The British Virgin Islands Financial Services Commission ("FSC"), which incorporates the Registry of Trade Marks, announced in May 2011 that service marks were no longer recognised under the Registration of United Kingdom Trade Marks Act (Cap. 157 – the UK Marks Act). That communication caused anxiety because it reversed official policy whereby for several years, service marks already registered in the UK were registered in the British Virgin Islands under the UK Marks Act.
British Virgin Islands service mark owners, applicants and professionals have now been reassured by the FSC's statement dated 10 June 2011 that, on further review, it has been decided to resume registration and renewal of UK service marks under the UK Marks Act.
The background to the above development is that the UK Marks Act permits the proprietor of a United Kingdom-registered trade mark to have the mark registered in the British Virgin Islands, and thereby acquire in that territory such privileges and rights in relation to the mark as would be conferred by UK law. The UK Marks Act functions in parallel to the Trade Marks Act (Cap. 158), which provides for registration on a national basis. The (national) Trade Marks Act provides only for trade marks for goods, and has never been thought to include service marks.
The UK Marks Act dates from 1946 at which time the UK did not register service marks, and refers throughout to registration and protection of marks in respect of goods. Amendments made in 1991 and 2001 failed to import into the UK Marks Act, references to services corresponding to the UK's adoption of service mark protection in 1984.
As a matter of practice, the Registry has accepted applications for registration of UK trade marks covering services and has issued certificates of registration to that effect at least since 1995 - hence the concern following May's announcement and the relief since that of June.
Viewed objectively, the express provisions of the UK Marks Act do not contemplate UK service marks and their status needs to be clarified by statute.
The issue surfaced during a review of the UK Marks Act, the Trade Marks Act and the patent, industrial design and merchandise mark laws by an Intellectual and Industrial Property Focus Group. The Group is preparing new and/or revised legislation on all such subjects and is expected to advise that service marks are placed on a clear legal footing. We hope the Group may recommend official ratification of those UK service marks which are purportedly registered under the practice described above.
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