TRADE AND SERVICE MARKS
Trade Marks and Service Marks in Bermuda are currently registered under the Trade Marks Act 1974 and give proprietors exclusive rights to the mark per the specifications provided.
NEW APPLICATIONS
It is recommended that a search be undertaken for any conflicting Trade or Service Marks before applying for a new mark. This can be done in person, or by sending a request to the Registry, who will do it on your behalf.
New applications must be filed on a Form TM-3 (Application for Registration), giving full particulars of the mark, including specifications and the full name and address of the applicant. A clear copy of the mark is also required unless it is a word mark. A separate application is required for each class as Bermuda does not allow multi-classed applications.
A local address for service is required by all overseas applicants, a Form TM-13 (Authorization of Agent) signed by the applicant appointing a local agent will satisfy this demand.
Upon receipt of the application, the Bermuda Intellectual Property Office (BIPO) will issue an Application Acknowledgement with the official Trade/Service Mark Number which also advises that the application has been received and states the particulars therein. If there are any errors or omissions, or corrections that need to be made, they should be brought to the attention of the BIPO at once. When the application reaches the examination stage a fee will be charged for any changes.
Within 4 – 6 months an Examination Report will be issued. Applications may be accepted unconditionally and upon acceptance, they will immediately go to advertisement. An application may be given conditional acceptance or rejected on various grounds. It is possible to overcome these citations or refusals. Applicants are given 6 months to respond to the Examination Report, and extensions of 2-month time periods spans are allowed.
Once the BIPO has issued the Acceptance Report the mark will be advertised. There is a 2-month Opposition Period following advertisement to allow any third parties the opportunity to object to the registration of the mark.
A form TM-4 (Application for Entry) should be filed within 12 months of advertisement to request that the mark be entered in the register and a certificate be issued.
Initial registration is for 7 years and the mark may be renewed indefinitely for successive 14-year periods.
Marks are subject to cancellation on application by third parties after 5 years of non-use.
CHANGE OF NAME (NO CHANGE OF BENEFICIAL OWNERSHIP)
A Change of Name must be filed with the BIPO at the earliest opportunity. There is no prescribed form for this event. The required documents are a certified copy of the proof of name change and Form TM-13 (Authorization of Agent) in the new company name. If the proof of change is not in English then a certified translation is required along with the translator’s credentials.
An affidavit from a Notary Public stating that they have seen the proof of name change is not acceptable in this circumstance.
CHANGE OF ADDRESS
A Change of Address must be filed with the BIPO at the earliest opportunity. There is no prescribed form for this event. The required documents are a request detailing the new address and Form TM-13 (Authorization of Agent) also in the new address.
CHANGE OF ADDRESS FOR SERVICE/AGENT
The only requirement to change the agent of record is a request and a Form TM-13 (Authorization of Agent) appointing the new agent.
MERGERS
Changes of ownership must be filed forthwith, there is no prescribed form for a Merger. The required documents are a request, a certified copy of the merger document or an extract from the registry of the local governing body, and a Form TM-13 (Authorization of Agent) in the new company name. If these documents are not in English then a certified translation is required along with the translator’s credentials.
An affidavit from a Notary Public stating that they have seen the merger documents is not acceptable in this circumstance.
ASSIGNMENTS
Changes of ownership must be filed forthwith. The prescribed forms for an assignment are Form TM-6 (Joint Request to Register a Subsequent Proprietor) or Form TM-7 (Request to Register a Subsequent Proprietor). The required documents are either Form TM-6 or TM-7, a certified copy of the Deed of Assignment or assignment instrument (detailing the particulars of both parties), and a Form TM-13 (Authorization of Agent) in the Assignee’s name. If the Deed of Assignment is not in English then a certified translation is required along with the translator’s credentials.
An affidavit from a Notary Public stating that they have seen the assignment deed is not acceptable in this circumstance.
RENEWALS
A renewal may be filed up to 3 months before the expiry date of the Trade Mark or Service Mark. The BIPO will send out a Renewal Notice 2 months before the mark is due to expire.
Renewals are filed on a Form TM-9 (Renewal of Registration) along with a TM-13 (Authorization of Agent) if the person filing is not the agent of record.
If the mark has expired then it may be restored to the register up to 6 months after expiration by filing a Form TM-10 (Additional Fee to Accompany TM-9) and paying the restoration fee.
PATENTS
Patents are filed under the Patents and Designs Act 1930 and gives inventors protection for 16 years.
NEW APPLICATIONS (BERMUDA PATENTS)
New applications are sent to the UK for examination, with the applicant bearing the cost, and then returned to Bermuda for final registration. Registration is for a 16 year period.
Application is on Form A (Application for Patent) along with an Authorization of Agent.
NEW APPLICATIONS (UK PATENTS)
Per Sec. 16(1) of the 1930 Act, the grantee of a UK Patent may apply to have it re-registered in Bermuda within 3 years from the date of issue.
Application is on Form A (Application for Patent) along with an Authorization of Agent.
As with Trade Marks and Service Marks, any changes to Patents or changes in beneficial ownership must be filed forthwith.
COPYRIGHTS
Copyrights are governed by the Copyright and Designs Act 2004. There is no Copyright Register in Bermuda however Bermuda follows the convention of the UK when it comes to the duration of copyright protection which is deemed to be in effect from the moment of creation.
