For the uninitiated, Jersey (formally “The Bailiwick of Jersey”) is a self-governing, British Crown Dependency (located just off the coast of France) with its own parliament and laws.
Trade mark holders have long been able to obtain Jersey-specific trade mark rights via extension (or “re-registration”) of an already existing UK trade mark right registered nationally before the UKIPO, or automatically via designating the UK under an international Madrid Protocol application filed through WIPO.
From the year 2000, a third way of obtaining trade mark protection in the territory was by holding a European Union Trade Mark (“EUTM”), previously known as a “Community Trade Mark” (“CTM”). Although Jersey itself was never an EU member state, the protection derived from an “equivalent protection” clause in a Jersey legal instrument that made reference to the EU’s CTM Regulation.
Although this reference in local law was repealed in 2009, EUTM registrations were still thought until now to confer equivalent rights in Jersey.
As part of a consultation process preparatory to Jersey passing its own primary trade mark legislation (which legislation would need to include transitional provisions), the government of Jersey declared in March 2024 that EUTM registrations do not confer trade mark rights in Jersey, and have not done so since the April 2009 repeal. Twist!
For the time being, those needing trade mark rights in Jersey (including those who thought their existing EUTM registration[s] ticked this box) still have the two original options at their disposal: formally to extend an existing UK registration obtained nationally, or to protect the UK via Madrid Protocol designation or subsequent designation (and in so doing, protect Jersey by default).
For purposes of the first option (extension or “re-registration”), UK registrations cloned onto the UK Register by virtue of the Brexit process constitute a perfectly valid basis for formal extension to Jersey.
Harrison IP is well placed to help clients with this process. Contact us if you would like to discuss this or other intellectual property issues.