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APEX LAW GROUP LTD. (Former Name – LYNDA MILLIGAN-WHYTE & ASSOCIATES) Barristers, Attorneys & Notaries Public |
BERMUDA TRADE MARK OR SERVICE MARK REGISTRATIONS
Veritas Place, 6th Floor, 65 Court Street,
Hamilton HM 12
Telephone: (441) 295-1302 Facsimile: (441) 295-8555; E-mail: LMW@Milligan.bm
MEMORANDUM ON TRADE
MARK REGISTRATIONS
IN BERMUDA
(Prepared by: Lynda
Milligan-Whyte, J.D., Senior Attorney; Email: LMW@milligan.bm)
Trade &
Service Marks - Introduction
Trade and Service Marks are the means by
which proprietors, traders or users identify their goods or services. The marks can be in the form of words,
signatures, numerals, designs or logos or a combination of any of these.
Bermuda operates an independent Trade Marks
Register, which comes under the authority of the Registry General’s Department. The Trade Marks Act 1974 (as amended) [hereinafter
referred to as “the Bermuda Trade Marks Act”] permits proprietors, registered
owners or users to register their ‘marks or symbols’ in Bermuda with respect to
goods, classes of goods and services used in the ordinary course of trade
thereby ensuring protection from infringement in Bermuda. Bermuda has also adopted an internationally
agreed (Nice Convention) classification system which divides all goods into 34 classes and all services
into 11 classes.
No local use or intent to use is necessary
prior to application but failure to use the trade mark within a period of five
years following registration may subject the mark to an action by an interested
party for cancellation of the mark.
Registration term is seven (7) years and is renewable for periods of 14
years.
Trade or Service marks of sufficient
distinctiveness are registrable in Bermuda provided they are in respect of particular
goods, classes of goods or services.
Such trade or service marks may be registered by proprietors, owners or
registered users in:
- Part A of the Register - a mark must
inherently distinguish the goods or services from those of other traders
or proprietors. Registration in
Part A of the Register is deemed to be valid unless it can be shown that
the registration was obtained by fraud or offends certain provisions of
the Bermuda Act;
- Part B of the Register – for less
distinctive marks or unused marks.
Service marks are now permitted to be
registered as changes to the Bermuda Trade Marks Act have been passed which
have greatly assisted banks, insurance companies, investment houses,
health-care facilities and the like who could previously only look to the
common law of unfair competition to protect their rights in the name or symbol
by which the public identified their business activities.
The registration of a trademark or service
mark in Bermuda is initially for a period of seven years but may be renewed for
a maximum period of fourteen years.
Applications for the registration of a trade mark in Bermuda are
submitted to the Registry General. The registration
of a Trade or Service Mark in Bermuda gives the proprietor, owner or registered
user the exclusive right to use the mark on the goods or services for which it
is registered.
Eligibility
for Registration
Eligibility for registration in Bermuda
requires that the mark must be used in connection with (a) goods distributed in
or exported from, Bermuda; or (b) services offered in, or from, Bermuda. The Act also permits registrations where
there is a bona fide intention to use
a mark in connection with either of the above at a point in the future.
In order to register a mark in Part A of
the Register, the mark itself must be distinctive either through past use or by
containing one of the following essential particulars:
i)
The
name of a company, individual or firm represented in a special or particular
manner;
ii)
The
signature of the applicant for registration or some predecessor in his
business;
iii)
An
invented word or invented words;
iv)
A
word or words having no direct reference to the character or quality of the
services, and not being a geographical name or a surname.
If the mark does not contain one of the
above essential particulars, registration in Part A may still be allowed
provided evidence of the mark’s distinctiveness is filed with the Registrar.
Licensing
of Permitted Users of Marks
The Bermuda Trade Marks Act allows
permitted users to be licensed as the registered users of a mark. In connection with such an application, the
owner of the mark is required to file a Statutory Declaration specifying details
of the relationship between the owner and the proposed registered user,
particulars of the degree of control to be exercised by the owner in connection
with the use of the mark, the duration of the license and any restrictions on
the use of the mark to be contained in the license agreement. In assessing what is in the public interest,
the Registrar generally will look at the proposed license agreement to
determine whether it grants the owner sufficient authority to prescribe
standards of quality with respect to the services offered in connection with
the mark.
The Bermuda Trade Marks Act specifically
states that the registration of a user shall not confer any assignable or
transmissible right to the use of a mark.
The Bermuda Trade Marks Act also permits
the cancellation of the registered user license upon application by the owner
or any registered user of the mark or it is shown that the registered user used
the mark in breach of any restrictions imposed on his use by the registration
or in such a way as to cause deception or confusion.
