Government moves on urgent need to update IP legislation
Industry sources say there is an urgent need to update Bermuda’s intellectual property laws to allow Bermuda to better compete for the business.
There is broad support for new government measures to address the issues, and agreement it will involve much time and effort.
Government empanelled an Intellectual Property Taskforce which has produced a report on what is needed.
Vance Campbell, the Minister for Tourism and the Cabinet Office has recently told Parliament that the modernisation of the legislative framework governing intellectual property rights will be an enormous undertaking.
And he said it will involve collaboration among the Ministry for Tourism and the Cabinet Office, the Ministry of Home Affairs with the Department of Registry General and the Ministry of Economy and Labour through the Economic Development Department.
Mr Campbell said the objective was to make legislation governing trademarks, patents, registered designs and copyrights more fully aligned with UK and global standards and best practices.
He said industry practitioners had for years petitioned for an updated IP legislative framework, particularly following the advent of fintech legislation and economic substance requirements in Bermuda.
He said: “Consistent with the recommendations of the task force, overhauls of both the Trade Marks Act 1974 and the Patents and Designs Act 1930 are currently in progress. Updates to the Copyrights and Designs Act 2004 will also be completed.”
Government intends to submit to the UK formal requests for extension of several treaties governing the protection of IP rights. The project team is coordinating with the UK Intellectual Property Office and will be submitting copies of the draft legislation to the UK IPO for review and comment.
The Minister said: “Modernisation of the trade marks legislation is entering the final stages of the drafting process. It is anticipated that a new principal Act and regulations will, in due course, be tabled before this Honourable House to replace the existing legislation governing trade marks in Bermuda.
“The draft legislation has been reviewed by the necessary government departments and will soon be reviewed by industry practitioners prior to a final consultative review by the UK IPO.”
The Minister continued: “The proposed new trade marks legislation will: update a regime that was originally enacted nearly 50 years ago, to one that reflects an updated approach to drafting, modern processes and industry best practices; transition Bermuda’s trade mark registration and renewal periods to 10-year terms, which is consistent with standard global practice; provide more clarity and legal certainty as to the rights and obligations of persons with an interest in registered trade marks; and, position Bermuda to be eligible for participation in international treaties and to become a jurisdiction through which international registrations can be affected.”
Minister Campbell also said: “Using the current UK legislation as a model for Bermuda’s updated framework will enable more effective use of UK case law and practical guidance materials to assist in the administration of the trade marks regime.”
Meanwhile, an overhaul of the legislation governing patents and registered designs is also long overdue, the Minister said, since the current legislation was enacted almost a century ago.
“There have been legislative updates applied over the years, but no substantive amendments have been made to the primary Act for nearly 50 years.
Work on modernising the patent legislation has already begun; and that project will follow a similar course as that taken for the trade marks legislation.”
Updates will be made to the copyright legislation, as well, to enable voluntary registration of copyright ownership.
The Copyrights and Designs Act 2004 was enacted more recently than other IP legislation, but updates are needed to enhance the regime to account for modernised practices.
While copyright protection arises without the need for registration, allowing persons to voluntarily register their copyright ownership will create a public record of the copyright claim, thereby putting others on notice of it.
In jurisdictions such as the United States, copyright registration is a prerequisite to filing a claim of copyright infringement.
Mr Campbell said: “The additional transparency resulting from public registration of copyright ownership will not only facilitate greater protection against infringement, but it can also facilitate commercial transactions by making it easier for third parties who wish to license a work to reach the appropriate person.
“Likewise, the government will benefit from additional revenues generated by voluntary registration and ancillary services.”
The Minister said Bermuda will be better situated to attract more companies to register their intellectual property rights here, once the legislative updates are in place.
“Increased registrations from global market participants, increased government revenues, updated and more efficient administrative practices and processes, and access to well-established case law in the United Kingdom are all benefits that are anticipated to result from this modernisation initiative.”