New trademark laws and fees now in place

As of September 1 2015, the British Virgin Islands has completely overhauled its trademarks regime, ending the previous dual system of trademark registration.

The Trademarks Act 2013 and Trademark Rules 2014 went into effect on September 1 2015. Arguably, the most important change for trademark owners and practitioners is that the laws unify the former dual application system into a single system. It is no longer possible to file an application on the basis of an existing UK registration. All applications are made locally, and practitioners may now file both goods and services according to the international classification system.

In addition, the British Virgin Islands has instituted a new fee structure under the new laws. Trademark owners and practitioners accustomed to the prior fees, which were quite low, may be surprised by the increase. The official fee to register a word mark in one class is $200, and each additional class is $100. This is compared to the prior fees of $64 for a local application or $15 for a UK-based application. The new official fee for renewal is $250 for the first class and $150 for each additional class, which, somewhat strangely, is higher than the fees for registration. The former fees were $40 and $10 for a local or UK-based renewal, respectively. Despite the large increase, the fees overall remain on par with those in many other Caribbean jurisdictions.

Under the new laws, trademark owners and practitioners will also be able to take advantage of Paris Convention priority filing, which until now has not been possible. In addition, marks are now registered for a period of 10 years and renewed for like 10-year periods thereafter. Previously, the term of registration was 14 years for a local registration or a coterminous period for UK-based registrations. All existing registrations will continue for the remainder of their previously existing terms, and thereafter be renewed for 10 years.

In addition, all existing trademark registrations have been automatically transferred to the new register. For local registrations filed under the old laws, the registrar has been given discretion to reclassify goods previously classified according to the old British system. However, the registrar must first give notice to mark owners before proceeding with reclassification in order to allow time for the owner to object. On the other hand, UK-based registrations will not require reclassification, as all specifications would already be classified according the International classification system.

Katherine Van Deusen Hely, Caribbean IP - Katherine Van Deusen Hely PLLC, West Palm Beach

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