The impact of Brexit to trade mark protection in the Channel Islands, the Isle of Man and Gibraltar 

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With the transition period due to come to an end on 31 December 2020, it is important to understand how Brexit will impact on trade mark protection in the relevant British Overseas Territories (the Channel Islands, the Isle of Man and Gibraltar), whose relationship with the UK is maintained through the legal institution of the British Crown (rather than Her Majesty’s Government or the UK Parliament). This article gives an overview of the impact of Brexit to EUTM protection in these territories.

Impact of Brexit to trade mark protection in Jersey

  • The Bailiwick of Jersey is a self-governing crown dependency with its own intellectual property laws.
  • Under Article 12 of the Trade Marks (Jersey) Law 2000 (“the Jersey Law”), an EUTM applies to Jersey as if it were a Member State and EUTMs are therefore enforceable without re-registration in Jersey.
  • Post-Brexit, and subject to any amendment to the Jersey Law as it currently stands, EUTMs and International Registrations designating the EU will continue to be automatically protected in Jersey. Therefore, EUTMs owned by UK businesses will continue to remain protected in Jersey as Jersey Law is independent of the UK’s membership of the EU and there is no need to re-register EUTMs in Jersey.
  • On the other hand, owners of a UKTMs may apply for re-registration in Jersey based on any UKTM they may hold at any time during the life of the UKTM, and this Jersey right will expire with the UKTM.
  • If Jersey is a key market, we recommend a re-registration of a UK mark rather than relying on an EUTM. This is because if the EUTM is refused or cancelled, if will not be possible to convert the EUTM (and take advantage of its filing date) in Jersey.
  • However, all International Registrations in which the UK has been designated automatically extend to Jersey.

Impact of Brexit to trade mark protection in Guernsey

  • The Bailiwick of Guernsey is a self-governing crown dependency with its own intellectual property laws.
  • In Guernsey, neither EU nor International Registrations (designating the EU or UK) are automatically recognised. Instead, a proprietor of a trade mark registered in a country that is party of the Paris Convention (such as the UK) may separately apply to register that trade mark for protection in Guernsey. This position will not change post-Brexit.

Impact of Brexit to trade mark protection in the Isle of Man

  • The Isle of Man is a self-governing crown dependency, which uses English law in respect of registered trade marks.
  • The Isle of Man does not have its own register of trade marks; the UK trade mark system applies to the UK and the Isle of Man as a single area.
  • Post-Brexit, EUTMs will no longer be automatically recognised and protected in the Isle of Man. It is expected, however, that the equivalent rights granted under the new UKTMs will be extended to the Isle of Man.
  • All International registrations in which the UK has been designated automatically extend to Isle of Man.
  • In addition, an entity based in the Isle of Man can use the International trade mark system, using the UKIPO as its office of origin.

Impact of Brexit to trade mark protection in the Gibraltar

  • Gibraltar is not part of the UK but is a British Overseas Territory. Trade mark applications must be made to the UKIPO and then extended to include Gibraltar within three years of the date of registration of the UK trade mark.
  • Before Brexit, Gibraltar was the only British Overseas Territory to be a member of the EU. Gibraltar participated in the Brexit vote and its membership to the EU ceased upon the UK’s withdrawal.
  • Prior to the UK’s withdrawal, EUTMs extended to all Member States including the UK and therefore, also extended to Gibraltar.
  • EUTMs will no longer apply to the UK once the transition period comes to an end, and therefore they will also no longer apply to Gibraltar.
  • Businesses with EUTMs will be entitled to automatic clones of their registrations as UKTMs. It follows that, in the absence of further clarity in this area, these new UKTMs will need to be re-registered in Gibraltar to ensure that the protection previously covered under the EUTM will be covered in Gibraltar post-Brexit.
  • It should be noted that Gibraltar’s status as a British Overseas Territory is the subject of some debate, and the relationship between Gibraltar and the EU (and the coverage of EUTMs) is dependent on any future agreements that come to be negotiated between the EU and the UK.