September 1, 2014
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BRITISH VIRGIN ISLANDS: New Draft Trade Mark Rules Released for Comment Under New Regulations
Almost a year after passage of the Trade Marks Act, 2013, the government of the British Virgin Islands has published draft Trade Mark Rules, 2014 (the Draft Rules). The comment period for the Draft Rules ended April 30, 2014, and passage of the new Rules is expected in the coming months.
Of particular note, the Draft Rules provide for electronic filing of documents. Although no electronic filing system currently exists, documents may be submitted electronically at the Registrar’s discretion.
The Draft Rules require the Registrar to give notice of deficiencies in a particular application. The applicant must respond within 60 days of the date of the notice or risk the application’s being deemed abandoned.
The opposition period is three months under the Draft Rules. An applicant’s failure to file a counterstatement results in abandonment of the application. Potential opponents should note that the Draft Rules allow the Registrar to require security for costs from parties that neither reside nor carry on business in the British Virgin Islands. A BVI business company would not be required to post security for costs.
The Draft Rules give the Registrar the discretion to reclassify the specification of a registered mark that is not classified according to the Nice Classification. The Registrar must first give notice to the owner of the registered mark informing him or her of the proposed changes, to which the owner may object within two months of the date of the notice. If there is no objection, the Registrar will publish the proposals and ultimately enter the reclassification on the register.
Third parties may object to both an amendment of an application (within 30 days) and an amendment of an existing registration (within 60 days of publication). These are opposition-like procedures dealing with the grounds for an objection and an applicant’s ability to respond, and the Registrar may also require security for costs from parties that neither reside nor carry on business in the British Virgin Islands.
Extensions of time up to an additional 60 days for almost any action are available at the Registrar’s discretion.
Also within the Registrar’s discretion is restoration of a non-renewed mark, which is possible within six months of the expiration date of the trademark registration upon application and payment of penalty fees.
The Draft Rules also provide the guidelines for approval as a trademark agent.
The Final Rules may differ from the Draft Rules. The INTA Bulletin will provide an update once the Final Rules are published.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2014 International Trademark Association