An up to date overview of protecting your brand and intellectual property in Gibraltar (2020-21)

Registering trade marks and related intellectual property in Gibraltar

This is a digest that provides an overview of the Gibraltar law position in respect of the registration of trade marks and related intellectual property in Gibraltar.

SUMMARY

Whether you are a new or established business or project, understanding how you can protect intellectual property and brand is important for the longevity of your business’ reputation, image and ultimately brand power. Whilst there are protections under the common law to seek to protect brands from intellectual property infringement, the best form of protection may be by way of registering your trade marks and brands.

This can be done in a number of ways in Gibraltar and with the United Kingdom leaving the European Union, you may be unsure as to what the best approach might be for your existing intellectual property portfolio or how to best set up protecting your intellectual property for the future. This note sets out the basics of trade mark registration in Gibraltar, changes coming with European Union trade marks following Brexit and what may be the best options for you.

What is a Trade Mark?

A trade mark is a name or symbol used to identify the goods or services produced by a particular manufacturer or distributed by a particular dealer to distinguish them from products associated with competing manufacturers or dealers. Sometimes the word ‘brand’ is used interchangeably with trade mark. A ‘brand’ contains within it a clue to the origin of branding and a common definition of a ‘brand’ is a mark made by a hot iron.

A mark may consist of a number of things such as words, slogans, designs letters, numerals, internet domains, the shape of goods or packaging or other characteristics. Any sign which can be represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of another is, on the face of it, registrable as a trade mark. By way of example, in the case of the Gibraltar Football Association (the GFA), they have registered two separate European Union Trade Marks: (1) a word trade mark of the ‘Gibraltar Football Association’ and (2) a figurative mark of the GFA’s original logo with 1895. These can be seen below. For your business or brand, you should consider which names, graphics or marks are key to your brand that you may wish to have registered.

(examples of trade marks and figurative mark registrations by the Gibraltar Football Association as European Union Trade Marks - credit www.gibraltarfa.com)

How to Register a Trade Mark in Gibraltar

In order to register a trade mark in Gibraltar, a person will need to first register the trade mark under the United Kingdom’s Trade Marks Act 1994. There have been recent legislative changes to Gibraltar's Trade Marks Act in the run up to Brexit though effectively there are 3 options here: (1) as a UK Trade Mark; (2) an International Trade Mark with the United Kingdom’s Intellectual Property Office (“IPO”); and (3) a European Union Trade Mark (“EUTM”) with the EU’s Intellectual Property Office (“EUIPO”). Only once these are done may a mark be registered in Gibraltar under Gibraltar law as Gibraltar is not a place where an originating application to register a Trade Mark can be made.

1. UK Trade Mark

A Trade Mark in the United Kingdom may be registered under the Trade Marks Act 1994 and once it is registered with the IPO, the trade mark may be registered under Gibraltar’s Trade Marks Act 1948 with Companies House Gibraltar, the appointed Registrar of Trade Marks in Gibraltar.

2. EUTM

An EUTM may be registered with the EUIPO under the European Union Trade mark Regulation 2017/1001. An EUTM enjoys the protection and enforcement abilities in all of the EU’s member states. With Brexit, there will be changes with the ability for UK and/or Gibraltar persons to register and enforce protections of EUTMs following the end of the transition period (1 January 2021). The United Kingdom’s part of EUTMs will be replaced by a new type of UK trade mark called a comparable mark (EU). Comparable marks will arise automatically and be placed on the UK register of marks as of 1/1/2021. Similarly, the UK IPO has provided guidance that such comparable trade marks will be recorded on the UK trade mark register, have the same legal status as if it had been applied for and registered under UK law, be a fully independent UK trade mark that can be challenged, assigned, licensed or renewed separately from the original EUTM. As a result, two separate registrations following the 1 January 2021 will exist where EUTMs are registered: on the EUTM register with the EUIPO and on the UK’s register with the IPO. However, following the 1 January 2021, at present, UK nationals with no domicile or real and effective establishment in the EU will no longer be able to be file for an EUTM. What will also remain to be seen is how UK / Gibraltar persons may bring enforcement of EUTMs in the EU.

