Brexit and trademarks

The United Kingdom has decided in yesterday's referendum that it will leave the European Union.

Personally, I'm gutted. Having lived and worked on the continent, I regard myself as a Europhile. It may be a great shame that our younger people may not have so many opportunities to live and work in Europe.

There will be an impact on trademarks. What exactly needs to be determined? For now we do not need to worry.

The Prime Minister has indicated that he will stand down and it is his replacement who will submit the Article 50 request to the European Union that begins the formal withdrawal process. Indications are that this will take place in October and the withdrawal process will have a two-year negotiating period once submitted.

I think there's a chance of another General Election in the intervening period. This means we could be looking at between two-two and a half years before EU trademarks will no longer cover the UK.

Furthermore, I understand this negotiating period is extendable if agreed by both parties - a "cooling-off" period in trademark terms, I suppose.

Automatic re-registration?

What will happen to EU trademark (and design) registrations once the UK does leave the EU?

My hunch is that they will automatically continue to cover the UK. My reasons are:

1. There are so many of them that having a formal revalidation process would be a burden on UK IPO resources.
2. EU trademarks are searchable on the UK IPO's systems so it should be a fairly straightforward task to convert/duplicate them to become UK national registrations.
3. As for EU designations in International registrations, it should be possible, working with WIPO, to organise automatic 'Continuation of Effects' to the UK.
4. They would not want to discriminate UK businesses by making them pay to revalidate EU trademarks which they legitimately obtained thinking they had the UK covered.
5. It's certainly arguable that the UK IPO could lose out on a windfall that could be generated by a formal revalidation process, but I would argue that this would be a temporary spike (and the Office would need temporary staff for this) whereas they can bring in extra fees in a more managed way as registrations fall due for renewal and get assigned.

Reverse seniority?

I wonder if there is a need to allow seniority claims to be reversed so where an EU registration has claimed seniority from a UK registration then this UK registration can be reinstated (presuming it has since lapsed).

This may be beneficial in the case of very old prior rights where the corresponding EU registration does not date back as far. This could carry official fees for the UKIPO as I believe they would require examination. Whether such requests can restore the specification of the original UK registration or can only comprise that which is included in the EU registration (where they are different) would be a question to be answered in this eventuality.

From a practical point of view, an automatic revalidation process would negate the need to request "reverse seniority" in the vast majority of cases.

EEA and representatives

We wait to see if the UK's withdrawal from the EU will also be a withdrawal from the European Economic Area. If it remains in the EEA then the impacts on the management of trademarks will be less.

If it decides to leave the EEA then things may change more. Currently, only an Address for Service in the EEA is required for trademark matters before the UK IPO. Leave the EEA and the rules may change so that an Address for Service is in the UK only. In practice this would not be a big deal as the vast majority of Addresses for Service for UK national registrations are in the UK already, as opposed to other EEA countries. (Disclaimer: this is based on my regular scouring of the Trade Marks Journal and Register, and not on a detailed analysis of Addresses for Service.)

However, this could scupper any plans to automatically duplicate the EU Register to the UK as a large number of EU trademarks have IP representatives in other EEA countries. Perhaps these could be left be, with a UK Address for Service only needing to be appointed when there's subsequent dealings with the UK IPO.

UK Professional Representatives

Leave the EEA and the ability of UK Professional Representatives to act before the EUIPO (and other EU Offices) could be impacted. The Institute of Trade Mark Attorneys has indicated that they will "be calling on the UK Government to ensure that UK practitioners remain entitled to represent clients before the European Union Intellectual Property Office."

If UK Professional Representatives can no longer act before the EUIPO then this lucrative strand of work will go elsewhere, firms in Germany, Ireland and the big IP units near Alicante likely destinations in my view.

If they can continue representing though then they will be well placed to continue the UK's strong level of representation before the EUIPO. Such work could also be supplemented by corresponding UK filings too.

However, we may see a change in filing strategy. If the UK is an added country to consider in filing programmes then the attractiveness of an International trademark may increase. The rationale being the more countries to be covered, the more attractive it is to use.

Scotland

In Scotland the people were in favour of remaining in the European Union. This may now lead to another Scottish referendum and further implications to trademarks. I've blogged previously on what could happen in this event.

