In 1887, a year that saw French engineers begin work on the Eiffel Tower and Fredrick Augustus Pickering resign as the last “President” of the British Virgin Islands, lawmakers passed the territory’s first bill to protect intellectual property in the BVI.
The Trade Marks Act of 1887 stood for 12 decades, even as Mr. Pickering’s position was renamed administrator and eventually governor, and was well suited for a less commercially sophisticated time with less need to protect businesses’ brands and the graphical representation of their businesses. But as communication and transportation links have made the world feel smaller and the BVI’s agrarian economy evolved into a globally known force in tourism and financial services, the need to enhance the territory’s intellectual property rules has grown too. Recognizing this, BVI legislators have embarked on a series of changes, including the 2013 passage of a new Trademarks Act, in order to institute a modern trademarks regime for the territory. This new era in intellectual property protection comes into force on Sept 1, according to rules Gazetted on Aug. 13. The new regime brings with it at least four major changes, lawyers familiar with the system said:
1) A modern, simpler process
The biggest benefit for both local businesses and users of BVI-registered companies will be an improved ease of protecting their intellectual property rights. Under the previous system, companies that sought a trademark had to possibly consult as many as four laws: the 1887 act and rules published in 1937 that accompanied it as well as the United Kingdom’s 1946 Trade Marks Act and its associated rules published in 1947. From Sept. 1, only the BVI’s 2013 act and the 2015 rules will apply.
“Most of the Caribbean has already implemented new laws, BVI has been one of the holdouts in terms of aligning with international treaties and there has been a real push in the region to modernise,” Katherine Van Deusen Hely, who founded the firm Caribbean IP, said in an interview with the publication World Trademark Review.
2) Protection for services
The biggest and most important addition that the new regime brings is protection for services, which wasn’t allowed under the 1887 law. (Although firms could, and sometimes did, use UK laws to register marks for their services.) This will have big benefits, not only for the BVI’s main pillars of financial services and tourism, but for future services benefits that haven’t established themselves in the territory yet. Shortly after the 2013’s passage, Harney’s partner Leonard Birmingham described the addition of services as “crucial” for a services-oriented economy like the BVI.
“The ability to register all sorts of things — smells, sounds, tastes — is really a quantum leap forward,” he said in a 2013 interview with the BVI Beacon.
3) Harmonisation with international standards
Additionally, the new trademarks system will be closely linked to the rules of the Nice Classification System, which is maintained by the World Intellectual Property Organization. The group is internationally recognized as the global authority on IP issues. Ms. Van Deusen Hely said that the BVI’s move to the Nice system could bring tangible benefits.
“At present, all goods must be classified according to the antiquated British classification system. Long outdated, this system does not afford adequate protection for many mark owners,” she said. “Under the new regime, all applications will be made within the local filing system, and it will finally be possible to register both goods and services locally according to the international classification system.”
4) New agents, new fees
The BVI’s trademarks system will be maintained by the Financial Services Commission’s Registry of Corporate Affairs, which has published applications for financial services practitioners that wish to become trademarks agents. Agents must have previous experience in the field and receive the regulator’s approval. Additionally, the 2015 rules will raise the cost that businesses face to have their trademarks legally protected from around $64 to around $200 and up.
In conclusion, the changes, practitioners say, are long overdue and likely to give businesses more confidence that their brands can be protected in the BVI. That’s important because trademarks can mean big money. According to a European Union study published in June, firms that protected their intellectual property rights enjoyed revenues that were 29% higher per employee than those which did not. Ultimately, users of the new BVI trademarks regime may find that will mean a better bottom line.
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