British Virgin Islands Registered Trademark License – Trademark

0

To print this article, all you need to do is be registered or log in to Mondaq.com.

Known worldwide for its strong shipping registry, trusts, funds and corporate law sectors, the British Virgin Islands has also become a globally competitive jurisdiction for the registration and protection of intellectual property. BVI companies and independent brand owners. The territory’s trademark regime also provides comprehensive provisions for trademark licensing and related matters.

Who can grant a trademark license?

At BVI, a trademark holder can grant a license to a third party, authorizing the holder to use a registered mark in the manner declared by the license. A license may also authorize a holder to grant a sub-license.

Notably, the BVI Trademark Act provides that any person may, with the consent of the owner of the mark, be registered as a licensee of the mark, even if a mark has not been registered, but an application registration has been filed with the BVI Trademark Registry.

General or limited license

A trademark license is an agreement in which the owner of a trademark permits another person to use the trademark in connection with specific products or services. For example, the owner of a professional sports team may authorize a clothing manufacturer to print their team’s name and logo on their products.

It is important to note that a trademark license is different from a trademark assignment.

In BVI, a license to use a trademark may be general or limit. For example, a limited license may apply to:

  • some, but not all, of the goods or services covered by the registered mark

  • use of the mark in a particular manner or locality

Exclusive license

An exclusive license only authorizes the licensee to use a trademark registered in accordance with the license, which may be general or limited. No other person, including the person who granted the license, may use a mark which benefits from an exclusive license.

Under the terms of the license, the exclusive licensee has the same rights and remedies with respect to post-grant matters as if the license had been an assignment.

In addition, an exclusive licensee has the same rights against a successor in title as against the original person who granted the license.

Beneficiaries and Beneficiaries

A license issued under the BVI Trademark Laws must be in writing and signed by or on behalf of the licensor. When the licensor is a legal person, the seal of the legal person must be affixed to the license agreement.

It is important to note that a license binds the successor in title to the interest of the licensor, unless the license provides otherwise.

Cancellation of a licensee’s mark

The Registrar has the power to cancel the registration of a trademark licensee in specific circumstances. Article 88 of the Trademark Law provides the following:

  1. the brand is no longer registered

  2. the application for registration of the mark … is abandoned, withdrawn or rejected

  3. the owner or licensee, pursuant to any license agreement, requests such cancellation

  4. the the owner or licensee has made a false statement or has omitted to disclose certain material facts in the application for registration, or the circumstances have materially changed since the date of registration of the mark

  5. the recording should not have been made in view of the rights conferred on the plaintiff by virtue of a contract in the performance of which the plaintiff is interested.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

POPULAR ARTICLES ON: British Virgin Islands Intellectual Property

Intellectual Property Enforcement Handbook

Wake

A brief guide addressing common issues and concerns of the IP enforcement landscape in the Philippines.

IP Valuation: How to Measure What You Can’t See

Dennemeyer Group

The value of intellectual property (IP) assets has exploded over the past few decades. In some cases, the value of an organization’s intellectual property far exceeds that of its physical resources, property or other assets.

Types of marks: everything you need to know

Abu Naja

As industries race to gain a legal monopoly on their unique innovations through trademark registration, we are inundated with an ever-increasing number of products with

UAE Anti-Counterfeiting Guide

BSA Ahmad Bin Hezeem & Associates LLP

This chapter is part of the 2022 Law Over Borders Anti-Counterfeiting Comparative Guide. The Law Over Borders Comparative Guides provide essential information on the law and practice…

Share.

Comments are closed.