General trademark information of British Virgin Islands

Registration is required to establish rights in a trademark; this is a "first-to-file" jurisdiction.

Registration is the principal means by which rights in a trademark are established. However, these rights may be limited by the law of passing off, which may protect unregistered trademarks or other signs used in the course of trade where goodwill has been established and there is a misrepresentation leading to damage.

• Use of an unregistered mark for any goods or services is legal.

• No legislation regarding plain packaging has been enacted in this jurisdiction, and it is not under active consideration.

The Tobacco Products Control Act, 2006, and the Tobacco Products Control Regulations, 2007, do require the display of health warnings on packaging of a certain size (8.5 inches x 11 inches), but do not go so far as to call for plain, brandless packaging.

B. Time Frame for Obtaining Registration

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

six to nine months.

C. Advantages of Registration

• The benefits of registering a trademark include the following:
  • it is the sole means of obtaining rights in or title to the trademark;
  • it provides prima facie evidence of ownership and validity;
  • it provides regional, national, and/or local protection;
  • it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark;
  • it allows the registrant access to bring actions in particular courts;
  • it helps to deter others from unlawfully using the trademark;
  • enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark.

II. Pre-Filing

A. Registrable Trademarks

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
  • words;
  • names;
  • devices;
  • certain three-dimensional shapes;
  • colors;
  • slogans;
  • sounds;
  • smells (olfactory trademarks);
  • taste.

• There are no special requirements for the registration of three-dimensional shapes.

You must provide a statement of that fact and a description of the trademark.

• The special requirements for the registration of colors are:

 You must provide a statement of that fact and a description of the trademark on the application form.

• The special requirements for the registration of sounds are:

 You must provide a statement of that fact and a description of the trademark on the application form.

• The special requirements for the registration of smells are:

 You must provide a statement of that fact and a description of the trademark on the application form.

• There are no special requirements for the registration of taste.

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

The legislation states: "A trade mark that is, or is to be, registered without limitation of colour is, or will be, registered for all colours."

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • collective marks;
  • certification marks;
  • well-known marks;
  • service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
  • marks that function principally as geographic location names (but not geographical indications or appellations of origin).

The Registrar shall also not register a trademark that: (a) contains a protected geographical indication; and (b) relates to specified goods that do not originate from the place indicated in the protected geographical indication.

•  Please note that place names would be examined and considered on the basis of the usual absolute grounds analysis. Only if they serve to designate the geographical origin of the goods/services may they be refused. They are not registrable per se.

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:
  • trademark laws, in the form of collective marks or certification marks.

• The following products or categories are subject to GI protection in this jurisdiction:

There are no specific categories. The Registrar must keep and maintain a list of geographical indications that shall be recorded in such form as the Registrar considers appropriate.

B. Searching

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights;
  • disclose additional potentially conflicting trademarks, e.g., prior unregistered rights such as those gained at common law.

• The national office is not accessible online.

However, certain information (e.g., official fees) can be found here: British Virgin Islands Financial Services Commission (bvifsc.vg).

C. Use

• An applicant benefits from pre-filing use of a trademark.

• The benefits of pre-filing use are:
  • Use may demonstrate acquired distinctiveness (secondary meaning) and help to overcome an objection to an application to register the trademark on the ground of non-distinctiveness.
  • minimal. Trademark rights are established largely through registration.

• When a mark is not registered, use of that mark may provide the following benefits:
  • Special protection against infringement may be available for a famous and/or well-known mark that is not registered.
  • Protection against infringement may be available for trademarks with substantial and long-standing use that are not registered.

• Famous and/or well-known marks are protected via the following mechanism(s):
  • an administrative process;
  • a determination by the court resulting from an action for infringement.

D. International Treaties

• This jurisdiction is not a member of any international treaties relating to intellectual property.

However, goods and services are classified in accordance with the Nice Agreement, and Paris Convention priority claims are honored.

III. Filing

A. Requirements

• If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

• Joint applicants are permitted in this jurisdiction.

• Either actual use or intent to use is required for application.

• The following information is required to COMPLETE an application:
  • name and address of applicant;
  • state or country of incorporation;
  • description of trademark;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • statement of use;
  • statement of intention to use;
  • official filing fee;
  • priority claim, where priority of an earlier application is claimed.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • state or country of incorporation;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • statement of use;
  • statement of intention to use;
  • official filing fee;
  • priority claim, where priority of an earlier application is claimed.

• The list of goods and services in this jurisdiction may specify:
  • the relevant class heading.

• The following number of copies of the trademark must be submitted:

two, subject to the Registrar's requirements on a case-by-case basis.

• Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
  •  none.

• In this jurisdiction, the following types of registration are available:
  • national.

• This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

• No (other) multinational regional registrations are available in this jurisdiction.

