The Bermuda Government passed a new trade marks legislation, the Trade Marks Act 2023 which is expected to be enacted in early 2025. The new Act closely mirrors the UK Trade Marks Act 1994 (as amended), and seeks to standardise Bermuda’s trade marks legislation in line with most other common law jurisdictions. It also makes provision for protections afforded under the Paris Convention and international applications under the Madrid Protocol once those International treaties have been extended to Bermuda.

Here is a brief summary of the key effects of this legislation:

Registration

A trade mark registration is to be regarded as personal property. The types of mark that can be registered have been extended to all signs capable of being represented on the Register, including colours, sounds and the shape of goods and their packaging. There will be a single Register, with no A/B distinction and all associations will fall away.

A mark is deemed registrable unless it fails to meet the threshold on absolute and/or relative grounds. The registration process is expected to be quicker, with a more straight-forward examination process and a reduction in the time frame for filing application for entry post-advertisement from 12 to 3 months after expiry of the two month opposition period.

Registration Term & Renewal

The initial registration period is extended from seven to ten years. Renewals will now be in ten year blocks, reduced from the previous fourteen years.

Renewals can be filed up to six months prior to expiry, with a six month late filing period. Failure to renew within this period will result in removal of a mark from the Register. All removals from the Register will be advertised. Applications can be filed for restoration within a three month window following removal if the proprietor is able to establish that failure to renew was unintentional.

Types of Registration

Multi-class registrations will now be possible, as will the ability to register certification and collective marks. A maximum of six marks can be registered as a series where they do not differ in any material respect.

Merger of Registrations

Existing registrations for the same mark with a common filing date can be merged into a single multi-class registration, potentially reducing future maintenance costs.

Registrable Transactions

Certain transactions are deemed registrable, which notably now include the grant of a security interest. Other such transactions include licences which are no longer effective unless in writing and the recordal of assignments, which must be signed both by the assignor and assignee. Documents filed with the Registry will be open to public inspection unless a request for confidentiality made at the time of filing the document is granted.

Infringing Imports

The new Act introduces a process for registrants and licensees to protect against infringing imports by allowing Bermuda Customs to declare identified imports prohibited, leading to an application for forfeiture.

The new legislation is to be welcomed as a significant update, more closely aligning Bermuda’s trade marks law with international practice and development.

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