New trademark law in the British Virgin Islands

A new trademark law in the British Virgin Islands ("BVI") will enter into force on 1 September 2015. It has been a while coming.

This will completely modernise a law that is archaic. Currently, there are two ways to register a trademark in the BVI:

1. A local, substantive application. This uses the very dated former British classification system. Importantly, this does not provide for service marks.

2. A UK-based application. This requires a base UK registration. As the UK and BVI are many miles apart on different continents, it can be the case for some trademark owners that the UK is not a market of interest whereas the BVI is, or the UK is covered by a Community Trade Mark (and national protection is not obtained in the UK). However, the UK-based method is currently the only way in which to obtain service mark protection.

The new law will abolish the two ways to register trademarks and consolidate it into one. It will bring in provisions for Certification and Collective marks, allow for priority claims to be made, and provide protection for "well known" marks. The registration term will be reduced to 10 years from 14 years (for local, substantive registrations; UK-based registrations were given registration terms matching their base UK registration).

The International Classification will be used as the former British classification system is replaced in yet another jurisdiction. How reclassification will be managed remains to be seen.

However, should any thoughts be made about taking action before the new trademarks law comes into force? Perhaps, yes. The current official fees are low. The BVI is one of the wealthiest of the Caribbean nations (it's where Sir Richard Branson's Necker Island is) and it's anticipated that official fees will rise and, possibly, quite considerably (they are waiting to be announced).

If you have a UK registration and you need corresponding protection in the BVI, consider filing before 1 September 2015. UK-based registrations are not advertised for opposition purposes so if you file on or after 1 September 2015 when the UK option is removed, your application will be advertised for opposition purposes.

If you file now then you can take advantage of the (probable) lower official fees. However, be sure this is not going to be false economy. Local, substantive applications may require some form of reclassification incurring costs. If an application needs to be filed covering modern goods not well envisaged by the former British classification system then it may also be a good idea to wait until the International classification can be used.

For UK-based applications, check the base UK registration's renewal date. The BVI registration will take this renewal date so if the UK registration is due for renewal in the next few years then so will the BVI registration.

As for renewals, although registrations falling due for renewal on or after 1 September 2015 will be renewed for 10 years, their renewals can be filed now and the current official fees can be taken advantage of.

Trademark matters in the BVI must be handled by resident trademark agents duly registered with the Registry of Corporate Affairs. This is the case currently although I understand the new law will allow them to be more stringent on who they will accept as a resident registered trademark agent. Naturally, I work with local registered trademark agents should you not have one of your own and need any support.

Specifications and useful tools

When I started out in the world of trade marks the crafting of specifications was sometimes a time-consuming task. There were two books. One contained the goods/services in class order. The other listed the goods/services in alphabetical order. It was, or still is, also printed in Chinese, Croatian, Czech, Danish, Dutch, German, Italian, Japanese, Lithuanian, Macedonian, Norwegian, Polish, Portuguese, Russian, Slovene, Spanish and Swedish. For some of these languages, it must still be an invaluable resource.

For some of us, we now have the benefit of on-line tools to help us devise specifications of goods and/or services.

In Europe we have the EuroClass Classification Assistance tool developed through OHIM. As a digression and being a teenager in the 1990s, the term EuroClass can only make me think of Eurotrash, a surreal and sarcastic TV show. Perhaps I am not the only Briton for whom this comes to mind?

There are six national Trade Marks Offices that are harmonised with OHIM. Italy, Spain and Sweden make up three. The other three are the English-speaking countries of the EU: Ireland, Malta and the United Kingdom. An acceptable (approved) specification at OHIM is going to be similarly automatically accepted by, for example, the Italian Ufficio Italiana Brevetti e Marchi or the UK Intellectual Property Office. Likewise, using an acceptable term to file nationally in the UK would also be an acceptable term for filing nationally in Ireland.

For the other countries it is possible to get accepted terms for each of the national Trade Marks Offices within the EU (another 19 Offices) plus the accepted terms from Switzerland and the United States are also included in the tool. The latter is taken from the "U.S. Acceptable Identification of Goods and Services Manual (ID Manual)".

Also, available through EuroClass are WIPO's acceptable items. As WIPO is the gatekeeper of the Nice Classification this is helpful.

WIPO do have their own tool available too. It is named the Goods & Services Manager, not quite as cheesy as the EuroClass name.

A recent announcement from Geneva informs us that this will now be available in 10 languages: English, French and Spanish, the official languages of WIPO, plus Arabic, Dutch, German, Hebrew, Italian, Portuguese and Russian.

I must admit that my navigation skills only provide the Goods & Services Manager in the three official languages of WIPO. I can, at least, locate the Russian version but have had no joy in finding the Arabic, Dutch, German, Hebrew, Italian or Portuguese versions.

Dutch, German, Italian and Portuguese specification items can be found through EuroClass. That leaves only Arabic and Hebrew as additional resources.

However, these tools are primarily for the benefit of local practitioners filing a Madrid Protocol application as opposed to a foreign applicant filing in an Arabic-speaking country or in Israel. Effectively, using acceptable WIPO terms (in English, French or Spanish) is going to avoid those awkward to deal with irregularity notices from WIPO.

This does not mean a wonderfully worded specification that WIPO loves is going to be accepted locally in the designated countries of a Madrid Protocol application. The Israeli Office does not like class headings and is particularly strict when it comes to pharmaceutical trade marks. You can obtain broader protection (e.g. for house marks) with the filing of an Affidavit and for pharmaceuticals you can defer limiting a specification to a specific product for five years. However, expect an Office Action if filing broadly; I'd recommend considering filing nationally over Madrid in this event.

The US, as many will realise, is also very strict with specifications and will not accept the more blanket coverage provided by some WIPO terms. Asian countries can present problems too. China requires specific items if you want them protected and don't rely on a class heading; note recent guidelines in the EU too. South Korea can also be stringent with what is acceptable.

These tools are useful and welcomed and they can go a long way to helping us avoid unnecessary Office Actions and irregularity notices but there are limitations.

The 10th Edition of the Nice Classification came into force on 1 January 2012. As WIPO look to review this every year going forward do be careful with searches, filings, renewals and watching. Not all countries will proceed with reclassifications whether this be ex-officio, at applicant's request or as a mandatory or optional part of a renewal.

For searches it could be important to ensure you search the 'old' Class in addition to the current class. For example, "vending machines" have moved to Class 7 from Class 9. The addition of Classes 43-45 for services created a general awareness of this but for goods we need to keep in mind as often it is not relevant yet sometimes it can be. The reverse is true for watching as if you are a vending machines company then you will need to ensure your marks are watched in the current Class 7.

When it comes to filings, be alert not to just copy-and-paste a specification from a registration accepted last year. Consideration can also be given to making re-filings in the correct class particularly for countries that examine on relative grounds and who have not reclassified. For a chain of beauty and hairdressing salons, you may find your old Class 42 registration not being cited against similar recent applications in Class 44. This may not be the best example but if you find yourselves fighting a number of oppositions then it might be more cost-effective to file afresh in Class 44 to form a bar to registration for third parties that the Trade Marks Office can defend on your behalf.

After all this it does beg the question, is classifying really getting easier?