British Virgin Islands: A new Trade Marks Act and a last chance to file UK-based applications

The House of Assembly of the British Virgin Islands has passed a new Trademarks Act on the 30th of April 2013. This legislative measure will bring extensive changes to Intellectual Property in the region and it will effectively come into force on the 1st of September 2015. The implementation of the new act will substitute the current Trademarks Act (Cap. 158) dated all the way back to 1887 and the United Kingdom Trademarks Act (Cap. 157) of 1946. The Act will also end the current dual registration system, under the provisions of which an application may either be filed independently or based on a UK registration.

For existing trademark owners to take advantage from the existing provision that allows the “fast track” extension of the UK national right to the British Virgin Islands the following should be followed:

• File a UK-based application in good time before the current legislation is revoked.

Requirements:

• The only requirement would be a certified copy of the UK registration and a simply signed power of attorney.

The new legislation features new laws such as:

• Provision for service marks, defensive marks, series marks, certification and collective marks;
• Adoption of the 10th Edition of the Nice classification; Provision for multi-class registration; Protection for well-known marks;
• Priority may be claimed under the provisions of the Paris Convention; Renewal period revised from 14 to 10 years;
• Provision for removal after three years´ non-use; Provision for recordal of licenses; Provision for recordal of assignments without goodwill;
• Compulsory preliminary searches (under review).