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New measures to update trademark laws

Sophie Peat spearheads Ogier’s global intellectual property group and advises the Cayman Government on IP law (Photograph supplied)

Caribbean and offshore trademark law expert Sophie Peat believes local legislative changes coming into affect could have an impact for any brand owner that operates or holds trademarks in Bermuda.

Ms Peat wrote specifically about the proposed Bermuda legislation in an article for World Trademark Review, a publication that specialises in worldwide news, analysis and data on the management of trademarks.

She is a partner at Ogier, a law firm with offices in the British Virgin Islands, Cayman Islands, Guernsey, Ireland, Jersey and Luxembourg.

She serves on Cayman’s Intellectual Property Steering Committee and played a key role in updating their trademark legislation (2017).

The new Bermuda rules propose to update brand protection for owners operating or holding Bermuda trademarks, part of changes refreshing outdated laws for trademarks, copyright, patents and designs.

Based on the UK measures, UK officials will be invited to review and comment on the proposed draft legislation after industry consultation.

Ms Peat writes: “The UK Government will also be asked to extend several international treaties governing the protection of IP rights to Bermuda as part of the modernisation process.

“The new trademark legislation has already been drafted and is out for industry consultation. Bermuda's current trademark law was last updated in the 1990s, but is almost 50 years old in effect.

“The minister has advised that the new trademark legislation will reflect ‘modern processes and industry best practices’.

“The term of initial trademark protection will increase from seven to ten years and the current 14-year renewal term will decrease to ten years in line with most other jurisdictions around the world.”

She discusses key potential changes that could result. The Trademark Register, for example, which at present observes two types, could bring them all under the same banner.

One treatment is for trademarks that are inherently distinctive or have acquired distinctiveness through use; and a second section is for marks with a lower level of distinctiveness, but which are nonetheless "capable of distinguishing" the goods/services of the owner.

This distinction follows the old UK Trademarks Act 1938, but it can be confusing for brand owners who are often unsure of the differing protections provided under each part of the register. Trinidad & Tobago removed the distinction in 2020 and made the changes retroactive.

She said: “I would imagine that Bermuda will take a similar approach when modernising its law, which will make the prosecution process easier for both local and international brand owners to follow.”

Ms Peat further proposed multi-class registration to bring costs down, as opposed to the single class which exists on the island at present.

She said: “If Bermuda moves to a multi-class system, it will be interesting to see whether the Bermuda Registry-General will undertake an exercise to merge existing registrations and/or pending applications for identical marks in different classes in the name of the same owner into multi-class applications/registrations or whether it will be necessary for brand owners to review their own Bermuda trademark portfolios and apply to merge the relevant applications/registrations.”

There are questions as to if filing fees will rise, if changes would be made to accommodate non-conventional trademarks and do away with old provisions dealing with series marks and associated marks.

Ms Peat sees benefits for Bermuda to join up to the Madrid Protocol and ask for a UK extension of protections under the Paris Convention.

She writes: “A timeline for the implementation of the new trademark legislation is not yet available and will largely depend on the time that it takes to complete the consultation with the UK IPO and to extend any international treaties.

“Updates to Bermuda's patent, design and copyright legislation are also in progress. Changes to the copyright legislation will allow for the voluntary registration of copyright ownership in Bermuda.”

World Trademark Review

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Published February 09, 2023 at 7:57 am (Updated February 09, 2023 at 7:57 am)

New measures to update trademark laws

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