RESOURCES

 

EXTENSION OF UK AND EUTMS IN OVERSEAS STATES AND TERRITORIES

EXTENSION OF UK AND EUTMS IN OVERSEAS STATES AND TERRITORIES

It is possible to re-register UK registered trade marks and EUTMs1 in a number of overseas states and territories.  This page lists the states and territories in which we believe (re-)registration is possible for trade marks*, suggesting that the acquisition of UK and EUTM registrations can be advantageous for trade mark owners with an interest in the relevant states**.  This page also details peculiarities for some territories where trade mark law is less well known.

Anguilla

Independent local registration or re-registration based on a UK registration. Re-registration of an EUTM registration or a UK designation of an international registration may be possible – there are conflicting views. UK registrations and EUTMs have no direct effect. Service marks are registrable. International (Paris Convention) priority is available. UK/EU designations of International registrations also have no effect.

Antigua

Independent local registration only. Registration based on a UK registration is no longer possible. Current UK-based registrations will continue for their unexpired terms or for 10 years from 1 October 2006, whichever occurs first. Member of the Madrid Protocol. Service marks are registrable.

Bahamas

There is no provision for extension of registration of UK trade marks, but international (Paris Convention) priority is available and a UK registration certificate may serve as evidence of registrability. Service marks are not registrable. EUTMs have no effect.

Barbados

There is no provision for extension of registration of UK trade marks, but international (Paris Convention) priority is available and a UK registration certificate may serve as evidence of registrability. Service marks are registrable.

Belize

Independent local registration only. Current UK-based registrations will continue in force in Belize for their remaining term and pending UK-based applications will be processed as under the prior law, although they will be deemed registered under the new Act. Service marks are registrable. EUTMs have no effect.

Bermuda

Independent local registration only, although acceptance of an equivalent UK mark can be used to support acceptance of the same mark locally. There is no provision for extension of registration of UK trade marks. International priority (Paris Convention) is not available, but service marks are registrable. UK registrations, EUTMs and UK/EU designations of International registrations have no effect. Single class applications only.

Botswana

Independent local registration only. Member of the Madrid Protocol.

British Antarctic Territory

No IP provisions. UK designations of International registrations have no effect.

British Indian Ocean Territory

UK rights extend automatically. However, EUTMs and UK/EU designations of International registrations do not appear to have effect – there are conflicting views.

British Virgin Islands

Previously, UK registrations could be extended, as well as independent local registration (although local registration did not use Nice Classification). Service marks were registrable in British Virgin Islands only via an application to extend a UK registered mark. International (Paris Convention) priority was not available. EUTMs and UK designations of international registrations had no effect and could not be re-registered. No oppositions for re-registered marks, but validity is dependent on base registration. However, changes to local trade mark law from 1 September 2015 discontinued UK re-registration. Service, collective and certification marks have been introduced.  Other changes have also been made, including claiming Paris Convention priority.

Brunei

Independent local registration only. Member of the Madrid Protocol from 6 January 2017. Previously, marks covering textiles, yarns or threads (all goods in classes 23 and 24 except sarongs and sarong cloth) cannot be registered unless previously registered in the UK. The current/future position in this regard is unclear. Multi-class applications are possible. Service marks (classes 35 to 42) are registrable. A series of marks may be registered.

Cayman Islands

The practice of re-registering UK and EUTM registrations, plus UK designations of International registrations (and possibly also EU designations, although local law does not explicitly provide for this) ends on 31 July 2017. Until this time, applications for re-registration of a UK or EUTM registration may be made at any time during the registration period of the UK or EUTM mark (or IR designations), but the resulting extension will expire with the expiry or cancellation of the UK or EUTM registration. There is no absolute grounds examination or opposition procedure under the re-registration mechanism. An annual maintenance fee is due in January every year. International (Paris Convention) priority is not available. UK designations of International registrations themselves have no direct effect.

However, only independent local registration will be possible from 1 August 2017, with examination (on absolute and relative grounds) and opposition procedures being introduced. Applications must be filed by local counsel. Collective and certification marks are registrable. The annual maintenance fee will still apply. The new law does not however permit the cancellation of registrations on the basis of non-use.

Existing registrations will remain in force until their next renewal date, when they can be renewed for a further ten years, although it will no longer be necessary to submit proof of renewal of the UK, EU or International Registration upon which they were originally based – re-registered marks will be treated as national registrations from 1 August 2017 onwards.

