Change is on its way for trade marks in Bermuda
The Trade Marks Act 2023 and Trade Marks and Service Marks Regulations Amendment and Validation Act 2023 received royal assent in Bermuda on 13 October 2023. However, a date is yet to be set for the enactment of the legislation.
The current Act has been in effect since 1974 and has not been updated since the 1990s. The new Act closely mirrors the UK Trade Marks Act 1994, as amended, and we can expect to see the modernisation of processes and industry best practices brought about by the new legislation.
What changes can we expect?
Changes to the initial registration and renewal terms. One of the main changes will be 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 in line with most other jurisdictions worldwide.
The removal of the associated trade marks regime. The current Bermuda legislation requires the association of identical or similar trade marks filed by a single applicant in identical or similar classes, but does not allow for voluntary association at the time of filing. The new legislation will remove the requirement for associations, so we will see a significant reduction in official actions being issued by the Registry Office. This will be very welcome news for trade mark owners.
The removal of the "split" Part A and B registration system. The Bermuda Trademark 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.
Amended definition of a trade mark. It will no longer be a requirement to provide graphical representation of a trade mark, so allowing for a broader range of application types, which could include protection for sounds and smells. The new Act will also allow for certification and collective marks.
Introduction of multi-class applications. Bermuda is currently a single class jurisdiction, so this will be a welcome change.
Update to the latest edition of the Nice Classification. The 12th Edition of the Nice Classification of goods and services for marks will apply retroactively for applications filed from 1 January 2023.
Paris Convention priority claims. The new legislation will honour priority claims, allowing trade mark owners to claim priority in Bermuda from priority filings made in other Paris Convention jurisdictions, within a 6 month period.
Joining the Madrid Protocol. This will introduce international registrations, although no target date has been set for accession.
We continue to keep a close eye on this matter, and we will post updates on any developments as they occur.
