Marcas

Bermuda's New Trademark Act Coming into Effect February 1, 2025

The registry will now accept a broader range of marks, including certification marks, collective marks, and non-traditional marks such as sounds and colors.

By Patrice Muhammad, Partner Eproint Bermuda

The Registrar General of Bermuda has announced that the Trade Marks Act 2023 will come into effect on February 1, 2025, replacing the current Trademarks Act 1974. The update on the implementation date was confirmed through an Industry Notice dated November 14, 2024, with the delay allowing the government and agents more time to prepare and ensure a smooth transition.

Key Changes and Modernization

The new Act introduces several significant modernizations to Bermuda's trademark system. The registry will now accept a broader range of marks, including certification marks, collective marks, and non-traditional marks such as sounds and colors. The previous two-part register system will be consolidated into a single register, streamlining the registration process.

Registration periods have been adjusted, with initial registrations now lasting 10 years (previously 7 years) and renewals extending for 10-year periods (previously 14 years). The Act also eliminates the requirement for associating identical or similar marks owned by the same proprietor.

New Requirements for Applicants

Under the new system, applicants must declare either current use of the mark or a bona fide intention to use it. They will have the option to voluntarily disclaim elements of their trademarks during application, potentially avoiding basic Office Actions. The Act also implements stricter requirements for registered trademark agents.

International Treaties and Enforcement

While the Act removes the right to re-register UK trademarks, it introduces provisions for Paris Convention priority claims, and Madrid Protocol participation. These will not come into effect immediately on February 1, 2025. Bermuda's accession date for both remains undetermined, as work to update other legislation to comply with the requirements for both treaties is ongoing. The new legislation also strengthens enforcement mechanisms with increased penalties for infringement and enhanced options for damages and injunctive relief.

Transitional Arrangements

Applications filed before February 1, 2025, will be processed under the current law. For existing association requirements:

-Examination reports issued before June 1, 2024, must address all associations.

-Reports issued after June 1, 2024, only require registration of associations under Sections 25(2) and 25(3).

-No new Examination Reports will be issued, responses should be guided accordingly.

If you require any further information on this or any other topics, please feel free to contact Eproint