Changes in trade mark law in the Caribbean region has implications for international brand ownersAt the start of this month, the British Virgin Islands (BVI) introduced new trade marks legislation,
Changes in trade mark law in the Caribbean region has implications for international brand owners
At the start of this month, the British Virgin Islands (BVI) introduced new trade marks legislation, which sees a significant departure away from the traditional system of protecting brands in the BVI – which relies, in part, on legislation dating back to 1887! Similar changes are also anticipated in both the Cayman Islands and Trinidad & Tobago.
A fairer system for all?
The new law in the BVI brings an end to the dual filing system whereby it was possible to obtain protection on the basis of an existing UK registration or file an application directly. Previously, using an existing UK registration as the basis for protection in the BVI was the only way of securing protection for service marks and was generally the preferred option for international brand owners as there was no opposition period.
Now marks covering sophisticated service offerings, recognised by the standardised Nice Classification system, can be registered, subject to a three month opposition period, and it is no longer possible to register marks in the BVI on the basis of an existing UK registration.
Any brand owners concerned about fighting a rear-guard action against opportunists trying to register high tech brands using the new system will be pleased to note the new law only allows a trade mark agent registered with the BVI Financial Services Commission to apply for registration on a brand owner's behalf and, furthermore, that the law also recognises "well-known" marks (as defined by the Paris Convention).
In the Cayman Islands, international brand owners currently enjoy the benefit of a system that assumes a registration successfully registered in the UK should automatically be extended to the Cayman Islands. The new law will mean that a national registration route will replace the "re-registration" system and applications will be subject to a substantive examination (to examine if the mark is descriptive or generic for example) and an opposition procedure, with resulting registrations no longer dependent on the continuing existence of a corresponding UK or CTM registration.
The switch away from the "re-registration" system in the Cayman Islands should be an advantage to local business holders. They were previously in the unenviable position of applying for a UK (or CTM) registration to get protection in their own territory; protection which would ultimately become vulnerable to cancellation due to the fact that they didn't trade in the UK (or EU) despite using the registered mark in the Cayman Islands.
On the other hand, international brand owners, who have experienced a cultural indifference to IP rights in the past, should benefit from modernised infringement legislation that will function and provide relief in a similar way to infringement legislation in the UK (and this is also true of the BVI).
Owners of registrations granted under the new law in the Cayman Islands will have five years from registration to begin trading under the mark otherwise the registration will become open to challenge on grounds of non-use, which also helps to level the playing field as currently the payment of an annual fee is all that is needed to keep a registration valid and enforceable – which obviously favours bigger businesses.
When the new law in Trinidad and Tobago comes into force, brand owners will enjoy the obvious benefit of extending protection to the twin islands via the Madrid Protocol system of international registration. For the first time, owners of "well-known" marks will be able to restrain by injunction unauthorised use of marks identical or similar to that well-known mark where such use is likely to cause confusion.
The death of stealth filings in the Caribbean?
Whereas Trinidad and Tobago has been a peripheral country for brand owners in general, it has historically attracted market leaders, such as Apple, who wanted a "stealth filing" i.e. a first filing from which priority rights can be claimed in other countries that is effectively undetectable by a journalist, brand enthusiast or competitor.
The increase in searchable online trade mark registers has led to a rise in internet speculation over the trade mark applications filed by cutting edge companies and Trinidad and Tobago (where the mark APPLE WATCH was first filed) has become a victim of its own modernisation in this regard. To avoid speculation on a candidate mark (which may or may not be the final brand name), market leaders will often file the first application in a remote territory where searching the register requires a physical visit and Barbados now seems the preferred choice in the Caribbean.
We know that some market leaders prefer to use the small pacific island of Tonga for stealth filings, a country more likely to be in public eye because of the upcoming Rugby Union World Cup than anything else!
At the start of this month, the British Virgin Islands (BVI) introduced new trade marks legislation, which sees a significant departure away from the traditional system of protecting brands in the BVI – which relies, in part, on legislation dating back to 1887! Similar changes are also anticipated in both the Cayman Islands and Trinidad & Tobago.
A fairer system for all?
The new law in the BVI brings an end to the dual filing system whereby it was possible to obtain protection on the basis of an existing UK registration or file an application directly. Previously, using an existing UK registration as the basis for protection in the BVI was the only way of securing protection for service marks and was generally the preferred option for international brand owners as there was no opposition period.
Now marks covering sophisticated service offerings, recognised by the standardised Nice Classification system, can be registered, subject to a three month opposition period, and it is no longer possible to register marks in the BVI on the basis of an existing UK registration.
Any brand owners concerned about fighting a rear-guard action against opportunists trying to register high tech brands using the new system will be pleased to note the new law only allows a trade mark agent registered with the BVI Financial Services Commission to apply for registration on a brand owner's behalf and, furthermore, that the law also recognises "well-known" marks (as defined by the Paris Convention).
In the Cayman Islands, international brand owners currently enjoy the benefit of a system that assumes a registration successfully registered in the UK should automatically be extended to the Cayman Islands. The new law will mean that a national registration route will replace the "re-registration" system and applications will be subject to a substantive examination (to examine if the mark is descriptive or generic for example) and an opposition procedure, with resulting registrations no longer dependent on the continuing existence of a corresponding UK or CTM registration.
The switch away from the "re-registration" system in the Cayman Islands should be an advantage to local business holders. They were previously in the unenviable position of applying for a UK (or CTM) registration to get protection in their own territory; protection which would ultimately become vulnerable to cancellation due to the fact that they didn't trade in the UK (or EU) despite using the registered mark in the Cayman Islands.
On the other hand, international brand owners, who have experienced a cultural indifference to IP rights in the past, should benefit from modernised infringement legislation that will function and provide relief in a similar way to infringement legislation in the UK (and this is also true of the BVI).
Owners of registrations granted under the new law in the Cayman Islands will have five years from registration to begin trading under the mark otherwise the registration will become open to challenge on grounds of non-use, which also helps to level the playing field as currently the payment of an annual fee is all that is needed to keep a registration valid and enforceable – which obviously favours bigger businesses.
When the new law in Trinidad and Tobago comes into force, brand owners will enjoy the obvious benefit of extending protection to the twin islands via the Madrid Protocol system of international registration. For the first time, owners of "well-known" marks will be able to restrain by injunction unauthorised use of marks identical or similar to that well-known mark where such use is likely to cause confusion.
The death of stealth filings in the Caribbean?
Whereas Trinidad and Tobago has been a peripheral country for brand owners in general, it has historically attracted market leaders, such as Apple, who wanted a "stealth filing" i.e. a first filing from which priority rights can be claimed in other countries that is effectively undetectable by a journalist, brand enthusiast or competitor.
The increase in searchable online trade mark registers has led to a rise in internet speculation over the trade mark applications filed by cutting edge companies and Trinidad and Tobago (where the mark APPLE WATCH was first filed) has become a victim of its own modernisation in this regard. To avoid speculation on a candidate mark (which may or may not be the final brand name), market leaders will often file the first application in a remote territory where searching the register requires a physical visit and Barbados now seems the preferred choice in the Caribbean.
We know that some market leaders prefer to use the small pacific island of Tonga for stealth filings, a country more likely to be in public eye because of the upcoming Rugby Union World Cup than anything else!