The British Virgin Islands ("BVI") has a local patents and trade marks registry. In addition, it is also possible to apply for local recordal of patents registered with the United Kingdom Intellectual Property Office. United Kingdom trade marks, Community trade marks and trade marks registered under the Madrid Protocol designating the United Kingdom, however, do not have effect in the BVI.
Local Registration (Original Applications)
(a) The Patents Act 1906, together with the Patent Regulations 1906 set out the procedure and requirements for the registration of patents and the rights and powers that those who register them hold.
(b) The following people may apply to register a patent:
(i) the actual inventor; (ii) his assigns; (iii) the actual inventor jointly with the assigns of a part interest in the invention; (iv) the legal representative of a deceased actual inventor or of his assigns or any person to whom the invention has been communicated (such an application for registration must be supported by the Probate of his Will or the Letters of Administration granted of his estate and effects); or (v) the actual inventor, his legal representatives or assigns (if the actual inventor, his legal representative or assigns is or are not in the BVI).
(c) The Schedule to the Act contains the form in which the application must be made. The application must contain a declaration by the applicant that they are in possession of an invention for which they are the true and first inventor and for which they desire to obtain a patent. The application must also be accompanied by a specification which must describe the nature of the invention and in what manner it is performed.
(d) Once the BVI Registrar of Trade Marks, Patents and Copyright (the "Registrar") has accepted the specification they then advertise it in the BVI Gazette.
(e) The Registrar will seal the patent with the public seal of the BVI if nobody has objected to the application or specification that has been advertised. Once sealed, each patent shall have affect throughout the BVI for the period of 20 years from the date of the application. However, every 4 years the applicant has to pay a fee to the Registry to keep the patent in force. The Registrar will maintain at the Registry a register of patents.
Registration of United Kingdom Patents in the BVI :
(a) Such registrations are governed by the Registration of United Kingdom Patents Act 1925 and the registration of United Kingdom Patent Rules 1927 (as amended in 2014). Any person who has registered a patent in the United Kingdom or any person deriving his right from such by an assignment, transmission, merger or other operation of law can apply within 3 years from the date of issue of the patent to have the patent registered in the BVI.
(b) Every application must be accompanied by a certified copy of the United Kingdom patent and a certificate of the Comptroller General of the United Kingdom Patent Office giving full particulars of the issue of the patent.
(c) The application is advertised in the Gazette as previously and if there is no opposition to the application then the Registrar will issue a certificate of registration. The certificate of registration confers onto the applicant all the privileges and rights as though the patent had been issued in the United Kingdom with an extension to the BVI. These privileges and rights shall date from the date of the patent in the United Kingdom and shall continue in force only so long as the patent remains in force in the United Kingdom.
Note: An application can either be based on a UK registration, or be filed as a local/substantive case)
Based on a UK Registration:
1. Power of Attorney signed by the applicant before a Notary Public.
2. Certified Copy of the UK registration upon which the application is to be based.
3. Fifteen clear prints of the mark if it is not a word mark.
Service classes cannot be registration through this “route”, and the Pre-1938 UK Classification system (Schedule III) is used, which differs considerably from the International Classification system used in most countries around the world.
1. Power of Attorney signed by the Applicant before a Notary Public.
2. Declaration signed by the applicant before a Notary Public.
3. Form “A” signed by the applicant before a Notary Public.
4. Fifteen clear prints of the mark if it is not a word mark.
Introduction to the Trade Marks Act and Trade Marks Rules
(a) The Trade Marks Act, 2013 (the "Act") together with the Trade Marks Rules, 2015 (the "Rules") came into force on 1 September 2015 and has repealed the Merchandise Marks Act, Registration of United Kingdom Trade Marks Act and Trade Marks Act 1887. The Act makes new provision with respect to the registration and protection of trade marks in the BVI, and related matters including the assignment and charge of trade marks.
(b) The Act now introduces a statutory definition of a trade mark, which is "any sign that is capable of (a) being represented graphically, and (b) distinguishing the goods or services of one person from those of another person, and includes a certification trade mark and collective trade mark, unless otherwise specifically excepted".
(c) Under the Act, a sign includes (i) a brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word and "numeral" and word" in this regard are construed to include a foreign numeral and foreign script or word; and (ii) any combination of signs.
(d) For the purpose of the Act (i) a sign may constitute a trade mark although it is used in relation to a service that is ancillary to the trade or an undertaking and whether or not the service is provided for money or money’s worth; and (ii) any use of a sign with respect to goods or services shall be construed to include a reference to the audible use of the sign in relation to those goods or services.
(e) A collective trade mark means a sign that is capable of (i) being represented graphically; and (ii) distinguishing the goods or services of members of the collective association that is the owner of the sign from those persons who are not members of the collective association.
(f) A certification trade mark means a sign that is capable of (i) being represented graphically; and (ii) distinguishing, in the course of trade, (A) goods that are certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic from goods that are not so certified; or (B) services that are certified by any person in respect of quality, accuracy, performance or other characteristic from services that are not so certified.
The Registration of Trade Marks
(a) Every application for registration of a trade mark must be made by a registered trade mark agent for and on behalf of any person claiming to be the proprietor of a trade mark. The Schedule to the Rules contains the prescribed form (TM1) of application for registration of a trade mark. It must include the following: (i) request for registration of the trade mark; (ii) the name and address of the applicant; (iii) a statement of the goods and services to which it is sought to register the trade mark; (iv) a representation of the trade mark; and (v) such other information, document or matter as may be prescribed.
(b) The application must state whether (a) the trade mark is being used by the applicant or with his consent, in relation to the goods or services in respect of which it is sought to be registered; or (b) the applicant honestly intends to use the mark or to allow it to be used, in relation to the goods or services concerned.
(c) In addition applicants also need to provide the Registrar an address for service in the BVI.
(d) The Registrar will determine whether the requirements for registration have been satisfied and if so he must, subject to any condition he thinks fit to impose, accept the application. If the Registrar considers that the requirements have not been met then he will notify the applicant not less than 14 days and not more than 60 days from the date of the notice within which the applicant must meet the outstanding requirements.
(e) Where the Registrar accepts an application, he will issue a certificate of registration to the applicant and shall cause a notice to be published in the BVI Gazette, confirming the registration of the trade mark.
(f) If there is no opposition to the application within the prescribed period stated in the advertisement of the application in the Gazette then the Registrar will register the trade mark. A trade mark shall be registered as of the date of filing of the application for registration and that date shall be deemed to be the date of registration of the trade mark.
(g) The term/renewal date of a registration is 10 years from the date of registration. However, where a trade mark (except for a defensive trade mark) is registered and has not, since its registration, been used in relation to the goods and services for which it is registered, for a continuous period of at least three (3) years by the owner or another with the owner's consent, it may be revoked for non-use if no valid reason for non-use exists.
(h) The registration of a person as an owner of a trade mark shall be prima facie evidence of his right to the exclusive use of the trade mark.