Gibraltar and Northern Ireland

Gibraltar (overwhelmingly) and Northern Ireland (much more narrowly) also voted to remain in the European Union - the out votes of England, in particular, and Wales tipping the balance towards leave.

Politically I cannot see Northern Ireland looking to go it alone or look to instead form a part of a united Ireland and so will find itself alongside England and Wales (with or without Scotland).

Gibraltar is unlikely to make a bid for independence or accept co-hegemony from Spain (as the Spanish Government was keen to offer early on). Its local trademark system currently allows for the re-registration of UK or EU trademarks, but they may close the door on EU trademarks (which have more doubtful enforceability anyway).

Jersey

The Channel Island of Jersey lies outside of the European Union and its citizens were not entitled to vote in the referendum.

However, their trademark legislation allows for the automatic protection of EU trademarks to the island (i.e. without the need to re-register them locally). Conversely, UK national registrations must go through a formal re-registration process and get a local registration.

They would need to change their local law to stop EU trademarks providing protection to Jersey. I understand discussions in recent years saw them happy with the status quo but the UK's withdrawal from the EU may make them revisit this issue and we could perhaps anticipate an entirely revamped trademark law in Jersey (neighbouring Guernsey has taken its own route and runs a very efficient Registry).

Conclusion

Nothing changes overnight. There is no need to take action just yet. I think by "pro-actively" filing in the UK now then you may end up with duplicate UK registrations in the future. Keep your ears and eyes open as things become clearer.

UK Registered Designs - online filing for all filing routes - and other bits

The Intellectual Property Office in the United Kingdom recently introduced an online tool for the filing of UK national registered design applications.

I blogged over two years ago on the online filings of designs when the UK was certainly not alone in not offering an online service. The UK system is new and not yet as developed as I imagine it will become e.g. it does not support priority filings which must still be made by post.

Ignoring any unregistered rights that can persist, this now means design applicants have three (online) routes to protect their designs to the United Kingdom:

1. National UK application
2. Registered Community Design application covering the 28 member states of the European Union including the UK
3. International Design application through the Hague System designating the European Union

What route is preferable will depend on whether a business has interest in protecting their design nationally, across the EU, or in other states that are also a part of the Hague System, or to a handful of jurisdictions with a link (historical or current) to the UK.

There has been much fanfare that Japan, Korea and the US have joined the Hague System relatively recently. These are countries with different design regimes than Europe. I have had to temper clients' enthusiasm that they could now get easy and cost-effective design protection in such countries. It's not going to be quite as straightforward as some circles have made it out to be. For example, the Marques Class 99 blog has explained how the task of claiming priority (which should be a simple formality) is complex and expensive, meaning designating these countries in an International application may be a false economy; i.e. you may as well just file nationally from the start (see 'Priority problems - parts 1 and 2 from 13 October).

Incidentally, the UK is likely to accede to the Hague System in its own right in due course. As I've commented on the SOLO IP blog, I'm not convinced this brings much to the table. However, it would be beneficial if the UK decides to leave the European Union.

The International Design system is useful for obtaining protection to mostly other European countries if protection beyond the EU is required. Iceland, Liechtenstein and Norway - which along with the EU members make up the European Economic Area - can be covered, as can Switzerland.

I've blogged before on the usefulness of a UK National Registered Design to foreign shores. These benefits are highly unlikely to be extended to designations of the UK in a Hague International registration (when it becomes possible to designate the UK).

This is because protection in the overseas jurisdictions arises from legislation enacted locally (and usually a long time ago). To provide protection of a Hague designation of the UK will likely require local legislation to be amended and, to be frank, if this were to happen it more likely independent design legislation would be enacted and a 'link' to the UK ended.

Whether National, Community or International (or a combination thereof) is preferable, official fees for all three filing routes are not expensive.

New trademark law in the British Virgin Islands

A new trademark law in the British Virgin Islands ("BVI") will enter into force on 1 September 2015. It has been a while coming.

This will completely modernise a law that is archaic. Currently, there are two ways to register a trademark in the BVI:

1. A local, substantive application. This uses the very dated former British classification system. Importantly, this does not provide for service marks.

2. A UK-based application. This requires a base UK registration. As the UK and BVI are many miles apart on different continents, it can be the case for some trademark owners that the UK is not a market of interest whereas the BVI is, or the UK is covered by a Community Trade Mark (and national protection is not obtained in the UK). However, the UK-based method is currently the only way in which to obtain service mark protection.

