In order to register a trademark in the British Virgin Islands, prior use of the mark is not necessary. Therefore, registering a trademark in the British Virgin Islands is necessary in order to secure ownership and as a means to stop cases of trademark infringement.
Since September 2015, it is now possible to register service marks in the British Virgin Islands directly; in the past, in order to register a service mark it was first necessary to have a trademark registered in the United Kingdom and then extend protection to this territory. Trademark registration in the British Virgin Islands is done through the BVI Registry of Corporate Affairs (BVIFSC).
If you register a combined trademark (which includes both word elements and figurative elements) in the British Virgin Islands, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity.
In order to oppose the registration of a trademark in the British Virgin Islands, opposition actions must be presented within three (3) months from the date on which the trademark application is published in the local trademark journal. Probabilities of success for an opposition will vary in each case depending on the circumstances.
A registered trademark in the British Virgin Islands will last for 10 years, term that is considered as having started on the date it was applied for. Trademarks may be renewed indefinitely for subsequent 10-year terms. A trademark may be renewed up to 12 months prior to its expiration date. Once a trademark has expired, it may still be renewed within the grace period of six (6) months from the expiration date upon payment of additional late fees.
Once registered, if the trademark is not used within the British Virgin Island marketplace for a three (3) year period, cancellation actions against the registration of the trademark may be presented by third parties.
If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in the British Virgin Islands (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.