposition proceeds?
Where the Registrar of Trade Marks, Patents and Copyright receives a notice of opposition under Section 51 of the Trade Marks Act which includes a statement of the grounds of opposition, he shall transmit a copy of the notice of opposition to the applicant, inviting the applicant to provide, within such period as the registrar shall specify, a counterstatement of the grounds on which the applicant relies for its application.
If the applicant fails to provide a counterstatement to the registrar within the period specified by the registrar, the applicant shall be deemed to have abandoned its application.
Where the applicant submits a counterstatement to the registrar within the period specified by the registrar, the registrar shall send a copy of the counterstatement to the person that gave notice of opposition.
The period to be specified by the registrar for these purposes shall be not less than 21 days and not more than 60 days from the date on which a copy of the notice of opposition is transmitted to the applicant. This notwithstanding, where it appears reasonable to the registrar that the applicant should be given a period greater than 60 days to provide a counterstatement of the grounds on which it relies for its application, the registrar may, upon application of the applicant, grant the applicant an extension of time for an additional period not exceeding 30 days as the registrar considers appropriate in all the circumstances.
Where the registrar receives a notice of opposition and a counterstatement, he:
- may rely on the notice of opposition and the applicant's counterstatement, including the application, to make his decision;
- may give the parties the opportunity to make oral presentations before him and consider the evidence presented to him; and
- may determine whether and subject to what conditions (if any) the trademark is to be registered.
A person who gives a notice of opposition may, at any time before the determination of the opposition by the registrar, withdraw in the prescribed form its opposition to the application.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
Yes. An appeal can be made before the High Court. Appeals to the High Court are governed by the Civil Procedure Rules 2000.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
Unregistered rights in a mark can be acquired through use where goodwill protectable under the common law of passing off is created. The owner of the goodwill must be able to demonstrate a misrepresentation leading to damage in order to succeed in a case of passing off. The evidential burden is high.
6.2 What legal rights are conferred by a trademark registration?
The owner of a trademark has the exclusive right to use, license and sell the registration for the duration of the trademark registration.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
- award of damages or account of profits; and
- delivery up and/or destruction of infringing materials.
Criminal remedies are also available and concern:
- unauthorised use of a trademark in relation to goods;
- a false entry in the register; and
- false representation of a trademark as registered.
7.2 What remedies are available against trademark dilution?
- award of damages or account of profits; and
- delivery up of infringing materials.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
The Trade Marks Act also considers use of a trademark that takes or would take unfair advantage of, or be detrimental to, the distinctive character or repute of that trademark as infringement. Furthermore, the law provides that a trademark shall not be registered if, or to the extent that, its use in the British Virgin Islands is liable to be prevented by virtue of the law of passing off or any law that protects an unregistered trademark or other sign used in the course of trade or business.
7.4 What is the procedure for pursuing claims for trademark infringement?
A claim must be filed at the High Court.
7.5 What typical defences are available to a defendant in trademark litigation?
A registered trademark is not infringed by:
- the use of a person's own name or address;
- the use of the name of a person's predecessor in business or the name of the predecessor's place of business;
- the use of indications concerning the kind, quality, intended purpose, value, geographical origin or production of goods or rendering of services; or
- the use of a trademark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts), as long as the use is in accordance with honest practices in industrial or commercial matters.
A registered trademark is also not infringed by use by a person in the course of trade in the British Virgin Islands of an unregistered trademark or other sign in relation to goods or services, if the unregistered trademark or other sign has been so used in the British Virgin Islands by that person or a predecessor in title continuously from a date preceding the earlier of:
- the date of first use in the British Virgin Islands of the trademark which is registered; or
- the date of registration in the British Virgin Islands of that trademark.
7.6 What is the procedure for appealing a decision in trademark litigation?
Appeals can be made before the Court of Appeal.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The initial term of registration is 10 years from the date of filing, renewable every 10 years thereafter.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
An application must be filed on Form TM11, accompanied by the renewal fee.
8.3 What are the grounds for cancelling a trademark registration?
A third party may apply to cancel a trademark registration on grounds of:
- invalidity (eg, if it can be shown that the mark should never have been registered on absolute or relative grounds); and/or
- revocation (eg, on grounds of non-use).
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
The Registrar of Trade Marks, Patents and Copyright may, subject to the provisions of the Trade Marks Act, remove from the register any matter which appears to the registrar to have ceased to have effect.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
An application for revocation or invalidity may be made to the Registrar of Trade Marks, Patents and Copyright or the court. If filed with the registrar, Form TM18 should be used. The grounds for revocation/invalidity should be stated on the form. The registered owner will then have the opportunity to file arguments and evidence. The applicant will also have the opportunity to file agreements and evidence in reply. At the conclusion of the evidence rounds, either a hearing will be set or a decision on the papers will be handed down.
8.6 What is the procedure for appealing a decision cancelling a registration?
Appeals are made to the High Court.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
There is no quality control requirement, although it would be prudent to include this in the licence agreement. A licence is not effective unless it is in writing signed by or on behalf of the grantor. Unless the licence provides otherwise, the licence is binding on a successor in title to the grantor's interest.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
Form TM11 is used to record a licence before the Registrar of Trade Marks, Patents and Copyright. A copy of the licence need not be filed if the application form is signed by the licensor and licensee.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
There is no provision in the Trade Marks Act for this, but it is prudent for licensors and licensees to abide by the terms of their licence agreements.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
Where there is use of a foreign trademark in the British Virgin Islands that amounts to protectable goodwill, that mark may be protected under the common law of passing off and rights enforceable under the same. However, the foreign trademark registration itself is not protected under the law in the British Virgin Islands, unless it can be demonstrated that the trademark is "well known" under Article 6bis of the Paris Convention in the British Virgin Islands.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
No. However, a person that has duly filed an application for the registration of a trade mark in a Paris Convention country or a World Trade Organization member, or its successor in title, has a right of priority, for the purposes of registering the same trademark under the Trade Marks Act for some or all of the same goods or services, for a period of six months from the date of filing of the first such application. However, the British Virgin Islands is not a party to the Paris Convention at this time.
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.