Some countries allow trade mark owners to extend their UK and EU trade mark protection into other countries, either automatically or upon completion of local formalities.
In this article, we discuss whether UK and EU trade mark protection (including UK and EU designations of International trade marks) automatically extends to Jersey, Guernsey, Gibraltar and the Isle of Man, or if separate local registration is required.
Jersey
The Bailiwick of Jersey is a self-governing crown dependency with its own systems of law, including intellectual property law.
UK Trade Mark Registrations and UK Designations of International Marks
Only the owner of a UK registered trade mark may apply for local re-registration based on a UK trade mark. An application can be made at any time during the life of the UK trade mark and will expire concurrently with the UK trade mark.
On the other hand, UK designations of International trade marks (once registered) are automatically protected in Jersey without the need for re-registration locally.
EUTM Registrations and EU Designations of International Marks
The local government in Jersey recently sought clarity on certain sections of the current law, particularly in relation to the coverage provided by EU trade marks (EUTMs). The government’s review concluded that, whilst EUTMs had been enshrined in Jersey law in 2000 via reference to the Community Trade Mark Regulation, the subsequent repeal of this regulation in April 2009 removed the automatic protection given to EU trade marks in Jersey. In March 2024, it was announced that EU trade marks have not automatically extended to Jersey since April 2009, and that the only routes to protection in the island since this date are via formal extension (i.e. re-registration) of a national UK trade mark, or the automatic coverage given to IR(UK) designations, as discussed above.
Consequently, any trade mark owner who is currently solely relying on its EUTMs to provide protection in Jersey should immediately seek alternative coverage via formal extension of national UK trade marks or the automatic protection granted to UK designations of International marks.
EU designations of International trade marks are not (and never have been) automatically protected in Jersey.
Guernsey
The Bailiwick of Guernsey, comprising the Island of Guernsey (with the adjacent islets of Herm and Jethou), Alderney and Sark, is a self-governing crown dependency with its own systems of law, including intellectual property law.
In March 2016, a single application process was introduced. All applications are now treated as new trade mark applications and they do not need to be supported by a registration in another jurisdiction.
Since January 2021, it has also been possible to designate Guernsey in an International trade mark application. This is after the UK, in its role looking after Guernsey’s foreign affairs, extended the Madrid Protocol to the Bailiwick.
In view of the above, neither UK trade mark or EUTM registrations automatically provide protection in Guernsey.
Gibraltar
Gibraltar is a British Overseas Territory and an independent member within the Commonwealth.
UK Trade Mark Registrations and UK Designations of International Marks
Much like in Jersey, trade mark owners may apply for local re-registration in Gibraltar based on a UK trade mark registration. An application can be made at any time during the life of the registered UK trade mark and will expire with the UK trade mark.
A UK trade mark registration does not itself automatically cover Gibraltar, although a UK designation of an International mark filed after 1 January 2021 automatically extends to Gibraltar for as long as the registration of the mark in the UK remains in force.
EUTM Registrations and EU Designations of International Marks
Since the UK’s withdrawal from the EU on 1 January 2021, EUTMs (and EU designations of International marks) have no longer extended to automatically give protection in Gibraltar.
However, UK comparable registrations that were created as a result of Brexit do have effect in Gibraltar, regardless of whether they resulted from an EU designation of an International trade mark registration or a direct EU trade mark application.
Isle of Man
UK trade mark registrations automatically extend to give protection in the Isle of Man. This therefore also includes UK comparable registrations that were created as a result of Brexit.
Summary
As can be seen from the above information, the situation notably varies from territory to territory and so trade mark owners are advised to carefully consider whether they have sufficient protection in place, particularly in view of the recent clarification provided by the authorities in Jersey.
Note: This information is simplified and must not be taken as a definitive statement of the law or practice. Local advice should be sought on a case-by-case basis.