The new law will abolish the two ways to register trademarks and consolidate it into one. It will bring in provisions for Certification and Collective marks, allow for priority claims to be made, and provide protection for "well known" marks. The registration term will be reduced to 10 years from 14 years (for local, substantive registrations; UK-based registrations were given registration terms matching their base UK registration).

The International Classification will be used as the former British classification system is replaced in yet another jurisdiction. How reclassification will be managed remains to be seen.

However, should any thoughts be made about taking action before the new trademarks law comes into force? Perhaps, yes. The current official fees are low. The BVI is one of the wealthiest of the Caribbean nations (it's where Sir Richard Branson's Necker Island is) and it's anticipated that official fees will rise and, possibly, quite considerably (they are waiting to be announced).

If you have a UK registration and you need corresponding protection in the BVI, consider filing before 1 September 2015. UK-based registrations are not advertised for opposition purposes so if you file on or after 1 September 2015 when the UK option is removed, your application will be advertised for opposition purposes.

If you file now then you can take advantage of the (probable) lower official fees. However, be sure this is not going to be false economy. Local, substantive applications may require some form of reclassification incurring costs. If an application needs to be filed covering modern goods not well envisaged by the former British classification system then it may also be a good idea to wait until the International classification can be used.

For UK-based applications, check the base UK registration's renewal date. The BVI registration will take this renewal date so if the UK registration is due for renewal in the next few years then so will the BVI registration.

As for renewals, although registrations falling due for renewal on or after 1 September 2015 will be renewed for 10 years, their renewals can be filed now and the current official fees can be taken advantage of.

Trademark matters in the BVI must be handled by resident trademark agents duly registered with the Registry of Corporate Affairs. This is the case currently although I understand the new law will allow them to be more stringent on who they will accept as a resident registered trademark agent. Naturally, I work with local registered trademark agents should you not have one of your own and need any support.

TRADEMARKS AND BRAND PROTECTION IN 'EUROPEAN OVERSEAS TERRITORIES'

I have written an E-book with the above title that may be of interest to readers of this blog.

It's not expensive and can be purchased from Amazon here.

Certified Copies

I admit that this might not be the most interesting or high brow of topics. However, it might help provide some useful information.

I've had the need to order some Certified Copies recently to support a priority claim in one instance, and to substantiate applications based on United Kingdom registrations. I was wondering how quickly other jurisdictions were able to issue these documents (and how expensive they are).

A Certified Copy ordered through OHIM on 27 November took a month to be received. To be fair, the document was sealed by OHIM on 18 December and it got caught in the Christmas mail backlog although I believe "three-to-four weeks" would be typical for OHIM to issue Certified Copies. Such documents cost €30 each in Official fees.

Certified Copies ordered through the UK IPO on 23 December were issued in early January. UK Certified Copies cost £20 each in Official fees for trade marks (£22 each for designs). I believe "one-to-two weeks" would be the typical time period for the UK IPO to issue Certified Copies. In my case, the original documents went astray in the post - a service which doesn't have 100% reliability and, from time-to-time, may need factoring in - and, therefore, it ended up being more than two weeks when my replacements arrived.

In Switzerland, Certified Copies can be ordered by e-mail at no charge and are issued in about a week. However, I believe the length of time for WIPO to issue a Certified Copy (Extract) is a lot longer. In fairness, I should mention that I have not ordered such a document from WIPO for some time (obviously they cannot be used as priority documents) but WIPO suffers from some delays in their other Madrid Protocol operations. The costs involved in obtaining a Certified Extract from WIPO are variable as the link shows.

It's been a longer time since I've ordered a US Certified Copy direct from the USPTO. Usefully, they now have an on-line ordering service. A Certified Copy to serve as a priority document would cost $15 in Official fees making them cheaper than both OHIM and the UK IPO.

If readers would like to share knowledge of their jurisdictions timelines and costs for obtaining Certified Copies then perhaps this would be of use to other readers. Particularly if they have a priority claim to substantiate and are wondering when their client is likely to be able to provide this document to them.

The good news is that many countries no longer require Certified Copies to support priority claims. They will typically say that it is at an Examiner's discretion to request a priority document though.

