BVI Introduces Comprehensive Revamp Of Trade Mark Laws

For the first time in several decades there will be a comprehensive revamp of the trade mark laws of the British Virgin Islands. The Trade Marks Act (Cap.158) of the Laws of the Virgin Islands (Existing Act) and the Registration of United Kingdom Trade Marks Act (Cap. 157) of the Laws of the Virgin Islands (Existing UKTM Act, BVI) will, it is anticipated, soon be repealed and replaced by the Trade Marks Act 2013 (the New Act). The New Act, which borrows from the UK Trade Marks Act 1994, has made substantive changes to the existing legislation. The purpose of this update is to provide an overview of the New Act.

1. Is the New Act in force?

   No it is not yet in force. It will come into force on such date as the Governor of the BVI may, by Proclamation published in the Gazette, appoint. As at the date of this update it has received its First Reading.

2. What legislation will be repealed by the New Act?

   Both the Existing Act and the Existing UKTM Act, BVI will be repealed. In addition, the Merchandise Marks Act will be repealed. That notwithstanding, the Registration of UK Trade Marks Rules 1947 and the Trade Marks Rules 1937 will, until revoked, continue to have effect with such modifications as are necessary to ensure consistency with the New Act.

3. How is the expression "Trade Mark" defined in the New Act?

   The New Act defines a trade mark as 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 includes a certification trade mark and collective trade mark, unless otherwise specifically excepted. The term "sign" 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. This is actually one of the most interesting features of the New Act and brings it much closer to current UK legislation. Under the Existing Act, when construed strictly, only goods were registrable (unless, according to current accepted practice in the BVI, the mark was first registered in the UK in which case it could be re registered in the BVI under the Existing UKTM Act, BVI). The ability to register a smell, sound or taste, amongst other things, is certainly a quantum leap forward. In addition, the concepts of "collective" and "certification" trade marks are also derived from UK legislation and are new to BVI law. Pursuant to the New Act a collective trade mark is a sign that is capable of (a) being represented graphically; and (b) 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. We believe that it is possible that there is a typographical error in the Bill that is the New Act in that the definition should instead probably read as follows: "a sign that is capable of (a) being represented graphically; and (b) distinguishing the goods or services of members of the collective association that is the owner of the sign from the goods or services of those persons who are not members of the collective association.". We think that this is the case because the function of a collective trade mark is to highlight a trade connection between the goods or services of members of the association and to distinguish them from those of other undertakings. It is anticipated that collective marks will be more popular than certification marks. The latter permits persons to register trade marks to be applied to goods and services certified by them provided that they do not carry on a business involving the supply of goods or services of the kind certified. However with regard to collective marks, the New Act adds an interesting twist by defining the expression "collective association" as a body of persons, whether incorporated or not, that has or is able to have members and (a) is constituted for the joint benefit of its members; and (b) is so constituted that its membership can always be ascertained. Normally the presumption might be that the association (in this context) would be a legal body so that it can actually own the relevant mark. That presumption has, it seems, been displaced by the definition in the New Act. There is no definition of "association", collective or otherwise, in the UK Trade Marks Act 1994.

4. Are there any other interesting features in the New Act?

   "Ancillary use". Pursuant...