It comes as a surprise to some that trade marks registered in the United Kingdom do not provide any coverage to the Channel Islands.

This is because they can feel like part of the UK. The Channel Islands have close cultural ties with the UK, postal correspondence from the islands to the UK is charged at UK inland rates, it’s part of the UK telephone numbering plan and forms part of the UK’s television network. The post situation was useful as, showing my age, it enabled me to boost my CD collection through mail order as the islands are outside the UK’s VAT (value added tax) regime. This shows a level of separation and they do also produce their own bank notes.

The Channel Islands consist of two Crown dependencies over which the United Kingdom government retains responsibility for certain areas of policy such as defence and foreign affairs. They are otherwise self-governing and consist of two Bailiwicks: the Bailiwick of Jersey and the Bailiwick of Guernsey. The latter includes not just the island of Guernsey, but Alderney and Sark too, islands that also enjoy some level of self-government.

It’s worth mentioning that there is a private Sark Trade Mark Register, but this provides no legal protection and is best avoiding.

When it comes to trade marks, the two Bailiwicks form two separate jurisdictions.

You would expect these two jurisdictions to have similar laws and this is another misconception. Historically, the two did have almost identical trade mark regulations that allowed for UK trade mark registrations to be extended to each.

Guernsey

This changed in 2006 when Guernsey opted to introduce its own substantive legislation. Modelled on the UK’s trade mark legislation, Guernsey now operates its own efficient Trade Marks Office.

Trade marks applications are examined and they are published for opposition purposes so, for want of a better word, it is a ‘proper’ trade mark jurisdiction. With an opposition period of only 20 days though it means the process to getting a registration can be very rapid when compared to other non-deposit jurisdictions.

Furthermore, since 1 January 2021, it has been possible to designate Guernsey in an International trade mark application. This is after the UK, in its role looking after Guernsey’s foreign affairs, extended the Madrid Protocol to the Bailiwick.

This also provided Guernsey businesses the opportunity of making use of the International trade mark system, provided they have a base mark in Guernsey. At the time of writing, only three businesses (with a total of four registrations) have taken advantage of this.

Jersey

The Bailiwick of Jersey still operates a system that allows UK registrations to be extended to the island.

Its law was last updated in 2000 and it also allows for EU trade marks and international trade marks protected in the United Kingdom to cover the Bailiwick without local registration.

The recognition of international trade marks protected in the United Kingdom, however, is through the local legislation and not from being tagged on to the UK’s membership of the Madrid Protocol, as is the case with Guernsey above. The practical implication of this is that Jersey businesses are not blessed with entitlement to own International Registrations.

Could this all be about to change? The Jersey government has recently consulted on introducing a ‘Primary’ Trade Marks Registry cf. their current regime which is ‘secondary’, dependent on trade mark protection elsewhere.

At Stobbs, while being headquartered in the UK and the representatives of a number of British businesses, we have clients from other parts of the world. We’re broadly in favour of improvements to trade mark legislation in other territories. It is important for businesses to be able to protect their trade marks in their home market, even if in Jersey’s case this home market may be small.

Currently, the legislation could be improved:

• To enable Jersey to be part of the Madrid Protocol. In particular, this would give Jersey businesses access to protecting their trade marks around a large number of countries around the world in a more cost-effective way.
• We can see the potential that Jersey would be a desirable IP holding jurisdiction given the attractiveness of its tax regime.
• This would also see Jersey be able to be designated in an International application and, as a market, it may then be more attractive to brand owners.
• The current ‘patchwork’ allowing for UK-based extensions plus automatic coverage to EU trade marks and international trade marks protected in the United Kingdom to cover the Bailiwick is less than ideal. Use of a trade mark in Jersey does not constitute use of a mark in the UK or EU so a purely local business unlikely to use outside of the island needs to get a registration elsewhere that would be unenforceable once its non-use vulnerability period expires. There would be question marks about any intention to use in the UK too.
• Although it’s unusual for a non-Jersey based business to want a Jersey-only trade mark, when this is the case, it is necessary to first get unneeded protection in the UK (or EU) currently.

In practice, however, we are not convinced the system is entirely ‘broke’. Jersey businesses could be given access to the Madrid Protocol if the UK asks for it with their consent. This has happened with Gibraltar, which still retains the same extension registration system. Ultimately, the uptake from Guernsey businesses, albeit a smaller jurisdiction and market, does not point to a substantial take up being likely by Jersey businesses.

Would joining the International system make it more attractive to brand owners? This seems debatable. Many brand owners probably include it within the UK for marketing and sales purposes already. It’s not rife with trade mark infringement so omitting it from a trade mark protection strategy isn’t as risky as with many other territories.

Ideally, Jersey could introduce a new primary trade mark system. Do they have the administration capabilities to manage this? Examining trade marks, managing oppositions and handling disputes, not to mention putting in place transitional measures for existing rights, requires a lot more structure and personnel than the Registry currently has (one main employee for all IP rights).

I have responded positively to the consultation with the caveat that any new laws are administratively manageable. To be fair, the Guernsey IP Office has been able to deliver so there’s no reason why Jersey cannot too. Having spent some time working on Jersey and knowing their rivalry with Guernsey, this may be added motivation! Change may be a foot on ‘the Rock’, as Jersey can be affectionately known.