A new Trade Marks Act 2013 is expected to take effect shortly.
It will involve the repeal of the current legislation, principally the Trade Marks Act 1987 and the Registration of United Kingdom Trade Marks Act 1946.
The new Act will streamline BVI trade mark procedure by replacing the current dual system providing for either independent or UK based applications with a single system for filing applications in the BVI.
The changes will assimilate BVI trade mark law to that applicable in UK and other developed IP jurisdictions in at least the following respects:
- The renewal term will be 10 instead of 14 years
- The Act will provide a wider definition of trade marks. The most important practical development will be to provide for service marks to be filed directly instead of by way of the re-registration of British applications. But (as in UK) distinctive features of taste and smell may in future be the subject of trade mark registrations, as may "well-known trade marks", and it will also be possible for trade associations to file collective or certification trade marks
- The Nice classification of trade marks will apply, and
- The Act will allow priority to be claimed for a trademark that has been registered in a Paris Convention country or WTO member provided the application to claim priority must be made within six months of the original filing
- It will be possible to file applications electronically instead of as at present by physical filings
- Only a "registered" trade mark agent may apply for the registration of a trade mark and a trade mark agent may be an individual, a partnership or a legal person. Subject to certain requirements, the Financial Services Commission may upon receipt of a written application in the prescribed manner and payment of the prescribed fee, approve or refuse to approve a person to act as a registered trade mark agent. The payment of the prescribed fee is valid for one year and is subject to an annual renewal.
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