Trademarks and Britain Overseas
Updated note (2025): This post was originally written in 2013 and has been updated to reflect the significant changes brought about by Brexit. Since 1 January 2021, UK and EU trademark protection are entirely separate. An EUTM no longer covers the UK. Additionally, from 1 January 2026, the transitional period has ended — UK use no longer supports an EUTM and EU use no longer supports a cloned UK trademark. Trademark owners should review their portfolios accordingly.
Increasingly, awareness of the value of a brand is leading businesses to protect their names and logos through trademark registration. As registration is territorial in nature, only offering protection in the particular countries where an application is filed, businesses typically begin by focusing on their primary market before extending their registrations internationally. For example, a company which operates in the UK might file a UK trademark and then later take advantage of rules which allow that registration to be extended to other countries as their business develops.
There are a variety of ways to protect your trademark further afield, but it is important to appreciate that the scope of a UK trademark may not offer as broad protection as you might expect. While a UK trademark covers England, Wales, Scotland, Northern Ireland and the Isle of Man, it does not automatically extend to Guernsey, Jersey, the Republic of Ireland or Gibraltar. So, when devising an international trademark filing strategy it’s important not to lose sight of priorities which might be closer to home.
The Madrid system offers a way to register international trademarks based on an earlier filing, an EU Trade Mark (EUTM) registration can protect your brand across 27 EU member states — though since the UK left the EU on 1 January 2021, it no longer covers the UK, but it may surprise you to learn that, even together with a UK application, these will not cover all of your bases. There isn’t scope in this article to detail all of the Crown Dependencies (such as Jersey or Guernsey) or British Overseas Territories (such as Gibraltar or the Cayman Islands), but to give an indication of what might be involved to trademark a name in some of the countries which might be relevant to you, we have summarised some of the intricacies of the system below.
Jersey Trademarks
Jersey has its own trademarks registry and is not party to the Madrid system. Since March 2024 it has been confirmed that EUTM registrations no longer confer trademark rights in Jersey. The only way to secure trademark protection in Jersey is now via a UK registration — either a nationally obtained UK registration or a comparable UK registration cloned from an EUTM at Brexit — which can then be formally extended to Jersey. Alternatively, an international application designating the UK will also protect Jersey by default.
Guernsey Trademarks
Guernsey has its own trademarks registry. EUTM registration does not protect your trademark in Guernsey. However, since January 2021 it is now possible to designate Guernsey in an international trademark application, providing a new route to protection that did not exist when this post was first written. Direct registration remains an option too.
Trademarks in the Republic of Ireland
There are three ways to protect your trademark in Ireland. If you operate elsewhere in Europe, then an EUTM may the best way forwards, and you can also designate Ireland as part of an international application through the Madrid system. Alternatively, if you don’t need wider protection you can file directly with the Irish Patents Office.
Trademarks in Gibraltar
Since Brexit, EUTMs no longer automatically extend to Gibraltar. However, UK trademark registrations — including comparable UK registrations cloned from EUTMs at Brexit — do automatically have effect in Gibraltar. You can also file directly in Gibraltar or secure international protection designating the EU.
Cover your bases
Only a handful of jurisdictions are mentioned above, and there are a range of former British Protectorates and Commonwealth territories, Bailiwick’s and other Crown Dependencies, and British Overseas Territiories which each have their own particular quirks. Bearing in mind the diversity of routes available when registering trademarks internationally, through national registration, re-registration based on national marks, the EUTM system, the Madrid Protocol and the Madrid Agreement, a well thought out strategy for securing protection of your brand is crucial. Without expert advice, it’s easy to leave gaps.
If you want to protect your brand internationally, get in touch with Azrights. In the meantime, if you want to learn more about the legal aspects of branding why not buy a copy of Legally Branded, a book that explains the relevant law in an accessible way?
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