21 February 2013

Caribbean IP Part 28: Bermuda

ISO 3166 country code: BM.

Bermuda is the oldest colony of the United Kingdom being a colony of England prior to its unification with Scotland. It is now the most populous of all the British Overseas Territories, with around 65,000 people.

Despite its proximity to the United States and Canada, it remains fairly pro-British and its last independence referendum was easily defeated. However, if the referendum was repeated today the result may not be so clear cut.

The relative isolation of Bermuda means it is not strictly a part of the Caribbean although it is an associate member of the Caribbean Community (CARICOM). It is a high income island driven by the finance and tourism sectors.

As the island is non-sovereign and not independent it is not in a position to accede to International arrangements such as the Madrid Protocol without the United Kingdom legislating for them in this respect.

However, it has a local trade mark system in place. It is not a prerequisite to have a United Kingdom trade mark registration in order to register a trade mark in Bermuda, although it does have persuasive value before the local Registrar under section 18(4) of the local Trade Marks Act.

When it comes to registered designs, Bermuda also allows for local registration. With respect to UK Registered Design rights these provide for automatic protection to Bermuda. There could be a defence for infringers if they could not know of the design in Bermuda which suggests that if there is no use or disclosure of such a design in Bermuda (for example, in the UK only), then the owner of the UK design may be prevented from taking action locally in Bermuda. As the law has not been amended accordingly, it is unlikely the same protection and provisions are given for Registered Community Designs.

The Registry General administers IP rights on the island. Their website provides some general information on intellectual property specifically on how to file applications. Examination of trade mark applications is not lax and objections will be raised according to the law if the Examiner feels it is justified, yet the processing of trade mark applications is organised and timely.

As a high income society, Bermuda is a potentially lucrative market to many trade mark owners. It is important that its location means it is not inadvertently omitted from any filing programmes for the Caribbean and/or North America.

13 February 2013

Caribbean IP Part 27: US Virgin Islands

ISO 3166 country code: VI.

The Federal trade mark law of the United States, the Lanham Act, applies to not only all 50 states but also to any territory under the jurisdiction of the United States. Therefore, US Federal registrations automatically cover the US Virgin Islands.

Nevertheless, a local registration system is also available.

The Division of Corporations and Trademarks at the Office of the Lieutenant Governor administers locally registered rights. It is necessary to support an application with a Federal registration by providing a certified copy of the same. Because US designations of Madrid Protocol registrations are given a local Registration number it is believed these could also form the basis for applications in the US Virgin Islands.

There is no separate register for design patents.

It is not too often that separate trade mark registration is required for the US Virgin Islands although it could be useful in some cases. Registration is inexpensive (incidentally, we can file directly in the US Virgin Islands) if filing is ever considered.

7 February 2013

Caribbean IP Part 26: Turks and Caicos Islands

ISO 3166 country code: TC.

The Turks and Caicos Islands are a non-sovereign nation, a British Overseas Territory. As such they are not able to sign up to international agreements. However, they can make reference to them in their own IP legislation and in this connection, reference is made to the UK Trade Marks Act and Community Trade Mark within its trade marks legislation.

Trade mark legislation is modern with the latest Trade Marks (Amendment) Rules dating from 2011. The Turks and Caicos Islands allow for local applications and they are well up-to-date in using the International Classification and allowing service marks.

It is also possible to extend UK trade marks to the islands and this provision is now also available to Community Trade Marks and International Registrations. 

The Turks & Caicos Islands Financial Services Commission administers the Trade Marks (and Patents) Registry. Their web presence provides  a fairly decent brief overview on trade marks.

Like with other British territories, Madrid Protocol membership is not on the horizon. In 2009, the UK Government imposed direct rule on the islands following a corruption scandal (home rule being restored recently) but unilaterally imposing the Madrid Protocol on any territory would not be made.

As for designs, there does not appear to be any legislation catering for these.

The Turks and Caicos Islands operate an organised trade marks system. The main gripe trade mark proprietors have is that annual maintenance fees are due against trade marks. As with the Cayman Islands, these put a large financial burden on maintaining trade marks in a jurisdiction with a tiny population; the population is estimated at under 50,000.