Bermuda: Crucial changes to the Trade Mark Act
We are pleased to report that the Bermuda Registry General has now issued an Industry Notice confirming that the new Trade Mark Act has been approved by the Bermudan Parliament.
It is anticipated that the new Act will come into effect from 01 February 2025, which is a month later than previously scheduled. It is worth noting that this date could change again, and a formal commencement notice will be issued one month prior to the Act coming into force. We will keep our clients updated on any future announcements, and any updates will also be reported on our website.
The new Act includes several welcome changes, including the introduction of a multi-class application system and the removal of the requirement for trade mark owners to associate similar and identical marks. There are also some additional requirements for applicants and agents to consider when filing new applications. These include the requirement for a statement of use, and the ability to voluntarily disclaim elements of a mark upon filing.
The following key changes have now been confirmed by the Registry General:
CHANGES TO THE INITIAL REGISTRATION AND RENEWAL TERMS
The new Act will introduce an increased term of the initial registration from 7 years to 10 years. Subsequent renewals will see a reduced term from 14 years to 10 years, which will bring Bermuda into line with most other jurisdictions worldwide.
PRIORITY CLAIMS AND INTERNATIONAL DESIGNATION
The new legislation will allow for priority to be claimed under the Paris Convention, as well as enabling Bermuda to be designated as a contracting party of an international trade mark via the Madrid Protocol. However, these new elements will not be operational until Bermuda accedes to these two international treaties, for which a scheduled timeline is not yet available.
REMOVAL OF THE ASSOCIATED TRADE MARK REGIME
As mentioned above, the new legislation will remove the requirement for associations of identical or similar marks owned by the same proprietor. This will benefit trade mark owners who wish to assign their marks separately.
The Registry General has confirmed that trade mark owners wishing to remove previously-required associations may do so once the new Act comes into force.
STATEMENT OF USE/NON-USE AND VOLUNTARY DISCLAIMERS
As of 1 February 2025, applicants will be required to state whether a mark is in use, or whether they have a bona fide intention to use the mark in respect of the goods and/or services concerned.
Applicants will now have the option to voluntarily disclaim elements of their mark. This is a welcome change that will enable trade mark to avoid receiving an official action.
INTRODUCTION OF MULTI-CLASS APPLICATIONS
The current law only allows for single class applications, meaning that applicants are required to file separate applications for each class that requires protection. Under the new Act, Bermuda will move to a multi-class application system, so allowing applicants to include any number of classes in one application.
AMENDED DEFINITION OF A TRADE MARK
It will no longer be a requirement to provide graphical representations of a trade mark, so allowing for a broader range of application types. The new legislation will allow for the registration of certification marks and collective marks, and non-traditional marks, including sounds and colours.
THE REMOVAL OF THE "SPLIT" PART A AND B REGISTRATION SYSTEM
The Bermuda Trade Mark Register is currently split into two parts:
• Part A, for marks that are inherently distinctive or have acquired distinctiveness through use; and
• Part B, for marks with a lower level of distinctiveness, but which are nonetheless "capable of distinguishing" the goods/services of the owner.
Once the new legislation is enacted, all existing trade marks will be transferred to the new register, irrespective of whether they are currently registered in Part A or Part B.
ENFORCEMENT ENHANCEMENTS
The new legislation will implement stricter penalties for individuals found guilty of trade mark infringement and counterfeiting, thus allowing trade mark owners to pursue greater damages and injunctions against parties acting in bad faith.
We would be pleased to answer any further questions you may have regarding the new law in Bermuda, as well as assisting you with your trade mark applications, renewals and recordals in this jurisdiction.