• Applications cannot be filed online.

• The official file cannot be accessed online.

• Applications are officially searched as to prior trademarks.

B. Priority

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.
• If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)

C. Classification

• This jurisdiction uses the Nice Classification System.

• If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.

• For a multi-class application, the applicant must pay class fees on a per-class basis.

D. Representation

• An application to register a trademark may be filed directly in this jurisdiction by:
  • the applicant, but only if a citizen of or domiciled in the jurisdiction;
  • a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

IV. Application

A. Publication

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:
  • through publication.

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant;
  • application number;
  • application date;
  • goods/services;
  • priority claim information;
  • representation of trademark.

B. Examination

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
  • clarity: i.e., that descriptions are clear and understandable;
  • descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
  • distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
  • deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);
  • conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search.

• If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
  • The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

• The order of the application process is as follows:
  • examination, publication, registration.

C. Prosecution

• Accelerated examination may not be requested.

• The following rights are established by a pending application:
  • the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;
  • the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application.

D. Opposition

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality.

• An application is published for opposition purposes after formal examination of the application.

• The opposition period begins on the following date:

the publication date.

• The opposition period ends on the following date:

two months from the date of publication.

• The following parties may initiate an opposition:
  • any interested party;
  • the owner of an earlier right.

• Oppositions cannot be filed online.

E. Proof of Use

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

• An application can be assigned.

• A registration can be assigned.

• An assignment of an application can be made for a portion of the territory covered by the application.

• An assignment of a registration can be made for a portion of the territory covered by the registration.

• An assignment of an application can be for some or all of the goods or services listed in the application.

• An assignment of a registration can be for some or all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • name of assignee;
  • address of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • signature by assignor;
  • consideration (either actual or nominal).
  •  A trademark assignment is not effective unless it is in writing.

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • name of assignee;
  • address of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • signature by assignor;
  • consideration (either actual or nominal).
  •  A trademark assignment is not effective unless it is in writing.

• Legal verification of a written assignment document of an application is required by:
  • notarization.

• Legal verification of a written assignment document of a registration is required by:
  • notarization.

• An assignment of an application need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment.

• An assignment of a registration need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment.

B. Licensing

• Use of a mark that is the subject of an application can be licensed.

• Use of a registered mark can be licensed.

• In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

• A license of an application can be made for a portion of the territory covered by the application.

• A license of a registration can be made for a portion of the territory covered by the registration.

• A license of an application can be for some or all of the goods or services listed in the application.

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of an application can be exclusive (only one licensee, with the owner excluded).
• A license of an application can be sole (only one licensee and the owner).
• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be exclusive (only one licensee, with the owner excluded).
• A license of a registration can be sole (only one licensee and the owner).
• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a mark that is the subject of an application need not be licensed.

• Use by a related company of a registered mark need not be licensed.

• A license of an application can be made with a time limitation.

• A license of a registration can be made with or without a time limitation.

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • name of licensee;
  • address of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • signature by licensor.

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • name of licensee;
  • address of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • simple signature by licensor (see below for execution requirements).

• Legal verification of a written agreement to license an application is required by:
  • notarization.

• A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• A license of an application need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• Recordation of a license of a registration need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is required by:
  • notarization.

C. Other Changes to Trademark Records

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • certificate of proof of change of name, legalized by the respective consulate/apostille

(notarized copy of the original is also sufficient);

• certificate of merger, legalized by the respective consulate/apostille

(notarized copy of the original is also sufficient);

•  notarized deed of assignment.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

submission of form TM19; supporting documentation is not required.

• The requirements for recording liens against trademark records, such as security interests, are as follows:

 submission of form TM13; supporting documentation is required unless the grantor and grantee sign the form themselves.

VI. Registration

A. Requirements

• A fee is not required for issuance of the registration.

• The following documentation is required for issuance of the registration:
  • none.

B. Rights

• The following rights are established by registration:
  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications;
  • the right to bring a cancellation action against a subsequent conflicting registration;
  • the right to sue for infringement against confusingly similar third-party trademark use;
  • the right to license third parties to use the trademark;
  • the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
  • the right to obtain damages for infringement.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  • never.

• The territorial limit of registration is:

the British Virgin Islands.

C. Term

• The initial term of a registration is:
  • 10 years.

• The beginning of the term of a registration is calculated from:
  • the application date.

D. Marking Requirements

• Marking is not compulsory for registered trademarks, but is advisable because:

 it puts others on notice that the trademark is registered and may deter them from unlawful use.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  • ®.

• The use of ® is legally recognized.

• The legal consequences of false or misleading marking are:

 It is a criminal offense to falsely represent that a mark is a registered trademark. This includes use of the word "registered" or the symbol ®.