One of the benefits of the International system is that priority claims can be made without substantiation (i.e. needing to provide a Certified Copy or other proof).

Other Offices will take the view that if they can check the on-line Register of the priority claim country then they'll do this pro-actively to verify the priority claim. OHIM's new on-line filing tool is designed so this 'link' can be made by the applicant in the application.

OHIM also provide for the self-downloading of CTM Certified Copies from the on-line record of a specific case. A third party, such as a foreign Trade Marks Office, can then verify the authenticity of the document through OHIM's website by entering an 'Identification code'. I have learned recently that the Trade Marks Office in Saudi Arabia, a country where formalities are known to be complicated, accepts these documents from OHIM to support priority claims.

Needless to say, bureaucracy is still rife in some countries and original physical documents will be required. When they require legalisation this creates another headache. OHIM provide a useful service where they will undertake the legalisation up to the European Commission Representation (for this purpose this is the equivalent of a Ministry of Foreign Affairs). Nevertheless, if such a document (i.e. originating from OHIM) requires consular legalisation then this will need to be done in Spain. If you're not in Spain then you will likely want to get an agent in Madrid to assist. Dealing with foreign Consulates is not always an easy task even when you're based in the same country, let alone when you're not.

When making priority claims or applications requiring Certified Copies, it is sensible to be prepared for the hassle and costs that can be involved.

UPDATE: In Jordan, it takes 2-3 days for a Certified Copy to be issued.

Caribbean IP Part 18: Montserrat

ISO 3166 country code: MS.

I have seen Montserrat by boat and I'm not a fan of boats. However, Montserrat holds a place in my heart as I'm a bit of a geography anorak and it's one of the smallest trade mark jurisdictions (by population) in the world. Roughly 5,000 people live on the island.

This was not the case prior to 1995 when it sat above Tuvalu in the population tables and roughly alongside Anguilla. That year the eruption of the Soufrière Hills volcano led to 8,000 people evacuating the island. Over half of the island is now an exclusion zone and most the evacuees have not returned. The destroyed capital, Plymouth, is within this exclusion zone.

Given all this it can be surprising to note that Montserrat operates an efficient trade mark system from the Supreme Court Registry in the de facto capital of Brades. There is a dual filing regime in place. A substantive application could be filed previously using the old fashioned former British classification system (see The Bahamas), but an amendment of the Trade Marks Rules in October has changed this to the International Classification. Alternatively, a UK registration can be extended to Montserrat. Naturally, this will use the Nice Classification. The UK route was the only way to register service marks but the new Trade Marks Rules have now made these available for local (substantive) applications too.

It is also possible for Community Trade Marks and International Registrations (designating the UK or European Community) to be extended in the same way; the local Trade Marks Act was revised on 1 January 2002 to state:

"United Kingdom trade mark means any trade mark registered under the United Kingdom Trade Marks Act and any trade mark which, by virtue of any law in force in the United Kingdom is deemed to be a trade mark registered in the United Kingdom or which could, though not in fact registered in the United Kingdom, be given effect to in the United Kingdom."

When it comes to designs, I understand that UK designs provide automatic protection in Montserrat. However, I cannot locate the United Kingdom Designs (Protection) Act No. 181 of 1887 legislation on-line but I would anticipate it has not been amended to mean Registered Community Designs also have effect in Montserrat.

Patents are by extension of granted UK rights and must be on file within three years of grant in the UK.

Montserrat's IP Office lacks a web presence. Perhaps this will be developed in the future; the island is heavily subsidised by the UK (it being a British overseas territory) and some of this may be invested in a website. However, the local Government may have more pressing priorities - perhaps including improving the fortunes of the island's football team!

Caribbean IP Part 15: Guyana

ISO 3166 country code: GY.

Guyana is located on the South American continent but is widely considered a part of the Anglophone Caribbean and sometimes referred to as 'Mainland Caribbean'. As a part of the West Indies it has a unique love of cricket in South America (although Argentina has long played the game too) and is a part of the CONCACAF (Central America and Caribbean) football federation. The Guyanese capital, Georgetown, is also the seat of the Secretariat of CARICOM, the Caribbean Community.

The Co-operative Republic of Guyana is a member of the Berne Convention, Paris Convention and WIPO Convention.

