Bermuda has given notice of draft trade mark legislation, which is set to replace the current legislation, the Trade Marks Act 1974.
The notification makes it clear that the new legislation is modelled on the UK Trade Marks Act 1994, as well as legislation in the Cayman Islands and Guernsey. The rationale behind the new legislation is seemingly to make Bermuda a more attractive business destination through the Paris Convention and the Madrid Protocol.
Here are some of the more important features of the new legislation:
- Conventions: Bermuda will apply the Paris Convention and the Madrid Protocol.
- Trade mark agents: There will be a register of trade mark agents.
- Classification: The Nice Classification will apply.
- Types: There will be provision for certification and collective marks
- Refusal: There will be absolute and relative grounds of refusal.
- Examination, Opposition: There will be examination and provision for opposition.
- Endorsements: There will be provision for disclaimers.
- Duration: Registrations will have a duration of 10 years.
- Rights: The rights of the proprietor will extend to the use of a similar mark for similar goods if there is a likelihood of confusion.
- Infringement: There will be provision for infringement proceedings, together with remedies.
- Threats: An unreasonable threat of infringement proceedings will be actionable.
- Transactions: There will be provision for assignments and licences, including exclusive licences – exclusive licensees will have the right to sue for infringement.
- Revocation for non-use will be possible, as will other forms of rectification.
- Customs: A trade mark proprietor will be able to notify the Collector of Customs of suspected infringing goods, and such goods can be treated as prohibited goods.
- Forfeiture: There will be provision for forfeiture of goods.
- Criminal offences: There will be trade mark offences.
We will provide a further update in due course.