Jersey – Consultation launched to review Trade Mark Law
A government consultation was launched in December 2023, proposing changes to Jersey’s intellectual property framework, with a particular focus on the Trade Marks Law 2000. Whilst the current law provides for simple re-registration of a UK trade mark without examination, the proposed amendments would introduce a primary registration system as well as accession to the Madrid Protocol, following in the footsteps of its neighbouring island of Guernsey.
A revised law is yet to be drafted, but with membership of certain international trade treaties relying on the introduction of a primary registration system (and Paris Convention membership), we understand that there is enough political appetite and funding to drive the legislation through the government apace. The revised law is unlikely to deviate far from the framework set out in the UK Trade Marks Act 1994.
One particular issue to address is that of prior rights already covering Jersey, which must be managed via a pragmatic transition period. This is because, aside from national Jersey registrations obtained via extension of a UK trade mark, Jersey’s present law also affords automatic protection to UK designations of International Registrations. This automatic route to trade mark protection conflicts with the vision of a primary registration system with its own independent examining authority.
We at Lysaght sought an in-person meeting with government officials during the consultation period to provide feedback on the proposals and suggest possible amendments, particularly regarding the transitional provisions. We also emphasised the need for careful consideration of staffing levels and training, examiner qualification and experience that would be required to properly implement the primary registration system proposed.
No action is currently required for trade mark owners with an interest in Jersey but, depending on the route to trade mark protection relied upon to date, future action may well be necessary to maintain rights on the island. We will keep our readers readily informed of developments as they occur.