The Deeds Registry looks after the administration of patents, trade marks and designs. Their website contains only basic information.

The Trade Mark Register is split into three parts: Part A, Part B and Part C. Part A and Part B are typical in much Commonwealth trade mark legislation; for example, they were parts of the UK Trade Marks Act 1938. For those of you in the US, they have similarities with the Principal and Supplemental Registers.

Part C of the Register is for marks based on UK registrations. This part of the Register is the only way multi-class applications and service marks can be registered in Guyana at the minute. Community Trade Marks cannot be used to form this basis and neither can International Registrations even if they designate the United Kingdom.

Designs are available locally in addition to UK designs automatically covering Guyana although there is a defence for infringers if they could not know of the design in Guyana which suggests if there is no use or disclosure in Guyana after registration (e.g. in the UK only), a registered design owner would be prevented from taking action. A Registered Community Design would not provide the same protection.

Patents are available locally although it is also possible to base an application on a UK patent provided it is filed within three years of grant.

The Deeds Registry suffers from delays in the processing of applications. Having a UK IP registration in place can greatly speed up the processes, although at least there are independent routes to protection available when you do not have - or it is undesirable to seek to obtain - a UK registration.

Madrid Protocol membership seems some way off, although it could form a part of future updating of local IP laws.

Caribbean IP Part 14: Grenada

ISO 3166 country code: GD.

Grenada is a member of the Berne Convention, Paris Convention, Patent Cooperation Treaty and the WIPO Convention.

As previously reported on this blog, Grenada introduced new trade mark legislation on 1 August 2012. The new law replaced a need to have a UK registration before being able to register in Grenada. The law and regulations are not on the internet (WIPO Lex is yet to be updated in this respect) but having seen these I can confirm they are modern and like you would expect in 2012. The prescribed forms are highly similar to those in use in Trinidad and Tobago, to the south of Grenada. However, I would anticipate Grenadian examination being less strict than in Trinidad and Tobago.

The new trade mark law does not extend to joining the Madrid Protocol. At least with the UK dependency dispensed with it makes it easier for many brand owners to register in Grenada.

On the patents side, UK and EP(UK) registrations can be extended to Grenada (in addition to substantive or PCT applications). For designs, the United Kingdom Designs Protection Act (Cap. 331) allows United Kingdom design registration to cover Grenada automatically, and there is no provision for local registration. Such automatic protection is not accorded to Registered Community Designs.

In conclusion, Grenada, the Spice Island, has made welcome steps to modernise its trade mark system.

Caribbean IP Part 9: Cayman Islands

ISO 3166 country code: KY.

I have previously blogged on developments in the Cayman Islands so will avoid repeating the same here.

Quite simply, registering patents and trade marks in the Cayman Islands requires a UK registration to be extended. In the case of trade marks, Community and International Registrations (designating the UK) are also acceptable bases to an application.

It would be preferable to many brand owners to have a more substantive law in the Cayman Islands. The proposed law in the British Virgin Islands would also fit the requirements of the Cayman Islands better; there being a lot of similarities between the high income, financial services and tourism charged island groups. However, with a recent change to the procedures in obtaining IP rights in the Cayman Islands, it is difficult to see that there will be additional amendments (improvements) in the immediate future.

Caribbean IP Part 8: British Virgin Islands

ISO 3166 country code: VG.

The Virgin Islands as they are officially known are usually referred to as the British Virgin Islands ("BVI") to distinguish them from the neighbouring US Virgin Islands. You may even have heard of the Spanish Virgin Islands, which far from belonging to Spain form a part of Puerto Rico, and/or the Danish Virgin Islands (more properly, the Danish West Indies). Denmark sold the latter to the United States in 1916 whence they became the US Virgin Islands.

The British part of the (unofficial) name also correctly alludes to the fact that the islands are a British overseas territory. With the naming issues hopefully addressed, we can now look at IP on the islands.

As a non-sovereign nation it is unable to sign up to International organisations and treaties; that remains the responsibility of the United Kingdom.

The Registry of Corporate Affairs, a part of the British Virgin Islands Financial Services Commission, oversees the administration of IP rights. Unfortunately, there is a real lack of any IP information on their website.

