A trade mark provides essential benefits, including legal rights, asset value and global protection for your business. For example, trade marks registered in multiple countries provide international protection for your brand and make it easier to take advantage of new opportunities, like expanding into new markets. Having a trade mark also will help build brand recognition and reputation. When people see your trade mark, they associate it with your products or services, and over time, this can help create brand loyalty and customer trust.
The British Virgin Islands provides for several types of trade marks: standard, series, defensive, certified, and collective. Notably, all BVI trade marks provide legal protection for your brand or product throughout the jurisdiction, enabling you to take legal action against anyone who infringes on your trade mark rights in the BVI. All trade marks add value to companies and organizations doing business in the BVI; however, some have distinct purposes, such as registering certification or collective marks.
So, what are the purposes of certification and collective trade marks? What are their advantages and how do they differ? How do you secure your certification or collective trade marks in the BVI?
Certification Trade Marks
A certification trade mark is a mark may be a name, word, symbol, design or phrase that the owner authorizes for use by a third party on that party’s goods or services for the purpose of certifying the origin, materials, method of manufacture of goods, manner of provision of services, quality, accuracy, safety or other characteristics of goods or services displaying the mark. Conversely, a standard trade mark is a name, word, symbol, design, or phrase that portrays that a product or service was produced by the particular company that owns the trade mark.
Some well-known certification trade marks are:
- “Woolmark,” which verifies that goods are 100 percent wool.
- The Parental Advisory emblem, warning parents of inappropriate or vulgar content in music.
- EnergyStar-rated appliances, which show that they meet specific efficiency standards.
BVI trade mark legislation provides that a certification trade mark in respect of goods or services may:
- be registered in the BVI in the name, as owner, of the person who certifies the goods or services; but
- not be registered in the name of the person who carries on a trade in goods or services of the kind certified.
The Collective Trade Mark
A collective trade mark is owned by an organization, such as an association, and is used by its members to distinguish themselves with a level of quality, accuracy, geographical origin, or other characteristics specified by the organization.
A collective trade mark differs from a certification mark in that a collective trade mark may be used, as appropriate, by various members of the organization that owns the mark, whereas a certification mark may be used only by a person who is authorized by the owner and strictly adheres to the standards set out in the certification mark.
Examples of collective marks are:
- the “CA” device used by the Institute of Chartered Accountants
- the “CPA” mark that indicates members of the Society of Certified Public Accountants
The BVI’s trade mark legislation provides that:
“A collective trade mark may be registered in the name of a collective association, as owner, in respect of goods that are produced by its members, services that are provided by its members, or both.”
The Collective Membership Mark
A collective “membership” mark is acquired to indicate membership in a collective group. Note that the mark is not used to identify or distinguish the origin, quality, etc. of goods or services; instead, it only shows that the person displaying the mark is a member of an organized collective group, such as:
- Reorganized Church of Jesus Christ of Latter Day Saints, and
- the letters AAA® inside an oval to indicate membership in the American Automobile Association.
Overall, obtaining a certified or collective BVI trade mark may be essential if you have a product, service, or organization that you want to secure and promote in the jurisdiction. These trade marks can help ensure quality standards, promote products or services more effectively, and provide legal protection from unauthorized use by third parties.
As a leading BVI law firm and registered BVI Trade Mark Agent authorised to address all trade mark services under the modern and attractive BVI Trade Mark Act, 2013. O’Neal Websters’ intellectual property group offers clients fast turnaround time and premium services that range from initial filings, renewals, and assignment recordings, to change of ownership, license agreements, change of address, oppositions, infringements, and trade mark matters involved in mergers and acquisitions. The firm manages an extensive portfolio of trade mark clients worldwide, including reputable law firms and famous brand owners. Learn more about our firm’s intellectual property legal practice here, or contact the author, Feroza Kartick, for more information or assistance registering your BVI trademarks.