Trade mark it within the Commonwealth

Protect your IP at home and abroad, says Douglas Thomson

The Glasgow 2014 Commonwealth Games. Picture: Ian Rutherford
The Glasgow 2014 Commonwealth Games. Picture: Ian Rutherford

The Commonwealth Games may have finished weeks ago, but they will remain fresh in the memory for a long time to come.

The Games have always been a good opportunity for countries and territories with historical ties to the United Kingdom to compete against each other and we still smile with pride recalling that the Glasgow 2014 Games were deemed the best ever of their kind.

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There are ties, too, between the countries and territories of the Commonwealth in the world of intellectual property and these might be of relevance when seeking trade mark protection or using trade marks against other traders.

Traditionally, protection is obtained on a country-by-country basis although it can be obtained throughout the European Union by means of a single application – but what is the position elsewhere?

Most Commonwealth countries have advanced trade mark laws and operate their own registration systems, but some still have links to the UK system and others are reliant on protection in the UK.

There may be real value in obtaining a UK trade mark registration if you do business with smaller countries and territories within the Commonwealth.

The Isle of Man is the first that comes to mind. Protection is obtained there by registration in the United Kingdom, although it is not part of the UK and is the only “foreign” jurisdiction mentioned in the UK Trade Marks Act.

Neither the Falkland Islands nor South Georgia are mentioned in the UK Trade Marks Act, but UK trade mark registrations are effective there automatically, just as in the Isle of Man.

In some Commonwealth countries, trade mark protection is obtained by the re-registration of an existing UK trade mark registration.

The Cayman Islands are a useful example. Located in the Caribbean, the islands are a centre of commerce and many finance companies have operations there. Trade mark protection can be secured through the re-registration of an existing UK registration and formalities are kept to a minimum.

Other Commonwealth countries offer two competing registration systems: a 
re-registration system and a national registration system in accordance with local laws. However, there is almost always an advantage in seeking re-registration. The process is usually more straightforward, with the existence of a UK registration smoothing the way to registration.

No matter how trade marks are obtained, they are obtained for two main reasons: protection for the trade mark owner or for use against manufacturers of counterfeit products.

In many countries, there is a system for the local customs authority to seize counterfeit products on behalf of the owner of a trade mark registration.

The re-registration of a UK trade mark offers a streamlined system that may be of real assistance in giving companies a platform for pursing counterfeit products around the globe.

From Anguilla to Guyana, from Gibraltar to Saint 
Helena and from the Solomon Islands to Vanuatu, the 
re-registration of UK trade mark registrations can give the owner rights in a wide variety of jurisdictions.

It should be borne in mind that the systems discussed above may require the existence of a UK registration. A registration in the European Union may not be sufficient.

It should also be noted that trade mark registrations in France and Denmark are also effective far beyond their European borders.

Trade mark owners should give real thought to where that they intend to trade when considering a protection strategy and when deciding whether to maintain existing registrations.

Customs authorities will not seize counterfeit products unless the trade mark is the subject of a registration.

Lastly, on no account should a UK (or French or Danish) trade mark registration be abandoned without considering the impact of the decision.

• Douglas Thomson is a registered trade mark attorney (UK) and a European trade 
mark attorney at Marks &