Restrictions
on Registration
Trade or Service Marks should not consist
of words, symbols or devices that are:
(a)
descriptive
of the product;
(b)
have
a direct reference to the character and quality of the goods;
(c)
are
likely to deceive or cause confusion;
(d)
are
contrary to law;
(e)
resemble
or are representative of any national, regional or international flags, arms,
crests or emblem;
(f)
contain
scandalous matter;
(g)
are
common names; and
(h)
are
generic.
Length
of Registration
A registration is valid for seven (7) years
and may be renewed for additional terms of 14 years.
Cost
of Registration or Renewals
The legal fees for the processing of the
application to register a trade or service mark in one class are US$500.00 plus
disbursements. The registration fees
payable to the Registry General for such a registration are $378.00 per
class. The legal fees for renewals are
less than the registration fees. The Registry
fee for renewals is $331.00 for each renewal.
Bermuda
Legislation
The relevant legislation that governs trade
or service mark registrations is as follows:
1.
The
Trade Marks Act 1974;
2.
The
Trade and Service Marks Regulations, 1993;
3.
The
Trade Marks (Modification and Amendment) Act 1991; and
4.
The
Government Fees (Trade and Service Marks) Amendment Regulations 2008.
Bermuda is not a party to any international
convention on the protection of trade marks.
Trade
or Service Mark - Registration Procedures
To
prepare and file an application for a trade or service mark in Bermuda, you
will need to decide on whether it is to be registered in Part A or Part B of
the Register. Most applications are made
in Part A since it gives more protection in legal proceedings than Part B. You will need to state the class of goods or
services to be covered. There is an
internationally agreed classification system which divides all goods into 34
classes and all services into 11 classes.
Each Application can only cover one class and you will need to clearly
list the goods or services claimed.
In order to register a mark, the following
must occur:
1. Form
TM-No. 3 to be completed and accompanied by the relevant government fee
(currently $198) for each class in which goods are registered;
2. Three
(3) specimen representations of each Mark to accompany each application;
3. Application
Form
TM-No. 3 must be signed by the applicant or Agent (copy of
authorization to be included);
4. Each
application shall be accompanied by three additional representations of the
Trade Mark exactly corresponding to that affixed to Form TM-No. 3.
5. Applications
for the registration of the same mark in different classes shall be treated as
separate and distinct applications;
6. In
any Application where a drawing or other representation or specimen cannot be
given in the manner aforesaid, a specimen or copy of the trade mark may be sent
either in full size or reduced size;
7. All
applications must provide an address of service in Bermuda. This is where the Registry will send all
official correspondence relating to the registered trade or service mark.
8. Upon
the application being filed with the Registry, an acknowledgement Letter is
issued by the Registry which records the application date being the date it was
received by the Registry.
9. The
Trade Mark Examiner will be looking for several things in the mark, including:
(a) Is the Mark distinctive;
(b) Is the mark already registered;
10. If no
objections are raised or when objections are overcome, the mark will be
advertised in the Official Gazette. The
applicant will receive an advertisement notice prior to the advertisement
appearing in the newspaper stating the date of the advertisement.
11. There
is a statutory period of 2 months from the date of advertisement for anyone to
oppose the registration of the mark.
There is a set procedure and time limits in any opposition proceedings. If the opposition is unsuccessful, the mark
will proceed to registration.
12. The
mark will be entered on the Register and a Certificate of Registration is
issued.
13. The registered mark will be in force for
a period of 7 years and at the end of that period, an owner or registered user will
be entitled to renew it for a period of 14 years.
U.K. Registered Marks
A UK
registered Trade Mark may be accepted in Bermuda under the provisions of
Section 18(4) of the Bermuda Trade Marks Act 1974 (“Bermuda Act”). Generally, any trade or service marks registered
in the U.K. (under the U.K legislation as opposed to European Community
legislation) will automatically be deemed to meet the registrability criteria
laid down in the Bermuda Trade Mark Act subject to the same conditions and limitations
imposed by the UK Registry. Such a registration is always at the
discretion of the Registry General.
Assignment
or Transfer of Trademark
To
prepare and file an application for an assignment or transfer of a trade or
service mark, the following must be submitted:
1. Form TM-No. 6 to be completed and accompanied by the relevant
government fee for each application;
2. Three (3) specimen representations
of each Mark to accompany each application;
3. Application Form TM-No. 6 must be signed by the registered proprietor and
transferee (certified copy of Transfer or Assignment Instrument to be
included);
4. A legal opinion on whether title has
passed to transferee;
5. Applications for the registration of
the assignment or transfer in different classes shall be treated as separate
and distinct applications;
7. In any Application where a drawing
or other representation or specimen cannot be given in the manner aforesaid, a
specimen or copy of the trade mark may be sent either in full size or reduced
size;
8. Upon the registration of an
Assignment of a Trade or Service Mark, the Registrar issues to the Applicant a
Certificate.