Bermuda: The Benefits Of Registering Trade Marks In Bermuda

Last Updated: 10 August 2017
Article by Kit Cunningham

Trade and Service Marks are the most popular form of registered intellectual properties in Bermuda. Bermuda is a member of the Intellectual Property Caribbean Association, and is considered to be part of the Caribbean and Latin American region for intellectual property matters. Considering the importance a trade mark bears for a company, this is no surprise given that Bermuda is one of the Caribbean's largest offshore economies.

Internationally Recognised Systems

In Bermuda trade marks are regulated and are registrable under the Trade Marks Act 1974 (as amended) (1974 Act). Registration of a trade mark gives the registered owner exclusive rights to use the mark on the goods/services covered by the application, referred to a classes. Bermuda uses the International Nice Classification, established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957) (Nice Classification). Under the Nice Classification there are 45 classes, the first 34 classes covering goods, and classes 35-45 embrace services. When making a trade mark application it is important to choose the class(es) which are appropriate to cover the goods/services the trade mark covers.

For example, if a company produces guitars the appropriate class to apply for in its trade mark application would be class 15. Since the Nice Classification is international and is recognised by numerous countries, the system makes the application for trade marks in multiple jurisdictions more streamlined. This ability to streamline applications in multiple jurisdictions is a great tool for international corporations who wish to protect their trade marks in every jurisdiction they are provided.

At common law under passing off, an unregistered trade mark may still be protected, provided the condition of passing off are satisfied. One of the benefits of registering a trade mark is infringement protection. When the trade mark is registered and someone infringes on the trade mark, enforcement proceedings are usually cheaper and more straightforward than pursuing enforcement proceedings for passing off.

Independent Register

Since Bermuda is a British Overseas Territory it is no surprise that the 1974 Act is largely derived from the UK Trade Marks Act 1938. However Bermuda, unlike some other British Overseas Territories, operates an independent trade mark Register – maintained by the Registry General – which does not allow owners to "extend" a UK registered trade mark. The 1974 Act provides for the filing of single class applications, unlike other jurisdictions which allow for a single application for multiple classes, each class for the same trade mark requires its own application to be filed in Bermuda. It is not necessary to establish use of a trade mark in Bermuda to secure registration, and application can be made based on intent to use. However, where an application is made on intent to use the mark, a registered mark may become exposed to cancellation by a third party if the mark is not used for a continuous five (5) year period. A registered trade mark is valid for an initial period of seven (7) years and may be renewed for further fourteen (14) year periods on payment of a renewal fee. Trade marks in series with very minor differences are permissible.

The Register is divided into Parts A and B. With Part A being reserved for those marks considered inherently distinctive and Part B used for less distinctive marks. Where a trade marks is registered in Part A, the trade mark is considered valid after seven years and can only be challenged on very limited grounds. Someone who infringes a mark that is registered on Part A is not allowed to rely on the statutory defence that there is no likelihood of confusion; this is a defence only available to the infringer of a mark registered on Part B of the Register.

Straightforward Application Procedure

A trade mark application requires the full name and address of the applicant, a clear copy of the mark to be registered and an exhaustive list of the goods/services to be covered. The Registry will usually accept full class headings as specifications. A power of attorney or authorisation of agent signed on behalf of the applicant which provides a local address for service is to be filed along with the application. Once the application is filed the Registry will issue an Application Acknowledgement, which is an official filing receipt, confirming the filing particulars and allocating an application number. The application number will eventually mature into the registration number. This filing receipt is important when it comes to proving priority of a registered mark if an objection or infringement arises.

Following the Application Acknowledgment is the examination report, which tends to be issued within six months of the initial filing. The application will either be accepted unconditionally, given a conditional acceptance or rejected; a conditional acceptance may include the mark being registered on Part B of the Register or contain a disclaimer. Applicants are given six months to respond to the examination report; however, time extensions are available in two month blocks.

If a mark is accepted, the mark will be advertised to allow for any opposition to the registration of the mark to be filed. If no third party opposition is filed within the statutory two month period, an application is made for entry of the mark on the Register and a request for issuing of the certificate of registration. The application for entry must be filed within twelve months of advertisement.

The Bermuda Advantage

The value of having a mark registered in Bermuda has been recognised by many international corporations. The local legislation and independent register provide a framework which provides trust and confidence in protecting marks for local and international corporations. Bermuda has lead the way in intellectual property protection for British Overseas Territories (BOTs). As one of the first BOTs to have an independent register, the value, streamlined approach to applications, and protection this adds to marks registered in Bermuda has been noticed by other BOTs including the Cayman Islands which has recently legislated to establish a trade mark registry in the Cayman Islands, whereby it will no longer be necessary nor possible to extend United Kingdom or European Union marks to the Cayman Islands. Bermuda is continuing to strive forward to improve intellectual property rights, with great help from the Bermuda Bar Association IP Committee. The Registrar General advised last year that the extensions of designs registered in the United Kingdom will commence as early as 1 August 2017. Bermuda recognises the value in protecting intellectual property rights and strives to be at par with internationally recognised standards and developments.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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