Trade and Service Marks

– Trade Marks Act, 2013 (No. 9 of 2013), in force since September 1, 2015.
– Trade Marks Rules, 2015 (S.I. No. 17 of 2015), as amended by the Trade Marks (Amendment) Rules, 2015 (S.I. No. 66 of 2015), in force since September 1, 2015.
– Trade Marks (Filing) Guidelines, 2018, in force since December 3, 2018.

Membership in International Conventions

– None.


Since September 1, 2015 it is no longer possible to extend UK-based applications to the BVI. A trademark application will have to be filed on a national basis only. 

Applicant: any person may apply for the registration of a trademark, but must employ a registered trademark agent.  

Kind of marks: a trademark would include a brand, color, device, figurative element, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word, or any combination of signs that is capable of being represented graphically. 

Collective, certification, defensive trademarks: provided for.  

Service marks: registrable. 

Excluded from registration: (a) trademarks devoid of any distinctive character, except the full name of a famous personality; (b) descriptive marks; (c) generic marks; (d) trademarks prohibited by law; (e) trademarks containing a protected geographical indication that relates to specified goods that do not originate from that particular place or region; (f) trademarks contrary to public policy or to accepted principles of morality; and (g) deceptive marks. 

Classification: International Classification in accordance with the Nice Agreement (11th Edition).

Priority: it is possible to claim priority based on an application filed in a Paris Convention or WTO member country within six months of the first application, including making partial claims.

Intention to use: the applicant must give a declaration of use in relation to the goods or services for which registration is sought or there must be an honest intention to use the trademark. 

Multi-class applications: possible.

Filing requirements (to be sent to registered trademark agent):
There are no formal documentation, except where the mark is other than merely words it must be accompanied by at least two representations of the trademark. Additionally, where the mark uses non-English words, letters or characters such as Arabic, Chinese, Devanagari or Cyrillic characters, the application must be accompanied by a certified translation into, or equivalent meaning or transliteration in, the English language of those foreign numerals or foreign script. Note: a power of attorney is no longer required.

Registration, Protection

Examination: the Registrar will consider the absolute grounds for refusal of registration and any other ground that may prevent the registration of a trademark during the examination process. If the Registrar is satisfied that all the requirements for registration have been met then the application will be accepted. Alternatively, if the Registrar is not satisfied, he must issue a notice to the applicant. The notice will provide the period in which the applicant must respond which must be between fourteen to sixty days, although the period may be extended by the Registrar for an additional sixty days on an application made by the applicant. If the applicant fails to respond within the time required or the extended time granted or fails to amend the application or otherwise satisfy the Registrar that the requirements for registration have been met, then the application may be treated as being abandoned and once it is treated as abandoned the Registrar must refuse to accept the application and notify the applicant. The applicant may at any time during the examination process amend the application or request a hearing before the Registrar. 

Disclaimers: available. 

Letters of consent: are accepted. 

Publication: once the application has been accepted there is a Notice of Filing given by the Registrar and it is then published in the Gazette. Even after publication of the application the applicant can still either withdraw or amend the application to correct his/her name and address, an obvious mistake or an error or omission that in the opinion of the Registrar does not materially alter the meaning or scope of the application, but once the application has been published any amendment or withdrawal of the application must also be published. Anyone may provide written observations to the Registrar before the trademark is registered. After receipt of the written observations the Registrar shall inform the applicant of those observations. However, the observations may prompt the Registrar to reconsider whether or not the requirements for registration had been met and rescind the acceptance of an application, and it will be as though the application was never accepted and it returns to the examination stage.  

Opposition: possible within three months following publication of the application. A decision of the Registrar is subject to appeal to the High Court. 

Granting: the Registrar will issue a certificate of registration, which is prima facie evidence of the registration, and publish a notice of the registration. 

Duration of protection: ten years counted from the filing date. However, trademarks that were registered prior to September 1, 2015 will continue to be valid under the previous rules so that it may be valid up to fourteen years after registration. 

Renewals: a trademark renewed after September 1, 2015 will be valid for further ten-year periods. An application for renewal must be made prior to the expiration date. There is no grace period after the expiration date and the trademark will be automatically removed from the Register.

Late renewal: not possible, however, an application to renew made after the expiration date must be accompanied by a restoration fee and a penalty fee before it can be restored and the restoration must take place within six months after the expiration. 

Assignments, licenses, changes of name and/or address: a trademark may be assigned or disposed of in the same way as any other personal property. The assignment or transmission may either be in connection with the goodwill of a business or independently, or in relation to some or all of the goods or services for which it is registered or limited in a particular manner or locality. Although there is no time limit for registering an assignment or transmission, failing to register the assignment or transmission will make it ineffective against third parties, such as licensees, without notice of the assignment or transmission. Also, the assignee cannot get damages or an account of profits for any infringement that occurs after the date of the assignment or transmission and before its registration if it is not registered within six months. A separate application must be made for each assignment or transmission, but the same application may be used for several trademarks if they are covered by the same assignment or transmission. The application should also be signed by the assignor and the trademark agent for the new owner but if it is not possible for the assignor to sign the application form then appropriate documentary evidence of the assignment or transmission must be provided with the application. This documentary evidence should include an authenticated copy of the assignment or a court order. The signature of the assignor and assignee, if a body corporate, must be that of a director, secretary or other principal officer of the body corporate unless some other person can satisfy the Registrar of their authorization to sign it. There are no capital gains taxes in the British Virgin Islands, but where a BVI company is not involved the assignment or transmission attracts a stamp duty of U.S.$ 5. However, if the assignor does not sign the statutory form then further advice on the valuation of the BVI trademark is necessary since it may attract ad valorem stamp duty at 4% of the consideration or the market value of the trademark, whichever is higher. 

Revocation for non-use: if a registered trademark has not been used for a continuous period of at least three years, if may be revoked if no valid reason for non-use exists.

Legal effect of a registration: personal property that is acquired by the registration of the trademark and gives a right to prevent or recover damages for infringement.  

Re-registration of expired marks: possible.