Almost inevitably, following our article on trademark protection in Jersey, we felt compelled to write a few lines about its neighbor, the Bailiwick of Guernsey.
If you conduct business or provide services in this jurisdiction, this post may be of interest to you, and you might even consider how to protect your trademarks there as well.
Guernsey: An Independent Jurisdiction from a Trademark Perspective
The place where the famous Victor Hugo went into exile; it is said that the French writer wrote his novel *Les Misérables* from his home in Hauteville, Guernsey.
So, just as if we were Jean Valjean himself, let’s protect our brands—which, after all, are our creations, our values, and our assets—just as he protects the innocent and vulnerable Cosette.
But where do we protect them? It’s not France. It’s not the United Kingdom. So what is it? It’s the Bailiwick of Guernsey, an independent jurisdiction, though held by the British Crown and therefore under its authority for certain matters.
National Registration: The Natural and Direct Path to Trademark Protection in Guernsey
The standard procedure for registering a trademark in Guernsey is the direct national registration process, which has been available since 2016—prior to that date, a prior British registration was required—with the Intellectual Property Office (hereinafter “IPO”) located in St. Peter Port.
Its system allows for the protection of one or more classes of goods and/or services in a single application. The IPO applies the Nice International Classification of Goods and Services. Interestingly, in this small jurisdiction, a prior art search must be conducted before filing. Otherwise, the procedure is straightforward, relatively informal, and not overly expensive.
Guernsey in Relevant International Treaties
In 2020, the United Kingdom’s Foreign and Commonwealth Office extended its ratification of the Protocol Relating to the Madrid Agreement to the territories of the Bailiwick of Guernsey and Gibraltar (Gibraltar requires a separate discussion due to its complexity).
Thus, as of January 1, 2021, a trademark owner may apply for international trademarks or subsequent designations in Guernsey through WIPO, the Madrid Protocol, and the Madrid System for the registration of international trademarks, even though Guernsey is not, per se, a party to the International Treaty.
Similarly, a trademark owner based in Guernsey can use the international registration system to protect their trademark in other countries.
The moral of the story is that Guernsey is not a signatory to the Protocol, but it might as well be.
In addition, the United Kingdom clarified the extension of the Paris Union Convention to Guernsey, which allows for the assertion of Union priority and such essential principles as national treatment.
In conclusion, if you have a business presence in Guernsey or plans to expand into this jurisdiction, it is essential to include Guernsey in your trademark protection strategy.
Cristina Arroyo, Director of the International Brands Division at ELZABURU