3. International Trade Mark Under Madrid Protocol

When registering an international trade mark with the UK IPO under what is known as the Madrid Protocol and where the UK IPO is the designated authority, this is considered an effective registration under the UK Trade Marks Act 1994 and as a result can thereafter be registered in Gibraltar with the Registrar of Trade Marks Gibraltar. When applying for an international trade mark under the Madrid Protocol with the UK, you can also look to seek protection of those trade marks in other Madrid Protocol countries (that can be viewed here). The benefit of a Madrid Protocol registration is that protections can be sought in all of the EU’s member states as the EU is itself a signatory to the Madrid Protocol. Once a trade mark is registered under the Madrid Protocol the geographical scope of the international registration can be expanded at a later date. Please note that protection of each country who is a signatory to the Madrid Protocol will incur separate fees with the World Intellectual Property Office (WIPO) and will be more expensive. A breakdown of this can be found below.

Subsequent Gibraltar Registration

In Gibraltar, once a Trade Mark is registered under the Trade Marks Act 1994 in the UK then the trade mark may be registered in Gibraltar. An EUTM once registered with the EU prior to the 1 January 2021 may be registered in Gibraltar with the Registrar of Trade Marks Gibraltar. Should you wish to understand how EUTMs filed and registered following 1 January 2021 with the EU and whether they may subsequently be registered in Gibraltar, please let us know and we would be happy to understand your position.

What Registration is Most Suitable?

Whether you should seek to register a trade mark in the UK, register an international trade mark in the UK under the Madrid Protocol or under the EUTM depends on the coverage of protection you are looking to achieve and budget. First of all, given the uncertainties around Brexit at this stage it would be suggested that seeking an EUTM may prove to be problematic and potentially unsuitable for a few reasons concerning Brexit and extending an EUTM beyond the geography of the EU is not possible. Following 1 January 2021 EUTMs cannot effectively be registered by UK nationals with no domicile or real and effective establishment in the EU.

Seeking to register a UK trade mark with subsequent registration in Gibraltar may be suitable for those who may only be seeking to protect their brand in the United Kingdom and Gibraltar. For those with a larger geography and budget then seeking the registration of an international trade mark with the IPO under the Madrid Protocol may be most suitable.

From the indications provided on various sources it looks like the registration may take between 3 to 9 months to register any of the above trade marks depending on the complexity of the application. Gibraltar registrations are likely to take a matter of days.

Fees

Fees for the different registrations will vary depending on the number of marks that you are looking to register and the number of classes of goods or services you are looking to register with the mark. Disbursement fees (i.e. charges by the different registration offices, not including our fees for assistance) for a mark with 3 classes can vary from €1,100 for an EUTM or ￡1,700 for an international trade mark under the Madrid Protocol. By contrast a UK trade mark may be in the region of ￡300. In some instances, you will be required to file separate applications for different marks. Typically trade marks are registered for a period of 10 years and will subsequently need to be renewed. Gibraltar registrations are currently ￡30 and a ￡20 renewal fee. 

Get in touch

We have assisted a number of our clients with the protection of intellectual property in Gibraltar, assistance with filing trade mark applications and with advice concerning intellectual property following the UK’s departure from the European Union.

Send an email to help you with the protection of your intellectual property, registering trade marks and other IP, and related enforcement actions.

E: [email protected]

W: www.tsnlaw.com

This information sheet was produced on the 15 December 2020 and is intended as general guidance on your rights and responsibilities. Nothing in this information sheet constitutes legal advice or gives rise to a solicitor/client relationship. Specialist legal advice should be taken in relation to specific circumstances.

In the circumstances no warranty, express or implied, is given as to the accuracy of this information sheet and we do not accept any liability for error or omission.

Please contact us if you need a comprehensive and up-to-date statement of the relevant law.