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.

The benefits of UK registration in addition to a CTM

The United Kingdom (despite a fair bit of internal Euro-scepticism) is an integral part of the European Union. Community Trade Marks provide for trade mark protection to the country like they do to all other member states of the EU.

The Community Trade Mark is not designed as a supplement to any national trade mark rights, more of an alternative. It is designed for those with business interests throughout the trading block (although use in one member state should be regarded as sufficient use to stave off cancellation proceedings). Naturally, some local companies may register in the home country first of all before they develop expansion plans for the EU and then file a CTM.

However, are there any reasons or benefits to obtaining national protection separately and in addition to CTM protection?

When it comes to the United Kingdom the answer is "yes". Although the reasons stretch beyond Europe and are more relevant to global trade mark owners.

A UK National registration either covers automatically or can be extended to former or current UK territories. The same right is not accorded to Community Trade Marks with a few exceptions. UK legislation is not extended to its territories automatically and the territories have a distinct legal status so they would need to change their own laws to cater for CTMs. Most have not done so.

UK legislation is directly extended to the Isle of Man. In this sense it also provides for protection of Community Trade Marks.

Jersey has introduced legislation that allows for Community Trade Marks to cover the island automatically. This is a special situation as United Kingdom National registrations do not cover Jersey automatically but must be extended to the island with the filing of a local application.

The situation with Gibraltar is, in my view, ambiguous. OHIM indicates that a Community Trade Mark does cover Gibraltar. This is based on an understanding of Gibraltar's status with the EU under Article 299(4) of the Treaty of Rome. However, there do not appear to have been amendments to Gibraltar's local Trade Marks Act to reflect this. The 'usual' way to protect a trade mark in Gibraltar is to extend a UK registration by making a local application. Confusingly, it is also possible to extend a Community Trade Mark to Gibraltar (in addition to it apparently covering the territory automatically). This news release from Gibraltar offers some evidence of the indecisive situation.

Guernsey operates a separate and modern Intellectual Property Office. It allows for purely local applications but also 'supported' applications which can be based on inter alia a UK or CTM registration. A benefit to 'supported' applications is a reduction in the official fee due.

Outside of Europe, a Community Trade Mark is going to be sufficient if you need protection in the Cayman Islands as it is possible to extend a CTM registration locally in addition to a UK registration. The Falkland Islands introduced legislation to coincide with the start of the Community Trade Mark in 1996 which allows for automatic protection of UK and CTM registrations. It previously required a UK registration to be extended to the Islands - making it the world's smallest jurisdiction with a formal trade mark law by population - but the General Registry no longer maintains a Trade Marks Register of its own.

Neighbouring South Georgia and the South Sandwich Islands has a Trade Marks Ordinance from 2001. This covers trade marks "having effect in the United Kingdom" and I interpret this as including Community Trade Marks, particularly as the legislation dates from when the CTM was already operational. It is not exactly densely populated!

Outside this a UK registration is a prerequisite basis to making local applications in Grenada, Kiribati, St Helena, Solomon Islands and Tuvalu. Note that with the exception of St Helena, all of these are now independent of the UK. If you need service mark protection in the British Virgin Islands ("BVI") then a UK registration is also required. This will (probably) change soon with the adoption of a new Trade Marks Act in the BVI. The UK IPO's website indicates that a Community Trade Mark has effect in Kiribati, but I cannot see on what basis this statement is made and I cannot see any amendments to the local legislation. It might be based on an informal interpretation from the Administration in Kiribati which I would be wary of relying upon.

The British Indian Ocean Territory introduced a Trade Marks Ordinance in 1984 allowing for the automatic protection of UK registrations. I cannot locate this legislation on-line but suspect this is only with respect to UK National registrations.

This table may help clarify the incoherent situations:

Jurisdiction	UK	CTM
British Indian Ocean Territory	Automatic	No
British Virgin Islands (service marks)	Extendable	No
Cayman Islands	Extendable	Extendable
Falkland Islands	Automatic	Automatic
Gibraltar	Extendable	Automatic and Extendable but questions remain
Grenada	Extendable	No
Guernsey	Can 'support' an application	Can 'support' an application
Isle of Man	Automatic	Automatic
Jersey	Extendable	Automatic
Kiribati	Extendable	No
St Helena	Extendable	No
Solomon Islands	Extendable	No
South Georgia and the South Sandwich Islands	Automatic	Automatic
Tuvalu	Extendable	No

In short this explains why a UK National registration can be of use in addition to a Community Trade Mark registration.

Those who examined the OHIM's notice may note that a French registration also has value above a Community Trade Mark. France has overseas departments and territories sometimes referred to as "DOM-TOM". The DOM is for the departments which are covered by a CTM. The TOM is for the territories which are not and are only protected by a French trade mark.

The Faroe Islands and Greenland are constituent countries of the Kingdom of Denmark. They are outside of the EU and therefore not covered by a CTM. They do not maintain separate trade mark regimes so registration in Denmark covers them both.

Italy and San Marino have an Agreement of Amity and Good Neighbourhood which provides for mutual recognition of trade mark rights from one to the other without the need to register in both. This is not provided for under the CTM but in this event it is a simple case of registering locally in San Marino. It can be added that Sammarinese registrations are usually obtained far quicker than Italian registrations.

