The Government of Jersey launched a consultation at the end of last year proposing the introduction of a primary trade mark registration system in Jersey, and the Government’s response to the consultation was published earlier in April this year.
The current regime
Under the current regime in Jersey, trade mark registration can only be obtained in two ways:
- First, by the re-registration of a UK trade mark registration – meaning you would need to first own a registered UK trade mark and then apply for the same trade mark to be registered in Jersey. The “secondary registration” in Jersey is tied to the UK registration and can only remain in force so long as the UK right remains active.
- Second, by applying for an International Registration designating the UK via the Madrid Protocol – in this case, re-registration in Jersey is not required as protection automatically extends to Jersey by virtue of the UK designation.
In both scenarios, there is no substantive examination or opposition procedure for trade marks in Jersey. The only way to challenge a Jersey trade mark would be to attack the underlying UK right. However, this is likely to change if a primary registration system is introduced.
EU trade marks and international registrations designating EU
The Government of Jersey also took the opportunity to clarify the position in respect of EU trade marks (EUTMs) and International Registrations (IRs) designating the EU.
While EUTMs were automatically protected in Jersey from October 2000 to April 2009, EUTMs have not provided trade mark protection in Jersey since 12 April 2009. Further, IRs designating the EU have never been protected in Jersey.
Introduction of primary registration system?
The Government consultation received universal support from respondents for the introduction of a primary trade mark system in Jersey. Feedback from the consultation highlighted that the current system does not work for local businesses in Jersey who may not be trading in the UK, but still need to obtain a UK trade mark before they can re-register it locally (owing to the associated costs, risk of third part conflicts and timeframes).
It seems that the Government will likely proceed with the introduction of a primary registration system in Jersey, subject to approval from the States Assembly. This will replace the current re-registration regime and it is envisaged that the new system will be modelled after the UK Trade Marks Act.
Joining the Madrid Protocol
Once a primary registration system has been established, it seems Jersey also intends to join the Madrid Protocol. Jersey’s current re-registration system does not allow the Jersey IP Office (JIPO) to function as an “office of origin” for purposes of the Madrid Protocol, and hence Jersey-based individuals and entities are not able to file International Applications based on a secondary registration in Jersey. The proposed primary system and Madrid Protocol membership would therefore enable local businesses to take advantage of the Madrid System and file International Applications via the JIPO, and Jersey may be designated separately from the UK in an International Application.
As such, it is likely that the current automatic protection granted to UK designations of IRs will be revoked. The Government noted that if UK designations continue to be automatically protected in Jersey, there may be no incentive for Jersey to be included as a separate designation in International Applications.
Transitioning to the new registration system
This raises the important question of how will Jersey transition from its current system to a primary registration system, given that many right holders may currently rely on the automatic protection granted by IRs designating the UK?
The Government initially proposed that trade marks which currently enjoy protection in Jersey (both secondary registrations and IRs designating UK) will continue to be protected in Jersey until they become due for renewal. This would mean that existing right holders would not need to take any action until they are required to renew their registrations, at which point they can either renew them directly with the JIPO or designate Jersey under the Madrid Protocol.
However, feedback from the consultation highlighted that this proposed approach could lead to a prolonged period of legal uncertainty, particularly in relation to IRs designating the UK. There would be a protracted period where potentially thousands of IRs designating the UK remain valid as potential conflicts to new Jersey applications, but given these are not included on the Jersey register, they cannot be checked by applicants or examiners.
Accordingly, alternative transitional provisions have been suggested by respondents, including providing a short grace period (e.g. 12 months) for holders of IRs designating the UK to re-register their rights in Jersey or via a Madrid Protocol designation; or following the UK’s approach post-Brexit, by cloning existing UK trade mark rights onto the Jersey register to allow for continued protection.
It appears that the Government may be leaning towards the former suggestion, however it remains to be seen how they decide to approach the transition and strike a balance between respecting the rights of those who currently enjoy protection in Jersey whilst maintaining legal certainty for new applicants seeking protection under the new primary registration system.
What next?
As the Government of Jersey proceeds to prepare the draft legislative amendments for the new system, it will likely be some time before any changes to the current regime take effect.
In the meantime, trade mark owners with interests in Jersey should consider how their rights may be affected under the new system proposed, particularly where they are currently relying on the automatic protection granted by IRs designating the UK.
Marks & Clerk intends to continue monitoring the developments in Jersey and we suggest watching this space for further updates.
