The Jersey authorities continue to have trade marks in their sights. Following on from a recent consultation into a possible new law, they’ve now advised that EU trade mark registrations do not provide protection to the island.

Previously, practitioners were of the understanding that they did provide protection. Reference to “Community trade mark” (the old name for an EU trade mark) is in the Trade Marks (Jersey) Law 2000. However, specifically Council Regulation (EC) No 40/94, referred to in the Jersey legislation, was repealed in 2009 and the Jersey Government has advised that EU trade marks have therefore not provided protection to Jersey since this date.

That we find this out 15 years later perhaps is an indication of how often trade marks are tested in the Jersey courts. From brief research, there has not been a trade mark case this side of the year 2000. (There doesn’t appear to be too many before that either.)

What to do if you have been relying on EUTM registrations to provide protection in Jersey?

While Jersey has a pluralistic legal system, drawing influence from particularly Norman customary law, it would likely follow the English common law of passing off to provide some protection to trade marks that are not registered.

There are a few options available if you want the more robust registered protection:

1. Do you have an existing protected designation of the United Kingdom in an International Registration? If so, this covers Jersey automatically.
2. If not, do you have an International Registration? If so, you could then subsequently designate the United Kingdom and, if/when a Statement of Grant of Protection is issued, this will automatically provide protection to Jersey.
3. Do you own an EU registration pre-dating the UK’s Brexit? If so, and presuming you did not opt out of the cloning of this registration on to the UK Register, you can use this UK registration and extend it to Jersey.
4. Otherwise, you may seek registration in the UK and, upon registration, extend this to Jersey.

While the filing of trade mark applications isn’t the be-all and end-all of our practice at Stobbs, we do file a large number of UK trade mark applications (statistics show the largest of any regulated firm in the UK). We also enjoy cordial relations with the Judicial Greffe, Jersey’s intellectual property registry. We are therefore well placed to ensure protection in both the UK and Jersey so please reach out to us if you need any support.