Cook Islands~

There are currently no trade mark provisions. New Zealand trade mark law does not apply. International registrations are not valid.

Dominica

Independent local registration only. UK registrations could be extended until 1 February 2010. Existing UK-based registrations are protected for the remainder of their terms. Service marks are registrable. EUTMs have no effect.

Falkland Islands

There is no local registration. UK rights extend automatically. EUTMs also extend automatically if the mark is also registered in the UK. International registrations designating the UK have effect.  It is not clear if EU designations have effect.

Federated States of Micronesia~

No trade mark legislation enacted – common law rights apply.

Fiji~

Independent local registration, but UK registrations can also be extended. UK-based applications tend to be processed more quickly and do not need to be advertised for opposition purposes. EUTMs have no effect. Service marks are not registrable.

Gambia

UK registrations can be extended. A registration will have the same date as the UK filing date, provided the application is made within 4 months of UK application. The owner of a UK registration has priority over other applicants. EUTMs have no effect.

Gibraltar

Extension of UK registrations or UK designation of International registrations is the only official form of protection available. Only the owner or his representative may apply for registration. EUTMs (and EU designations) and UK designations appear to cover Gibraltar and re-registration of an EUTM may be possible, although there is no actual local legislation in force to this effect. There are conflicting views on this point.

Grenada

Independent local registration only since Trade Marks Act 2012 came into force.  Extension of UK registrations has been abolished, although existing UK-based registrations still have effect under transitional provisions. EUTMs have no effect. Service marks are registrable.

Guernsey

Contrary to common beliefs, UK and EUTM registrations cannot be extended. Independent local registration only, which can be ‘supported’ by a registration in a country party to the Paris Convention (but most usually UK registrations or EUTMs). EUTMs have no direct effect. Registration in Guernsey also covers Alderney, Herm, Sark and other smaller Channel Islands. International registrations designating the UK do not cover Guernsey.

Guyana

Independent local registration, but UK registrations can also be extended (with the latter being the only option for service marks). Local registration is not available for service marks. International priority (Paris Convention) is not available. EUTMs have no effect, neither do UK/EU designations of International registrations.

Isle of Man

UK rights extend automatically. EUTMs are recognised and protected. UK designations of International registrations extend automatically.

Jamaica

There is no provision for extension of registration of UK trade marks, but international (Paris Convention) priority is available and a UK registration certificate may serve as evidence of registrability. Service marks are registrable.

Jersey

Re-registration based on a UK registration is possible. Trade marks can only be registered based on UK registered marks. Only the owner or his representative may apply for registration. UK designations of International registrations appear to extend automatically.  The status of EUTMs and EUTM designations is unclear and could change in the future.

Kiribati~

No purely local trademark applications can be filed. Protection is by extension of UK registrations only. Only the owner or his representative may apply for registration. Single class applications only. Service marks are not registrable. Certified copy of UK registration and a simply signed Power of Attorney required.

Malta

Independent local registration only. EUTMs have effect.

Marshall Islands~

No trade mark legislation enacted – common law rights only, including English common law.

Montserrat

Independent local registration, but UK registrations can also be extended, including service marks. Local registration is not available for service marks. International priority (Paris Convention) is not available. It may be possible to extend EUTMs and International registrations designating the UK – there are conflicting views. EUTMs and UK/EU designation of International registrations have no direct effect.

Nauru~

No trade mark legislation enacted – common law rights only apply.

Niue~

No trade mark legislation enacted – common law rights only. International registrations are not valid.

Palau~

No trade mark legislation enacted – common law rights only.

Papua New Guinea~

Independent registration of trade marks only. Service marks are registrable. Single class applications only.

Pitcairn Islands

Does not appear to have any trade mark law. EUTMs and UK designations of International registrations do not extend and have no effect.

Samoa~

Independent local registration or registration based on a UK or any ‘overseas’ registration is possible, if done within two years of registration. EUTMs have no effect. Single class appliations only. Service marks are not registrable.

Sark

EUTMs have no effect. Guernsey registrations are protected in Sark. UK registrations can no longer be extended.

Seychelles

Independent local registration only.

Sierra Leone

UK registrations can be extended (a certificate of registration is required). EUTMs have no effect. Member of the Madrid Protocol.

