24 August 2012

Dependency on the UK becoming (more) less and less

The requirement to have a United Kingdom trade mark registration to secure local protection in a geographically diverse set of jurisdictions has long been a quirk of global trade mark filings. To be honest, my ability to retain such 'obscure' information meant I could remember all these countries but this list continues to get smaller.

The latest country to drop off the UK dependency list is Grenada which introduced a substantive trade mark law of its own on 1 August 2012. They follow Vanuatu, which was in a similar situation, in adopting a trade mark law without a colonial legacy.

I have previously blogged in relation to these (as well as a post on tax havens, as many of these UK dependent jurisdictions provide tax benefits).

This leaves just five countries where a UK registration is required: Gibraltar, Kiribati, St Helena, the Solomon Islands and Tuvalu. There is some conflicting information out there regarding Gibraltar and Kiribati; I write this piece based on my interpretations of the situation.

Gibraltar is important in the European context. The other countries are remote islands. Nevertheless, all have small populations of approximately:

Gibraltar: 30,000
Kiribati: 103,000
St Helena: 4,000
Solomon Islands: 523,000
Tuvalu: 10,000

In Gibraltar there is a Merchandise Marks Act which gives some protection to Cautionary Notice publications in the absence of a UK registration; or, for those, like me, unsure with a CTM's coverage, perhaps as a supplementary backup to a CTM.

Perhaps we can see legislative developments in Gibraltar, Kiribati, St Helena, the Solomon Islands and/or Tuvalu in the not-to-distant future. Jurisdictions in similar (but not identical) situations, the British Virgin Islands and Jersey, are actively looking to reform local IP laws and this is a positive sign for the others. Realistically, I cannot see much changing in Kiribati or Tuvalu soon. Gibraltar and, to a lesser extent, St Helena may seen some reforms as the UK remains responsible for their good governance. Australia has strong influence in the Solomon Islands.

In my experience, many brand owners were frustrated when they had to secure an unnecessary UK registration before being able to protect their trade mark in jurisdictions that could be miles away. We may recall that UK registrations were not issued as quickly in the past even in smooth cases. The UK now boasts an efficient Trade Marks Registry but movements away from UK dependency overseas should be a good thing.