With other EU countries, the situation is more straightforward with National and Community rights (including International designations) providing automatic protection. This applies to the Atlantic island groups of the Azores, Madeira and the Canary Islands, the Spanish possessions in Morocco of Ceuta and Melilla and the Swedish-speaking autonomous Åland Islands of Finland.

In the other places that OHIM indicates are not covered by a CTM, local filing routes are generally available and I would be happy to advise where required.

Companies with global needs reaching out to far flung places should be wary of the limitations of a Community Trade Mark in its wider context and consider filings in Denmark, France and the United Kingdom. Please also be aware that whilst a designation of France in an International Registration is fine, designations of Denmark or the United Kingdom are not always recognised in the same manner as National applications. Please do not hesitate to get in touch if any advice on this is required.

We will take a look at the situation with UK Registered Designs shortly.

Down Under Trade Marks

Finally, we reach 'Down Under' in our continental journey across the world as we look at trade mark protection in the continent of Australia and within its wider Oceania definition.

The obvious big gun in this region - in terms of population and area - is Australia. This is the only member of the Madrid Protocol in the region although this could change soon with New Zealand getting closer to membership. (Ignore the misleading headline in the link; also New Zealand would not be the first country to allow on-line International applications.)

For now, New Zealand is covered by national filings and it boasts an extremely efficient and organised Trade Marks Office. Registrations in New Zealand cover its dependent territory of Tokelau, but not the Cook Islands or Niue when granted under the Trade Marks Act 2002. Cautionary Notices form the only rudimentary way of protecting trade marks in the Cook Islands and Niue.

Cautionary Notices are also available in the Marshall Islands, the Federated States of Micronesia, Nauru and Palau.

The situation for the Pitcairn Islands is unknown. There is a local publication for the island (only one is inhabited) but the population is estimated at less than 50. The nearest it gets to a trade mark legislation is a Registration of Business Names Ordinance.

Norfolk Island, culturally related to the Pitcairn Islands, is automatically covered by an Australian trade mark.

Britain's colonial legacy is ubiquitous in this region and a United Kingdom National trade mark registration is a pre-requisite for protection in Kiribati, the Solomon Islands and Tuvalu, all now independent from the UK. Incidentally, there are no agents in Kiribati or Tuvalu. A UK basis is an option in Fiji where it can greatly reduce the registration timeline compared to a local substantive application. Note that Fiji does not have provision for service marks.

Samoa allows purely local applications or applications based on an overseas registration provided they are filed within two years of the overseas registration being obtained. Papua New Guinea and Tonga represent jurisdictions where only local applications can be filed. Tonga previously operated on the basis of requiring a UK National trade mark registration but introduced its own law to get away from this colonial stranglehold.

This is also the intention in Vanuatu which has introduced a new Trade Marks law repealing the old dependent legislation. The previous legislation was introduced in 2008 to allow for protection of other EU registrations but the Office then interpreted this to be registrations in EU member states only but not Community Trade Marks. The "new" legislation derives from 2003 but no regulations have been issued and no fees set and so it is not operational. It is believed registration cannot be obtained in the meantime based on the old legislation. Wait and see...

The French territories within the Pacific are covered by French registrations (including International registrations designating France) but not Community Trade Marks. New Caledonia could represent a case to keep an eye on as it is due to have a referendum on independence from France in the next few years. Paris, as well as London, with some separatist issues.

US Federal registrations cover the whole of the USA. However, both American Samoa and Guam have their own registration systems. American Samoa's trade mark law is somewhat 'light'; there is not even any renewal provisions (making re-filing the only possibility) and, in my experience, seems to operate as a deposit registry. Guam has a local system of registration, which requires use, and an alternative USPTO deposit system where proof of a US Federal registration is required. Because the USPTO allocates separate registration numbers to Madrid Protocol registrations and it should be possible to obtain certified copies of these, I believe it would be possible to deposit one of these in Guam under the latter system.

If a business only has interests in the Pacific they could forego US Federal registration in favour of a State registration in Hawaii. Non-American trade mark owners are presumed to conduct business inter-state - although this is easier in the congruent 48 states - but a registration in Hawaii is very cheap. The Department of Commerce and Consumer Affairs has halved the official fee (to just $25) for this calendar year, like it did last year.

The Northern Mariana Islands are not known to have a trade mark law of their own meaning a US Federal registration should provide protection automatically. In fact, there are provisions within an anti-counterfeiting law to protect not just trade marks registered with the USPTO, but also trade marks registered in any State or Territory of the US, or foreign trade mark or those protected by Common Law.

(The provinces of Indonesia and special territories of Chile would be covered by national registrations in Indonesia and Chile respectively and are excluded here.)

To conclude, this sparsely populated continent would require 11 applications:

1. Madrid Protocol application designating Australia, France and United States of America

2. National applications in American Samoa, Guam, Kiribati, New Zealand, Papua New Guinea, Samoa, Solomon Islands, Tonga, Tuvalu and United Kingdom

(Vanuatu currently not possible.)

Then six Cautionary Notices in Cook Islands, Marshall Islands, Federated States of Micronesia, Nauru, Niue and Palau.

Australia and New Zealand represent respected developed markets. The other jurisdictions are usually only on the radar of owners of large trade mark portfolios.