Trade Marks Prosecution Factsheet: Popular UK Re-registration Countries

• 10 years from the filing date for national registrations
• UK re-registrations expire on the same date as that of the underlying UK registration unless renewed for further 10-year periods

• Due every 10 years with a 6-month grace period for national registrations
• Due on the expiry of the underlying UK registration if UK-based and may be removed from the Register if not renewed within 12 months of expiry
• Restoration is not available

• Original notarised Power of Attorney
• Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.

i) Assignment or licence agreements
ii) Companies Registry certificates certifying changes of name / address / mergers
iii) Affidavits certifying changes of name / address / mergers

• UK-based applications/renewals/recordals: A certified hard copy of the underlying UK registration issued by UK IPO in addition to the above documents
• Priority-based applications (new filings only): a certified hard copy priority document issued by the relevant IPO in English along with an original notarised priority declaration

• Applications for the re-registration of UK trade mark registrations are accepted
• Effective 1 January 2021, International Registrations designating the UK, and Comparable EU trade mark registrations and International Registrations designating the EU cloned onto the UK Register on 1 January 2021 are also protected automatically in Gibraltar; however, this does not preclude their re-registration in Gibraltar and there are benefits of re-registration when it comes to the exploitation and use of the trade mark in Gibraltar

Paris Convention Priority cannot be claimed even though Gibraltar is a party to the Paris Convention. This is because filings are currently limited to the re-registration of existing UK trade mark registrations.  

• A certified hard copy of the underlying UK registration issued by UK IPO
• Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g. assignment or licence agreements / certificates of merger

Companies House Gibraltar provides a quick and efficient service. The period from filing to registration can take as little as 2 months.

• Single class applications only for national applications
• Single and/or multi-class applications in respect of UK re-registrations as dictated by the underlying UK registration

• Nice (current Edition) for UK re-registrations
• For national applications, the Fourth Schedule of the Trade Marks Rules applies to goods in classes 1 – 34

• National registrations protect goods only
• Services can be protected when re-registering a UK registration in Guyana if the UK registration covers the relevant services

• 7 years from the filing date for national registrations, which is also deemed to be the effective date of registration
• UK re-registrations expire on the same date as that of the underlying UK registration unless renewed for further 10-year periods

• After the initial 7-year term, renewals are due every 14 years with a 1-month grace period for national registrations
• Renewals are due on the expiry of the underlying UK registration if UK-based and may be removed from the Register if not renewed within the expiry/ renewal deadline
• Restoration is also possible after the expiry of the grace period in respect of national registrations

• Original signed Authorisation of Agent (one per application/registration and per type of work to be completed (e.g. new application, assignment recordal, renewal...)
• Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.

i) Assignment or licence agreements
ii) Companies Registry certificates certifying changes of name / address / merger
iii) Affidavits certifying changes of name / address / mergers

• UK-based applications/renewals/recordals: A certified hard copy of the underlying UK registration issued by UK IPO is also required in addition to the above

The Registrar automatically associates identical/similar marks owned by the same proprietor on examination – no office action is issued prior. Associated trade marks must be assigned together as a matter of law. However, as a matter of practice, the Registrar tends to take a lenient approach.

Office actions are frequently issued in respect of a likelihood of confusion with earlier applications/registrations and requests for disclaimers in respect of any descriptive words and/or words lacking distinctiveness.

Requests for clarity concerning any colour claims and codes are also common (a trade mark may be limited in whole or in part to one or more specified colours - if a trade mark is registered without limitation of colour, it is deemed to be registered for all colours).

• Applications for the re-registration of UK trade mark registrations are accepted
• International registrations designating the UK, and EU trade mark registrations are also protected automatically in Jersey; however, this does not preclude their re-registration in Jersey and there may be benefits of re-registration in order to future-proof protection

• 10 years from the filing date for national registrations, which is also deemed to be the effective date of registration
• UK re-registrations expire on the same date as that of the underlying UK registration unless renewed for further 10-year periods

• Due every 10 years with a 6-month grace period for national registrations
• UK-based registrations may be cancelled by the Registrar if not renewed within 3 months of the UK expiry/renewal deadline
• Restoration is also possible in respect of national registrations if filed within 6 months of the expiry of the grace period/removal from the Register if, having regard to the circumstances of the failure to renew, it is just to renew
• The Registrar also tends to allow an additional discretionary 6-month restoration period in respect of UK re-registrations as a matter of practice, although this is not provided for by law

• Original notarised Authorisation of Agent per application/registration with details of mark / logo specified
• Original notarised accompanying documents where relevant to the particular type of filing to be made, e.g.

i) Assignment or licence agreements
ii) Official Registry forms to be signed by the applicant or relevant parties to the assignment / merger
iii) Companies Registry certificates certifying changes of name / address / mergers
iv) Affidavits or declarations certifying changes of name / address / mergers

• UK-based applications/renewals/recordals: A certified hard copy of the underlying UK registration issued by UK IPO is also required in addition to the above

Note: All documents must be signed by a director/officer/employee or general counsel of the proprietor and their capacity must be clearly stated on the Authorisation of Agent. If, on the other hand, an authorised signatory or attorney who is not an employee, director or officer of the proprietor signs, then a notarised true copy of the original Authorisation or Power granted from the proprietor to the authorised signatory or attorney must also be provided, as well as a notarised sworn declaration.

Applications for the re-registration of UK trade mark registrations are accepted.

• A certified hard copy of the underlying UK registration issued by UK IPO
• Letter setting out the details of the application to be filed
• It is also advisable to submit a simply signed original Power of Attorney

• A certified hard copy of the underlying UK registration issued by UK IPO
• Simply signed original Appointment of Agent (Form 1)
• Scanned accompanying documents are required where relevant to the particular type of filing to be made, e.g.
  • Assignment or licence agreements
  • Companies Registry certificates certifying change of name / address / mergers
• If filing a renewal or recordal of assignment, merger, change of name or address, etc. the original St. Helena trade mark registration certificate must also be provided for endorsement; if unavailable a certified copy must be ordered for this purpose.

The Judicial section of the St. Helena Government operates a manual, paper-based system. The period from filing to registration can take around 6 months and much depends on the allocation of resources at the relevant time.