Bermuda's Trade Marks Act 2023: Stand by for 2025 implementation

Bermuda's Trade Marks Act 2023 is expected to come into effect on 1 February 2025.

This is subject to the issuance of a formal commencement notice to be published one month in advance of the start date. We outlined some of the key changes to be implemented in our earlier article: New Bermuda Trade Marks Law receives royal assent. Regulations and accompanying forms are in the process of being finalised and final forms will be available on the Gov.bm website prior to commencement.

As anticipated, certain parts of the new legislation will be implemented at a later time as Bermuda continues to work on having certain international treaties, including the Paris Convention and Madrid Protocol, extended to the jurisdiction.

Multi-class applications will be allowed under the new legislation. It will also be possible to merge existing single class registrations resulting from applications filed on the same date into a single multi-class registration on application to the Registrar resulting in a more cost effective and efficient registration process which will be welcomed by brand owners. The latest version of the Nice Classification will also be used.  

Requirement for association removed

Another positive change in the new Bermuda Trade Marks Law is that the legislation will no longer require the association of identical or similar trademarks owned by a single owner in identical or similar classes. For example, a Bermuda trade mark application for XYZ in Class 25 for "clothing" would typically need to be associated with a trademark application for XYZ for "leather goods" in Class 18. Associated trade marks are a relic stemming from the UK Trade Marks Act 1938, whereby they must be assigned together unless the association is dissolved prior on the basis that the trade mark owner can demonstrate that there is no likelihood of deception or confusion as a result of the dissolution. This can be very hard to prove and can make it difficult for international brand owners wishing to split off and sell certain brands or sub-brands within their portfolios to third parties or even intra-group entities.

As a way of transitioning into the  new legislation, the Bermuda Registry no longer requires the association of trademarks other than in respect of:

      i.        the registration of "parts" of trademarks which the owner owns separately to the whole trade mark

     ii.        series marks (the registration of several variations of a trade mark that resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the mark within a single application)

Examination reports issued on or after 1 June 2024 will no longer require the association of trademarks other than in the circumstances outlined.

How Ogier can help

Ogier's Intellectual Property (IP) team can guide you through the process of registering a trade mark in Bermuda as well as advise across the full spectrum of IP rights, providing solutions for all types and sizes of business at all stages of the IP life cycle. For more information about registering trade marks under the new Bermuda Trade Marks Act, feel free to contact Sophie Peat.

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Disclaimer

This client briefing has been prepared for clients and professional associates of Ogier. The information and expressions of opinion which it contains are not intended to be a comprehensive study or to provide legal advice and should not be treated as a substitute for specific advice concerning individual situations.

Regulatory information can be found under Legal Notice