Substantive (independent) trade mark applications are possible. These must be filed using the former British classification system, which you may recall is still used by The Bahamas. It is also possible to register (extend) trade marks based on UK registrations. These will replicate a UK registration's particulars including the specification and classification. Currently, the UK extension route is the only one available in which to register service marks.

The local Government are planning on introducing new trade mark legislation. You will see that this is a modern law meeting international standards (e.g. provisions for well-known marks, priority, multi-class applications, etc.). It does not contain any provision for the Madrid Protocol. The BVI Government are not in a position to accede to the Madrid Protocol, but the United Kingdom could do so on their behalf if they were specifically requested to do so by the BVI Government. I feel this is a disappointing oversight bearing in mind I believe the BVI Registrar has been a member of INTA and should be aware of international agreements in relation to trade marks.

When it comes to designs I believe UK registrations cover the BVI automatically, although if the jurisdiction is of importance it is recommended to have a local 'confirmatory' Cautionary Notice published too. However, Registered Community Designs should not provide protection. UK patents can be extended to the BVI but this must be done within three years of the UK date of issue (this includes European patents valid in the UK).

A new trade mark law will greatly simplify this area and make it easier for North American applicants, in particular, to register their trade marks. Despite being a British overseas territory the BVI's geographical proximity to the likes of the US is obvious. The islands also use the US dollar as their currency.

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.

UK Registered Designs - how far do they go?

I sometimes describe registered designs to clients as suffering from middle child syndrome when it comes to intellectual property rights stuck between big brother patents and younger sibling trade marks, with copyright being a close cousin and spoilt only child. Design law gets less attention and suffers from a lack of harmonisation worldwide; it's law being made up of bits of the other three. It's tagged on to a dominating patent regime of some countries, part of copyright and/or, as in the case of the EU, being controlled by its Trade Marks Office.

It does not always get completely disregarded and, for example, the UK is looking to improve its registered design system at the moment.

Some countries do not have design legislation and in some it is often assumed that a UK registration covers some countries automatically. Some of these assumptions come from the UK IPO website - or from private firms who advise based on this information. Therefore, I have explored how up-to-date the IPO's information is and provide my findings here. Independently, I have passed these on to the IPO so, if they agree, they can update their own website pages.

Of note is that Registered Community Designs ("RCDs") will not, except in a few cases, have the same effect as a United Kingdom Registered Design in these jurisdictions. This is a similar situation as with respect to UK Trade Marks and their Community Trade Mark counterparts.

Many of the countries that have introduced local design legislation provided for 12-month transitional periods for owners of UK Registered Designs to apply locally. I believe these periods have now concluded, where applicable.

Legislation introduced in 2002 brought design registration to Anguilla. Unfortunately, the law is is not available on-line without paying a fee.

Antigua and Barbuda now has independent design legislation.

Bermuda has a design law that allows for automatic protection of UK registrations but also allowing for purely local applications.

It is believed UK registrations will be automatically protected in the British Indian Ocean Territory.

The Falkland Islands also provide for automatic protection. Note the UK IPO's advice, "The Supreme Court of the Falkland Islands is empowered to declare that rights in a UK design have not been acquired in the Falkland Islands on any grounds for cancellation existing under UK law, including publication of the design in the Falkland Islands prior to the UK registration." This provision tends to be replicated in other jurisdictions providing automatic protection.

Fiji also provides for automatic protection. However, it is possible, and would indeed seem recommendable if this country is of commercial interest, to advertise the design rights already obtained in the UK in a Fijian newspaper.

Gambia now has its own law after implementing regulations were brought in during 2010.

Both Gibraltar and Grenada have laws providing for automatic protection.

With respect to Gibraltar, its status with the EU under Article 299(4) of the Treaty of Rome should allow for automatic protection of RCDs. However, there have not been amendments to Gibraltar's local Designs Act to reflect this and, as such, I believe it would be unwise to rely on RCDs being enforceable in Gibraltar.

Guernsey is a 'secondary' design jurisdiction and re-registers designs including those from the United Kingdom and Registered Community Designs.

Guyana also provides for automatic protection although there is a defence for infringers if they could not know of the design in Guyana which suggests if there is no use or disclosure in Guyana (e.g. in the UK only), a registered design owner would be prevented from taking action. This could be a fair defence in many of the other jurisdictions too.

