Intellectual Property Bulletin – July 2012

O’Neal Webster

Intellectual Property 
July 2012
In This Issue
BVI Trademark Registration
Overview of Proposed Legislation
Quick Links

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Feroza Kartick 


Feroza Kartick (retouched)

 Feroza handles registration of trademarks and patents for international clients and has done so for the past 12 years. She helps trademark clients with the protection, maintenance and enforcement of their brands in the British Virgin Islands, and has assisted many international trade mark owners in recording multiple transactions involving mergers and assignments of their entire portfolio of trademarks in the British Virgin Islands. 

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Vanessa King  



Vanessa is the head of the Corporate Commercial Department and the partner in charge of the firm’s intellectual property practice group. She along with her team advise clients on the registration and protection of trademarks and patents in the BVI and instructs the firm’s litigation team on objecting and prosecuting in trademark matters. Vanessa is a member of the International Trade Mark Association, an association of 5,900 trademark owners, professionals and academics from more than 190 countries.



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TOPIntellectual Property – a BVI slant


In the modern economy trademarks have become indispensible, indemnificatory elements in a market swamped by mass-production and the proliferation of comparable, competing products. Proprietors and consumers alike are indebted to the most vital characteristic of the trademark – its distinctiveness.


Our firm’s Trademark Department is equipped to handle the needs of our clients, whether on a large or small scale, and is committed to providing quality service with a fast turnaround time as our guarantee.


Why Register in the BVI?


The need to register your trademarks in the BVI is often underestimated. Prior use of a mark or the fact that a mark is well known does not afford any protection under the BVI Trademarks Legislation, save for a claim of ‘passing off’. Since there is no requirement for a mark to have been used before it is registered, exclusive rights are given to the first party to file an application (subject to the right of any competing claimant to file notice of opposition to the registration of the mark).


What rights does an application confer?


An application for registration of a trademark is deemed to be equivalent to public use of the trademark.


What is the legal effect of registration?


The registration of a person as a proprietor of a trademark is prima facie evidence of his right as a proprietor to deal with the trademark as he desires which includes the right to the exclusive use of the trademark as well as the right to assign such trademark or grant licenses in relation to same. read more


RecDevExpanding the scope of IP applications in the BVI – the proposed new Trademarks Legislation


The below article sets out the proposed new provisions under the much anticipated Trade Marks Bill (“the Bill”), which was recently circulated to the industry for comments. The Bill, which when enacted will be known as the Trade Marks Act, 2012, promises to introduce much needed change to the trademark industry in the British Virgin Islands and place the jurisdiction in line with other modern jurisdictions. The Bill states that it shall be an Act to make new provision for the registration and protection of trade marks, the institution of legal proceedings in trade mark issues and other matters relevant to intellectual and industrial property as they relate to trade marks and for commercial matters.


The Bill will replace three pieces of legislation that govern trademark registration and use in the BVI, namely the Trade Marks Act, 1887, and the Re-registration of United Kingdom Trade Marks Act, 1946 and the Merchandise Marks Act, the first two being the primary pieces of trade mark legislation. read more



 We have worked with O’Neal Webster for several years and can truly affirm that their assistance and expertise is highly valuable. It is not easy to find many firms in the BVI with such high commitment to serving their clients. In relation to Intellectual Property matters we have found their advice to be extremely accurate, and in our opinion they are one of the leading BVI firms in this field.” 

 – Mena Sanchez-Guadarrama S.C. (Attorneys-at-Law, Mexico City)


“Clients appreciate ‘quick responses and efficiently executed work.'”

Legal 500

Contact Us


ContactUsFor more information or for advice please contact Vanessa King ( or Feroza Kartick (



O’Neal Webster

Simmonds Building, 30 DeCastro Street, Road Town
Tortola, British Virgin Islands
tel: +1(284) 494-5808
fax: +1(284) 494-5811


The information contained in this e-mail is provided for informational purposes only, and nothing contained herein should be construed as legal advice.

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O’Neal Webster | 30 De Castro Street | Road Town | Tortola | Virgin Islands, British

O'Neal Webster is a leading offshore law firm in the British Virgin Islands providing superior legal services to clients globally. The firm is a member of Lex Mundi, the world's largest association of independent law firms.

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