VII. Post-Registration

A. Use Requirements

• Attack on the ground of non-use is available.

• To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

 three years from the registration date.

• To satisfy the use requirement, the amount of use:
  • can be minimal

(but not merely a token use of the mark).

• Use of the trademark must occur in:
  • this jurisdiction.

• The consequences of a trademark's not being used are as follows:

The mark becomes vulnerable to revocation unless there are circumstances that have arisen independently of the will of the owner that constitute an obstacle to the use of the trademark. The circumstances that are to be recognized as valid reasons for non-use of a trademark are not defined in the Trade Marks Act. Please consult a local attorney.

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:
  • any interested third party.

• Non-use can be excused under the following circumstances:
  •  There are circumstances that have arisen independently of the will of the owner which constitute an obstacle to the use of the trademark. The circumstances that are to be recognized as valid reasons for non-use of a trademark are not defined in the Trade Marks Act. Please consult a local attorney.

• Resumption of use of a trademark prior to the filing of an action to revoke or cancel that trademark may cure non-use if preparation for the resumption of use began before the registrant was aware that an action had been or was about to be filed.

Use within the first three months after the trademark proprietor has been notified of an intention to bring a revocation action will be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application for revocation might be made.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

B. Cancellation

• Cancellation is available.

• The following can be grounds for cancellation:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality;
  • the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;
  • the mark includes a badge or emblem of particular public interest;
  • the mark is used in a misleading manner;
  • the mark is prohibited in this jurisdiction;
  • the application for or registration of the mark was made in bad faith.

• There is no deadline for bringing a cancellation action; a cancellation action can be brought at any time.

However, bad-faith cases aside, where the owner of an earlier trademark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trademark in the British Virgin Islands, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trademark or other right to apply for a declaration that the registration of the later trademark is invalid.

• The following parties may bring a cancellation action:
  • any interested party.

• Cancellation actions cannot be filed online.

C. Renewal

• The following documentation is required for renewal:
  • none.

• The first renewal date of a registration is:
  • 10 years from the application filing date.

• Subsequent renewals last for the following period of time:
  • 10 years from the renewal date of the registration.

• The renewal pre-payment period is:
  • at any time.

In practice, renewals are typically filed within the six months prior to the expiration date.

• There is no grace period for renewing registrations once the renewal date has expired.

However, once the registration is removed from the Register, it can be "restored" back to the Register within six months of removal.

• Renewal cannot be effected online.

• At the completion of renewal, a new registration number is not issued.

VIII. Customs Recordation

A. Customs Recordation

• There is no mechanism for recording trademarks that are registered in this jurisdiction with the customs authority.

The law provides for one, but no regulations are currently in place.

IX. Domain Names

A. Domain Names

• A domain name may be protected as a trademark only if the domain name is not merely a Web address but is used or intended to be used in connection with goods or services.

• The following approved registrars can register a domain name in this jurisdiction:

See the list of Registrars here: Registrars | nic.VG

• Availability of domain names in this jurisdiction can be searched through the following website(s):

nic.VG

• The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

.vg

• To obtain a domain name under the ccTLD in this jurisdiction, there are no requirements of locus with this jurisdiction, such as a local address or local business activity.

• Domain name registrations can be assigned.

• Domain name registrations can be licensed.

• A domain name registration may be contested in this jurisdiction through the following mechanisms:
  • a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through an ICANN-approved domain-name dispute resolution service provider (see http://www.icann.org/en/help/dndr/udrp).

• One may institute a UDRP proceeding with the following ICANN-approved domain-name dispute resolution service providers to contest a domain name registration in this jurisdiction:
  • World Intellectual Property Organization (WIPO).

• If a registration lapses as a result of failure to renew, it can be revived or restored in the following way:

 All registrations are automatically renewed at the end of the registration term unless explicitly deleted by the Registrar or if the Registrar account is not sufficiently funded at the expiration date of the registration. Upon deletion of the domain name, the domain name may be restored by the former Registrar of Record within a 30-day Restore Grace Period at the request of the former registrant.

• The application to register a domain name as a trademark will not be examined for conflicts with prior trademarks.

• An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another only if the domain name is being used as a trademark in addition to being used as an address.

• In general, the courts do not apply the same principles to domain name disputes as are applied to trademark disputes. The following unique considerations are of particular note:

 Claims of trademark infringement in relation to a domain name are likely to be considered using the same tests as for any other trademark dispute. There are some unique considerations relating to a passing-off claim based on a domain name. The claim should still be analyzed on the traditional bases of goodwill, misrepresentation, and damage, but consideration will also be given to whether the domain name constitutes an "instrument of fraud" in the hands of anyone other than the "true" owner.

If you would like to know the trademark registration process of Cayman Islands ? Click on here!

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