EU trade marks no longer cover Jersey

news article
Written By Richard Stilwell

As part of the consultation prefacing the introduction of primary trade mark legislation in Jersey, the local government sought clarity on certain sections of the current law, particularly in relation to the coverage provided to EU trade marks and EU designations of International Registrations (IR(EU)) in Jersey.  Any such rights would need to be given consideration under the new law or its transitional provisions.

The government’s review concluded that, whilst EU trade marks had been enshrined in Jersey law in 2000 via reference to Community Trade Mark Regulation (Regulation (EC) No. 40/94), the subsequent repeal of this regulation in April 2009 removed the automatic protection given to EUTMs in Jersey.  As a result, they announced in March 2024 that – since April 2009 – EU trade marks have not extended to Jersey, and that the only routes to protection in the island since this date are via formal extension (re-registration) of a national UK trade mark, or the automatic coverage given to IR(UK) designations. 

The government’s revised position also clarifies that IR(EU) designations were in fact never afforded protection in Jersey.  Such designations do not fall within the scope of the definition of a “protected international trade mark” in Jersey’s Trade Mark Law 2000, which only refers to the UK’s membership of the Madrid Protocol.

This deviates from the seemingly well-established position taken previously, and is contrary to the present understanding of local law firms who handle IP matters in Jersey.  However, we do not disagree with their findings, and therefore believe that any trade mark owner who is currently solely relying on EU trade marks or IR(EU) designations to provide protection in Jersey should immediately seek alternative coverage via formal extension of national UK trade marks or the automatic protection granted to IR(UK) designations. 

For any further information or assistance, please do not hesitate to contact us.

 
Featured
Richard Stilwell.png

Author: Richard Stilwell

Richard is a Chartered Trade Mark Attorney and manager in the Patents and Design department. He is responsible for overseeing and managing the day-to-day operations of the department, as well as being part of operational working groups to develop and enhance internal policies and procedures.

Click here to e-mail Richard

Click here to read more recent articles by Richard

 
Richard Stilwell

Richard is a Chartered Trade Mark Attorney and manager in the Patents and Design department.  He is responsible for overseeing and managing the day-to-day operations of the department, as well as being part of operational working groups to develop and enhance internal policies and procedures.

Richard graduated from the University of Leeds in 2012 with a Master’s degree (with Distinction) in Medicinal Chemistry, which included a placement year with a major U.K. pharmaceutical company. He joined Lysaght in 2015 and has worked in the IP industry for over ten years.

In 2016 Richard was awarded the Postgraduate Certificate in Intellectual Property (with Distinction) from Bournemouth University, and he became a Chartered Trade Mark Attorney in 2018.

He adds a considerable skill set to the company, where he is responsible for a wide-ranging portfolio, particularly for patent cases in the Caribbean and Middle East.  In his dual role, Richard also handles prosecution and contentious matters within the trade mark department in several complex jurisdictions.

Previous

Uganda – New Trade Mark Regulations
Next

New Trade Mark Regulations In Lebanon