Make Way for Modernization in British Virgin Islands – Complete Overhaul of Current Trademarks Regime as of September 1, 2015

Make Way for Modernization in British Virgin Islands – Complete Overhaul of Current Trademarks Regime as of September 1, 2015

Patricia Covarrubia   June 04, 2015   No comments:

On September 1, 2015, the British Virgin Islands’ new Trade Marks Act, 2013 and Trade Marks Rules, 2015 will go into effect, ending the dual filing system currently in place for trademarks. Once the new laws go into effect, it will no longer be possible to register marks in BVI on the basis of an existing UK registration.

I wish I was here

For many years, this has been a relative fast track to registration for UK mark owners. For trademark owners without an existing UK registration, the current regime requires application within the local system. At present, the local system allows new filings for goods only, and all goods must be classified according to the antiquated British classification system.

Long outdated, this classification system does not afford adequate protection for many mark owners. Under the new regime, all applications will be made within the local filing system, and finally it will be possible to register both goods and services according the International Classification system. New fees have not yet been set but should be determined before the September 1st implementation of the new trademark laws.

Post written by Katherine Van Deusen Hely (Caribbean IP).

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Registering numerals in Chile: there's safety in numbers ...

Registering numerals in Chile: there's safety in numbers ...

Jeremy   November 13, 2014   2 comments:

In a ruling earlier this year the Chilean Industrial Property Court overturned the decision of Chile's National Institute of Industrial Property (INAPI) and allowed the registration of the mark 1818 for products in Class 25.

The applicant, Brooks Brothers Group Inc., sought to register the trade mark "1818" -- the year in which the original Brooks Brothers business was founded. Although this application was unopposed, it was rejected ex officio by the head of INAPI on the ground that it was contrary to Articles 19 and 20e of the Industrial Property Law (Law No. 19,039) because the term “1818” was non-distinctive or descriptive of the products in question.

On appeal, the Industrial Property Court took the opposite view and explained:

“as previously resolved by this Court, numbers from 0 to 9 cannot be registered as word marks, since they allow the composition of the remaining numbers (infinite) of the system; in all other cases, numbers are perfectly registrable, and indeed, easily distinguishable from each other, because each of them represents a different amount. This reasoning justifies the registration of the figure ‘1818’ as a trade mark, given that it has its own distinctive characteristics and a particular appearance allowing it to obtain trade mark protection.”

This is good news -- except perhaps for anyone who wants to register the number "8181" for goods in Class 25, which is identical to "1818! when viewed upside down.

Source: "Court Rules on Registration of Numbers as Trademarks", by Francisco Silva, Silva & Cia., Santiago, Chile, INTA Bulletin vo.69 no.18

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