Trademark rights in the overseas territories and dependencies of the EU Member States

In a informative notice Last October, the United Kingdom Intellectual Property Office (IPO) provided information on the coverage of a designation in the United Kingdom, through the Madrid Protocol, in relation to the British Overseas Territories and Crown Dependencies.

The issue of the protection granted to trademark rights in the dependent or overseas territories is a question not exempt from confusion and contradictions and, for lawyers specialized in trademark law, it represents more than one headache. Generally speaking, there are no clear and concrete indications that are followed by all territories and little legislative harmonization is frequently observed between states and their overseas territories. Hence, informative notes such as the one that is the subject of this comment are especially valuable for professionals and rights holders who would also welcome clarifications from countries such as France or the Netherlands.

However, after reading these statements from the British office, we cannot help but bring up our experience in these issues accompanied by some reflection.

When the IPO indicates that the international trademark registrations that designate the United Kingdom extend their coverage to its territories, it must be taken into account that it is referring only to the designation of the United Kingdom as a Contracting Party and not to rights obtained in the United Kingdom as consequence of protecting the European Union through international means. At this point, the interpretations on the effects of the rights obtained through national and community channels in the dependent and overseas territories are neither clear nor unanimous.

To illustrate, we give the example Gibraltar, a territory considered overseas, despite being geographically located in the European Union.

If we start from the literality of the Gibraltar trademark regulations, protection in Gibraltar is obtained exclusively by extension of a registered British right. That is, a British right but not a registered Community right. By inference, we understand that they do not recognize the right obtained from a community designation made by the Madrid System.

Despite it being a common practice to register trademarks in the Gibraltar Office based on community trademarks, it is also true that
There is great uncertainty regarding the possibility of enforcing these rights, especially in anti-piracy matters (so important in such territories) or even when they are intended to be invoked before the Courts.

The fact is that there is no clear jurisprudence in this regard nor sufficient experience, and that, depending on the client's real interest in one territory or another, the protection strategy must involve specific advice and analysis of the specific situation. The decision will be different if
has a purely defensive interest that when the interest is real or even the risks, for example because there is activity or it is going to start (a
A good example could be the start-up of a hotel on any overseas island) or there is a serious problem.

Another interesting aspect that the notice refers to is related to the capacity to hold international rights by holders or assignees and their link with the Madrid System. This point is controversial, and although infrequent, it raises many doubts in practice. It seems clear that it is essential to justify that there is sufficient link with the United Kingdom, in cases in which the owners or assignees have nationality, domicile or real and effective industrial or commercial establishment in some Overseas Territories (for example, the British Virgin or Jersey).

Finally, it is necessary to point out that this information, recently disclosed by WIPO, is not binding. Neither has
binding nature the information that the OHIM has published on the matter in relation to the scope of the protection of community rights. Despite the efforts towards greater harmonization in the trademark regulations of European countries, we still find niches and uncertainties when it comes to the protection of trademark rights in the territories of
overseas or dependent of the Member States, and in practice, at least for the moment, it seems necessary to have this particularity.Author: Cristina Arroyo