The Bermuda Registry General has announced that the much-anticipated new trade marks law, the Trade Marks Act 2023, will come into effect on 1 February 2025 and no longer on 1 January 2025 as originally anticipated. This Act replaces the Trade Marks Act 1974. The new law brings with it several significant changes to the way trade marks are managed and protected in Bermuda.
Most of the key changes represent a welcome overhaul of the outdated system, and include:
- The expansion of the types of marks that can be registered, which now include certification marks and collective marks, as well as non-traditional marks, such as sounds and colours.
- Doing away with the requirement for identical or similar marks owned by the same proprietor in an identical or similar class to be associated. The dropping of this requirement removes in turn the need for owners of associated marks to dissolve an association before they have the freedom to register transactions against their Bermuda trade mark registrations.
- Removal of the two-part split Register system, under which trade marks could either be registered in Part A or Part B, with different rights conferred by registration under each Part. All existing trade marks are to be moved to a single Register, with any new registrations to be entered into the newly-merged, single Register.
- Outlining explicitly the procedures in order to officially register security interests against trade mark registrations and expanding the provisions governing trade mark licenses.
Some new obligations are to be met by brand owners and registered agents going forward, including:
- Applicants will be required to state whether a mark is either in-use in respect of the concerned goods and / or services, or that there exists a bona fide intention to use the mark.
- Applicants may have the option to voluntarily disclaim elements of their trade marks on application potentially avoiding the issuance of basic Office Action(s).
- There are a number of more explicit requirements and restrictions placed on registered trade mark agents, making the need to choose carefully an experienced and knowledgeable agent to guide applicants through the new process(es) even more important.
Additional notable changes that come with the implantation of the new law are:
- A trade mark will now be initially registered for a period of ten years, after which on application to the Registry, it may be renewed for further periods of ten years, replacing the old system under which marks were initially registered for a period of seven years, and renewable for periods of 14 years.
- The right to re-register a UK trade mark on the same basis and subject to the same conditions in Bermuda is omitted from the new law, though priority may now be claimed under the Paris Convention. The new law also provides for the designation of Bermuda as a contracting party to an international trade mark registration via WIPO, though in practice there is no current anticipated date of Bermuda’s accession to the Madrid Protocol.
- Stronger enforcement mechanisms to protect trade mark owners from infringement and counterfeiting, providing for increased penalties for those found guilty of trade mark infringement, as well as the ability for trade mark owners to seek more substantial damages and injunctions against those acting in bad faith.
Under the transitional provisions as provided to date, any applications filed prior to the effective date of the new law will be processed by the Registry under the current law. New applications filed on or after the effective date will be processed under the provisions of the new law.
While Bermuda is also looking to revamp its patents legislation, this is still under development.
Overall, the new trade marks law represents a significant step forward in the protection and management of trade marks in Bermuda. The modernised registration system, expanded scope of registrable marks and enhanced enforcement mechanisms all contribute to a more robust and effective trade marks regime that benefits businesses and individuals alike.