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.

Caribbean IP Part 8: British Virgin Islands

ISO 3166 country code: VG.

The Virgin Islands as they are officially known are usually referred to as the British Virgin Islands ("BVI") to distinguish them from the neighbouring US Virgin Islands. You may even have heard of the Spanish Virgin Islands, which far from belonging to Spain form a part of Puerto Rico, and/or the Danish Virgin Islands (more properly, the Danish West Indies). Denmark sold the latter to the United States in 1916 whence they became the US Virgin Islands.

The British part of the (unofficial) name also correctly alludes to the fact that the islands are a British overseas territory. With the naming issues hopefully addressed, we can now look at IP on the islands.

As a non-sovereign nation it is unable to sign up to International organisations and treaties; that remains the responsibility of the United Kingdom.

The Registry of Corporate Affairs, a part of the British Virgin Islands Financial Services Commission, oversees the administration of IP rights. Unfortunately, there is a real lack of any IP information on their website.

Substantive (independent) trade mark applications are possible. These must be filed using the former British classification system, which you may recall is still used by The Bahamas. It is also possible to register (extend) trade marks based on UK registrations. These will replicate a UK registration's particulars including the specification and classification. Currently, the UK extension route is the only one available in which to register service marks.

The local Government are planning on introducing new trade mark legislation. You will see that this is a modern law meeting international standards (e.g. provisions for well-known marks, priority, multi-class applications, etc.). It does not contain any provision for the Madrid Protocol. The BVI Government are not in a position to accede to the Madrid Protocol, but the United Kingdom could do so on their behalf if they were specifically requested to do so by the BVI Government. I feel this is a disappointing oversight bearing in mind I believe the BVI Registrar has been a member of INTA and should be aware of international agreements in relation to trade marks.

When it comes to designs I believe UK registrations cover the BVI automatically, although if the jurisdiction is of importance it is recommended to have a local 'confirmatory' Cautionary Notice published too. However, Registered Community Designs should not provide protection. UK patents can be extended to the BVI but this must be done within three years of the UK date of issue (this includes European patents valid in the UK).

A new trade mark law will greatly simplify this area and make it easier for North American applicants, in particular, to register their trade marks. Despite being a British overseas territory the BVI's geographical proximity to the likes of the US is obvious. The islands also use the US dollar as their currency.