Sep 13, 2024 (Newsletter Issue 9/24)
New Trade Marks Act into Force on Jan 1, 2025
The Bermuda Registry General has officially announced that the much-anticipated new trade marks law, the Trade Marks Act 2023, will come into effect on 1 January 2025, replacing the Trade Marks Act 1974.
The new law brings with it several significant changes to the way trade marks are managed and protected in Bermuda.
Key changes include:
- The expansion of the types of registrable marks by certification marks, collective marks, and non-traditional marks, such as sounds and colours.
- Doing away with the requirement for identical or similar marks owned by the same proprietor in an identical or similar class to be associated.
- Removal of the two-part split Register system, under which trade marks could either be registered in Part A or Part B, with different rights conferred by registration under each Part. All existing trade marks are to be moved to a single Register, with any new registrations from 1 January 2025 to be entered into the newly-merged, single Register.
- Outlining explicitly the procedures in order to officially register security interests against trade mark registrations and expanding the provisions governing trade mark licenses.
Some new obligations are to be met by brand owners and registered agents going forward, including:
- Applicants will be required to state whether a mark is either in-use in respect of the concerned goods and / or services, or that there exists a bona fide intention to use the mark.
- Applicants may have the option to voluntarily disclaim elements of their trade marks on application potentially avoiding the issuance of basic Office Action(s).
Additional notable changes that come with the implantation of the new law are:
-A trade mark will now be initially registered for a period of ten years, after which on application to the Registry, it may be renewed for further periods of ten years.
- The right to re-register a UK trade mark on the same basis and subject to the same conditions in Bermuda is omitted from the new law, though priority may now be claimed under the Paris Convention. The new law also provides for the designation of Bermuda as a contracting party to an international trade mark registration via WIPO, though in practice there is no current anticipated date of Bermuda's accession to the Madrid Protocol.
- Stronger enforcement mechanisms to protect trade mark owners from infringement and counterfeiting, providing for increased penalties for those found guilty of trade mark infringement, as well as the ability for trade mark owners to seek more substantial damages and injunctions against those acting in bad faith.
Under the transitional provisions as provided to date, any applications filed prior to the effective date of the new law (i.e. on or before 31 December 2024) will be processed by the Registry under the current law. New applications filed on or after the effective date will be processed under the provisions of the new law.
While Bermuda is also looking to revamp its patents legislation, this is still under development.
Overall, the new trade marks law represents a significant step forward in the protection and management of trade marks in Bermuda. The modernised registration system, expanded scope of registrable marks and enhanced enforcement mechanisms all contribute to a more robust and effective trade marks regime that benefits businesses and individuals alike.
Source: www.hsmoffice.com
Nov 08, 2023 (Newsletter Issue 9/23)New Trade Marks Law Receives Royal AssentOn 17 October 2023, the Trade Marks Act 2023 and Trade Marks and Service Marks Regulations Amendment and Validation Act 2023 received royal assent.
The new law is based on that of the UK. It significantly modernises Bermuda's existing trade marks regime.
Key changes include:
- Removal of the graphical representation requirement for trademarks
- An increased term of initial registration from seven to 10 years
- A reduced renewal term from 14 years to 10 years
- The introduction of the 12th Edition of the Nice Classification of goods and services with retroactive effect from 1 January 2023
- The removal of the "split" Part A and B registration system
- Protection for collective and certification marks, and for well-known trade marks under Article 6bis of the Paris Convention.
- Claims to Paris Convention priority will be honoured as well as claims to priority from other relevant overseas applications.
- Access to International Applications in accordance with the Madrid Protocol upon Bermuda's accession.
Accompanying trade mark regulations, forms and fees are awaited to bring the legislation into full effect. For more details click here.Source: www.ogier.com Feb 16, 2023 (Newsletter Issue 3/23)New Trademark Law DraftedOn 9 December 2022, Bermuda's Minister of Tourism and Cabinet Office issued a ministerial statement that a new trademark law has been drafted to modernize the current law, which was enacted almost 50 years ago. The new law is modeled on UK’s trademark law and as such, the UK Intellectual Property Office will be invited to review the draft law in due course. The UK will also be asked to extend a number of international intellectual property treaties to Bermuda.
Among the proposed amendments is the accession to the Madrid Protocol to allow international registrations. Furthermore, the renewal periods for trademark registrations will be reduced from 14 to 10 years. In addition, the current Register divided into Parts A and B will likely be merged into a single register.
For further information, please contact the contributor here
Source: Ogier, Cayman Islands Sep 06, 2018 (Newsletter Issue 15/18)Official Fees IncreasedOn April 1, 2018, the Trade Marks Registry of Bermuda increased the official fees for trademark matters. Generally, the fees were raised by approximately 5 percent for matters including registration, renewal, and recordal of marks.
Source: Caribbean IP, USA Presently the Legal basis is the Trade Marks Act 1974, as amended by the Trade Marks (Modification and Amendment) Act 1991, and the Trade Marks and Service Marks Regulations 1993. However, Bermuda has signed into law a new act which will come into effect on 1 January 2025, replacing the Trade Marks Act, 1974.
Bermuda is not a member of the Madrid Agreement, the Madrid Protocol and the European Union.
Trademark protection is obtained by registration, although there is some recognition of the first user of a mark. Under the new law, the right to re-register a UK trademark on the same basis and subject to the same condition in Bermuda is omitted from the new law. Priority can now be claimed under the Paris Convention in trademark as well in this new law.
Nice classification, 11th edition.
Registrable as a trademark are marks that are distinctive or are capable of distinguishing the goods or services of a proprietor from those of another proprietor. A mark includes a device, brand, heading, label, ticket, name, signature, word, letter numeral, or any combination thererof. The new law also permits registration of non-traditional trademarks, such as sound and colour marks.
The following trademark types are registrable: trademarks and service marks.
The application is filed at the Registry General.
A separate application must be filed for each class.
Foreign applicants need a local agent.
A signed authorisation of agent form is necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
Trademark applications accepted by the Registrar are published in the official gazette prior to registration.
The approximate time frame for completing the registration process of a trademark in Bermuda is from 8-12 months.
National:
The opposition period is two months from the publication date of the application.
Protection begins with the date of application. A trademark registration is valid for seven years from date of application. The registration is renewable for subsequent periods of 14 years.
However under the new law coming into force on 1 January, 2025, a trademark will now be initially registered for a period of 10 years, after which on application to the Registry, it may be renewed for further periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official trademark application fee is USD 538 for each class. The registration fee is USD 538 for each class.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Oct 03, 2024
HSM IP Ltd., Grand Cayman, Cayman Islands
