23 February 2012

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 Ă…land 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.