UK Design legislation is extended to the Isle of Man (by the British Government not the Manx Government) to provide automatic protection. Obviously, this has been amended to reflect a Registered Community Design covering the UK. Therefore, I am confused by the IPO's statement that RCDs do not cover the Isle of Man as my interpretation is that they would.

Jersey is a re-registration jurisdiction. Only a UK National Registered Design can be registered locally; no provision is made for RCDs.

UK Registered Designs are automatically protected in Kiribati.

Malta now has independent design legislation and being part of the European Union is also protected through a RCD.

United Kingdom Designs (Protection) Act No. 181 of 1887 is not available on-line but is understood to be the local legislation providing for automatic protection of UK Registered Designs in Montserrat.

St Helena is another with the fairly standard "recognise UK Registered Designs automatically" law.

I cannot see that St Kitts and Nevis has a design law to allow for either automatic protection of UK Registered Designs or for independent local applications.

St Lucia and St Vincent and the Grenadines now allow for independent design registration and UK Registered Designs will not have effect.

I cannot see that there is any design legislation in the Seychelles at all, let alone any that would give provision to automatic protection of a UK Registered Design. However, it is possible to register copyrights.

Sierra Leone offers an unclear situation through my on-line enquiries (I've not bothered my associate in Freetown at this stage). I cannot locate a design law which would allow for automatic protection of a UK Registered Design. It is possible to designate Sierra Leone in an ARIPO design application but in the absence of any design legislation, questions should be asked of its enforceability. Sierra Leone had plans for a new IP law in late 2008 but I do not believe this came into force.

UK Registered Designs extend automatically to the Solomon Islands.

Swaziland operates its own national design registration system now.

Tanzania is made up of two separate IP jurisdictions, Tanganyika (the mainland) and the island of Zanzibar. The mainland seems to lack design legislation but provisions within its Patent Act provide for automatic protection of UK Registered Designs. When it comes to Zanzibar, local independent legislation is in place.

My interpretation of the Tuvalu Chapter 62: United Kingdom Designs Protection would be that it provides for automatic protection of UK Registered Designs but I make this statement with a disclaimer. The UK IPO seems to think a local re-registration application is necessary.

In his over six years in power, Idi Amin CBE ("Conqueror of the British Empire") obviously forgot to repeal Uganda's United Kingdom Designs Protection Act. This remains in force to this day and provides for automatic protection of UK Registered Designs.

Vanuatu's design law is in a state of limbo - and for the same reason as its trade mark counterpart i.e. an absence of implementing regulations - is not yet in operation and it is therefore not possible to file for designs at this time.

The situation with the British Virgin Islands as described by the UK IPO would appear to be the same situation as exists in Bermuda (above).

After all this, I will provide a concluding table which I must stress is based on my interpretations and the taking of some information at face value.

Jurisdiction	UK	RCD
Anguilla	No	No
Antigua and Barbuda	No	No
Bermuda	Automatic	No
British Indian Ocean Territory	Automatic	No
British Virgin Islands	Automatic	No
Cayman Islands	No	No
Falkland Islands	Automatic	No
Fiji	Automatic	No
Gambia	No	No
Gibraltar	Automatic	Automatic but questions remain
Grenada	Automatic	No
Guernsey	Extendable	Extendable
Guyana	Automatic	No
Isle of Man	Automatic	Automatic
Jersey	Extendable	No
Kiribati	Automatic	No
Malta	No	Automatic
Montserrat	Automatic	No
St Helena	Automatic	No
St Kitts and Nevis	No	No
St Lucia	No	No
St Vincent and the Grenadines	No	No
Seychelles	No	No
Sierra Leone	No	No
Solomon Islands	Automatic	No
South Georgia and the South Sandwich Islands	No	No
Swaziland	No	No
Tanzania (Tanganyika)	Automatic	No
Tuvalu	Automatic	No
Uganda	Automatic	No
Vanuatu	No	No
Zanzibar	No	No

Many readers will be aware of the excellent value of the RCD system - 27 countries protected for a basic official fee of €350. The UK itself also provides for cost-effective design registration with the basic official fee being only £60 (about €70). Global owners of design rights may wish to ensure they obtain protection at not only the European Community level but also at the UK level, particularly if protection is required in parts of the Americas, Africa or the Pacific. RCDs and UK Registered Designs are both obtained very quickly.

As always, any comments or questions are welcomed.