Classification of goods and services in protecting particular brands in the British Virgin Islands
As we enter into a new decade, we cannot over emphasize the importance of protecting your brands. In this digital age, trademarks are becoming more vulnerable to infringement. Mass production and counterfeit products are swamping the market. Additionally, the stark reality is this: If you don’t register your trademark, someone else can!
BVI Boasts a Highly Protective Trademark Regime
Registration of your trademark puts others on notice of the validity and exclusive ownership of the mark for the goods and services covered under the registration. The British Virgin Islands boasts a highly protective regime that covers both local and international infringement, mirroring the top jurisdictions around the world.
Hundreds of trademarks are registered in the BVI every year, with a steady increase in registrations due in part to the modernization of BVI trademarks legislation (Trade Marks Act, 2013). In addition to direct registration (you no longer need to first register a mark in the United Kingdom), the legislation now captures registrations of olfactory marks, sound marks, 3D marks, and service marks. The Act also features enhanced protection for stakeholders through the registration of defensive marks and robust enforcement capabilities.
Application for Goods And Services
Multi-class applications are acceptable in the BVI, and one application may cover both goods and services. A list of the goods and services in the appropriate classes needs to accompany the application for registration. The BVI Trademarks Registry uses the NICE classification system, 10th edition.
Reclassification of Existing BVI Trademark Registrations
Prior to the introduction of the new trademark legislation in 2015, it was not possible to register service marks in the BVI. Trademarks could only be registered for goods, which were classified under the local classification system. This outdated system was replaced with the international classification system adopted under the NICE agreement, which is on par with the rest of the world, and is a welcome change for trademark owners.
The Registrar is currently reclassifying the goods covered under trademarks that were registered prior to September 1, 2015, the date when the current legislation came into force. Rest assured that under the reclassification the trademark protection related to the goods remains unchanged, i.e. the goods are merely allocated to the corresponding classes under the NICE classification system, which may result in (a) splitting a local class into more than one class, or (b) merging two local classes into one class, under the new classification system.
The Registrar issues a notice of any proposed reclassification to the owner of the mark, and if no objection to the proposed reclassification is filed within two months from the date of the notice, the Registrar will proceed with the proposed reclassification. Upon completion, the Registrar will issue a notice of reclassification, stating the new class numbers. Therefore, it is advisable to conduct a search prior to filing an application to obtain the current details of the mark on the Register.
This reclassification applies mainly to local (BVI) trademark registrations, as United Kingdom-based registrations would have already been re-registered under the NICE classification system. It should be noted that the current legislation does not provide for re-registration of UK trademarks in the BVI.
Division of Application
An application for registration of a trademark covering goods or services may be divided into two or more applications. The goods and services that are stated in the initial application would be distributed among the additional applications that are filed later. Note that the filing date of the initial application is retained.
The division of applications may be filed (a) during the waiting period for the initial application to be approved by the Registrar, (b) during any opposition proceedings against the registration of the trademark, or (c) during any appeal proceedings with respect to registration of the trademark. Having said that, trademark owners do not usually opt to divide applications.
Merger of Separate Applications
An applicant who has filed separate applications for the registration of a trademark has the option of filing an application for those applications to be merged into a single application. The application for merger into a single application must be filed before the notice of filing has been published in respect of the prior applications.
In order to file an application for merger into a single application, all of the applications must (a) be in respect of the same trademark, (b) bear the same filing date, and (c) be in the name of the same person.
Omission of Goods/Services on Application Based on Priority
An application may be filed locally, based on a priority application, omitting some of the classes stated in the priority application. For example, if a priority application covers Classes 1, 2 and 3, an application may be filed in the BVI based on the said priority application in Classes 1 and 2 only.
Surrender of Goods/Services
Similarly, an application may be filed for renewal of a trademark omitting one or more classes covered under the said registration. However, an application to surrender the relevant goods/services must be filed.
Registered BVI Trademark Agents
While the process of registering your trademark in the BVI for services or goods is straightforward, to ensure consistency and legitimacy, all applications must be conducted through a registered BVI trademark agent. O’Neal Webster is a registered trademark agent. We have assisted companies, both large and small and international and national, in protecting their brands for decades. Our experienced staff is recognized for their attention to detail, responsive communications, and quick turnaround.
We administer a large portfolio of intellectual property assets for clients globally, including prominent brand owners and reputable law firms. We have expertise in recording multiple transactions involved in mergers and assignments of our clients’ entire BVI trademark portfolios. Additionally, our litigation team, under the leadership of Paul Dennis, QC, has been highly successful in handling various types of enforcement cases for our trademark clients in the BVI.
For more information or assistance, please contact the author, Feroza Kartick, certified intellectual property paralegal, at +1 284-393-5800 or by email at firstname.lastname@example.org. We look forward to serving you.