O’Neal Webster is one of the leading commercial law firms in the BVI. The 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.
In the modern economy trademarks have become indispensable, 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.
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.
What mark is registerable?
A trademark must consist of:
(a) a name of an individual or firm printed, impressed or woven in some particular and distinctive manner or;
(b) a written signature or copy of a written signature of the individual or firm applying for registration thereof as a trade mark or;
(c) a distinctive device, mark, brand, heading, label or ticket or;
(d) an invented word or words (fanciful or coined marks) or;
(e) a word or words having no reference to the character or quality of the goods and not being a geographical name.
How long does a registration last?
Registration of a local mark is effective for fourteen years. Registration of a United Kingdom mark is effective for the same term as the existing United Kingdom registration.
How to register in the BVI?
We can file the application on your behalf. To register:
(a) complete a notarised Power of Attorney authorizing us to make the application;
(b) provide 12 prints of each mark (except word marks);
(c) we will submit the application to Registrar of Trademarks together with required fee;
(d) the Registrar determines whether the mark qualifies for registration;
(e) the mark is advertised in local Gazette providing 3 months for persons intending to oppose registration to file notice of opposition;
(f) the Registrar then issues the certificate of registration.
Does your firm handle trademarks litigation?
Our firm has several experienced litigators who have handled trademark cases in the BVI. The litigation team is led by our senior partner, Paul Webster, QC and has earned a reputation for excellence in complex business disputes.
O’Neal Webster is able to assist with all aspects of BVI intellectual property law. For further information, please contact Vanessa King (vking@onealwebster.com).
This guide is not intended to deal exhaustively with all aspects of the subject and proper legal advice should always be obtained before entering into any transaction.