Solomon Islands~

UK registrations can be extended. Trade marks can only be registered based on UK registered marks. Only the owner or his representative may apply for registration. EUTMs have no effect. Service marks may be registrable (there are conflicting views). Multi-class applications are permitted.

South Georgia & South Sandwich Islands

No IP provisions. UK, EUTM and International registrations designating the UK or EU do not extend.

St Helena & Dependencies

UK registrations can be extended. Extension of UK registrations is the only form of protection available. Only the owner or his representative may apply for registration. EUTMs and UK designations of international registrations have no effect at present, but the issue is being discussed.

St Kitts & Nevis

Independent local registration only. UK registrations can no longer be extended. Existing UK-based registrations are protected for the remainder of their terms. EUTMs have no effect. Service marks are available, as is international (Paris Convention) priority.

St Lucia

Independent local registration only. UK registrations can no longer be extended. Existing UK-based registrations are protected for the remainder of their terms. EUTMs and UK designations of international registrations have no effect. Service marks are available, as is international (Paris Convention) priority.

St Vincent & the Grenadines

Independent local registration only. UK registrations can no longer be extended. Existing UK-based registrations are protected for the remainder of their terms. Service marks are available, as is international (Paris Convention) priority.

Swaziland

Independent local registration only. No provisions for designations of International registrations. Service marks not registrable. A series of marks may be registered.

Tonga~

Independent local registration only. Trade marks and service marks can be independently registered. Multi-class applications are permitted.

Trinidad and Tobago

There is no provision for extension of registration of UK trade marks, but international (Paris Convention) priority is available and a UK registration certificate may serve as evidence of registrability as an ‘associated trade mark’. Service marks are registrable. Updated trade mark law expected soon, and acceding to the Madrid Protocol thereafter.

Tristan da Cunha

UK registrations can be extended. Extension of UK registrations is the only form of protection available.  Only the owner or his representative may apply for registration. EUTMs and UK designations of international registrations have no effect at present, but the issue is being discussed.

Turks & Caicos Islands

Independent local registration only, although up until 2007 a UK registration could be extended. It is believed that EUTMs and International registrations designating the UK/EU cannot be re-registered, although there are conflicting views. Service marks are registrable. International (Paris Convention) priority is available. An annual maintenance fee is due on 1 January every year. UK designations of International registrations have no direct effect. Single class applications only.

Tuvalu~

UK registrations can be extended. Trade marks can only be registered based on UK registered marks. Only the owner or his representative may apply for registration. EUTMs have no effect. Service marks may be registrable (there are conflicting views). Multi-class applications are permitted.

Uganda

The Ugandan Industrial Property Act 2014 is now in force, although no regulations have yet been passed. However, the specific position in relation to trade marks remains unclear.

Vanuatu~

Since 1 December 2011 it is no longer possible to re-register national registrations. Independent local registrations only. International (Paris Convention) priority is available. Multi-class applications are possible.  A local address for service is required. Service marks are registrable. Power of Attorney is required (not notarized or legalised). There are severe delays with processing new local applications.

Explanatory Notes

1 previously known as Community Trade Mark (CTM)

* The information in this sheet is derived from information available from the UK Intellectual Property Office and that which has been supplied to us by attorneys working in or with the countries concerned, and/or information available on the internet. It has not necessarily been obtained from official sources and, although it is up-to-date as of February 2016, neither Mewburn Ellis LLP nor the UK Intellectual Property Office can accept responsibility for the accuracy of the information. Due to the range of countries involved, it is unlikely to be 100% accurate or complete. Mewburn Ellis LLP recommends contacting an attorney in any of the countries/states listed for the most up-to-date information.

** While we believe that the above list is correct at the time of writing as far as trade marks for goods are concerned, in many of the above countries it is not clear whether the extension of a UK or EUTM trade mark registration or a UK or EU designation of an international registration for services is possible.

~ The South Pacific Islands (or Forum Island Countries, FICs) are moving towards harmonisation of trade mark rules, so the position indicated in this information sheet for these states is likely to change, although this is not expected in the immediate future. If you are interested in protecting your trade marks in any of the countries listed, please contact us or let us know of your interest as soon as possible. This will enable us to make detailed enquiries on a case-by-case basis.

This information is simplified and must not be taken as a definitive statement of the law or practice.

RELATED SERVICES