Overview of Trademark Registration in Gibraltar

There was an update in the Gibraltar Trade Marks Act in December 2020, with respect to the provisions of the amendment w.e.f1st January 2021. The update provided for the withdrawal of Gibraltar from the European Union with the objective of ensuring continued protection in Gibraltar of existing rights and privileges with regard to the EU trademarks and international trademarks with an EU designation. The amendments also included the implementation of the extension of the Madrid Protocol to Gibraltar regarding the designations of the UK in international applications made on or subsequent to 01.01.21

Legislation and Authority Responsible for Trademark Registration in Gibraltar 

 The legislation dealing with trademark registration in Gibraltar is the Trade Marks Act 1948 as amended which provides for applications for the extension of rights under an existing UK registration.

The authority entrusted with the responsibility of registration of trademarks under the Trade Marks Act (“the Act”) and the Trade Mark Rules is the Companies House Gibraltar.

Persons Eligible for Trademark Registration in Gibraltar

Any person who is a registered proprietor of a trade mark in the UK by virtue of an entry in the register of trademarks kept under the Trade Marks Act 1994 or any person who derives title from such registered proprietor by assignment or other modes of transfer is eligible for trademark registration in Gibraltar. He can file an application for trademark registration in Gibraltar at any time during the existence of the registration in the United Kingdom to get such trade mark registered in Gibraltar for some or all of the goods comprised in the United Kingdom registration.

Any person entered in the United Kingdom Register of Trade Marks u/s 28 of the Trade Marks Act, 1938, as a registered user for any goods of a trade mark for which a certificate of registration under this Act is in force can file an application to become a registered user of the mark with regard to some or all of such goods,   depending upon any conditions or restrictions entered in the United Kingdom Register.

Eligible Marks for Trademark Registration in Gibraltar

 In furtherance of the amendment of 2021, the following marks can be registered in Gibraltar.

• International trade marks registered under the Madrid Protocol and designating the UK consequential to an international application filed on or subsequent 01.01.21.
• Comparable trade marks (EU), being those comparable trade mark rights automatically created in the UK on the 1st January 2021 in respect of those EU trademarks with an existing EU trade mark registration immediately before the 1st January 2021
• Comparable trade marks (UK), of which the comparable trade mark rights have automatically been created in the UK on the 1st January 2021 forinternational trade marks designating the EU, which had a 2 protected status in the UK under the Madrid Protocol immediately prior to 01.01.21.

necessary papers Required for Trademark Registration in Gibraltar

The following necessary papers are required for trademark registration in Gibraltar.

necessary papers for Trademark Registration in Gibraltar

• Application for Registration of a trademark (Form 1)
• Certified representation of the trade mark
• Certificate of the Comptroller of the UK Patent Office (under his title of Registrar of Trade Marks) giving full particulars of the registration of the trade mark
• Two prints of the trade mark if the trade mark is a registered device.

necessary papers for entry as Registered User

• Application for entry as Registered User (Form 3)
• Certificate of the UK Registrar of Trade Marks giving full particulars of the entry in the UK Register under section 28

General considerations

Every application or request to the Registrar of Trade Marks must be filed in writing and signed by the party applying or by a person duly authorised on his behalf or by a solicitor. Where the trade mark is a device, every application or request shall be accompanied by two prints of the trade mark.

Procedure of Trademark Registration in Gibraltar 

Filing the Application

 The applicant must file the application with the Registrar attaching the requite necessary papers.

Issue of certificate

Upon such application being lodged, together with the necessary papers, the Registrar shall enter the prescribed particulars in the register and shall issue a certificate of registration to the applicant.

 After the registration, the applicant shallbe the registered proprietor in Gibraltar of the trade mark for the goods entered in the register.

Duration of Registration

The privileges and rights shall be determined from the date of registration in the United Kingdom and shall continue in force for so long as the registration in the United Kingdom remains in force in respect of the goods for which the trade mark is registered in Gibraltar.

Provided that no action for infringement of the trade mark shall be entertained in respect of any use of the trade mark prior to the date of issue of the registration certificate in Gibraltar.

Renewal

If the registration in the UK of a trade mark registered under the Act needs to be renewed, the registered proprietor may notify the Registrar, who shall then, on sufficient evidence thereof and on payment of the prescribed fee,within three months after the date of renewal in the United Kingdom or such further period as may be prescribed renew the registration in the register in the prescribed manner.

 The non-renewal of the registration will lead to cancellation of the same by the Registrar.

Frequently Asked Questions

Is Gibraltar a part of the European Union?

No,Gibraltar is not a part of the European Union pursuant to the amendment of the Trademarks Act wef from 01.01.21.

Who registers trademarks in Gibraltar?

The authority entrusted with the responsibility of registration of trademarks under the Trade Marks Act ("the Act") and the Trade Mark Rules is the Companies House Gibraltar.

What is the term of Registration?

The privileges and rights shall be determined from the date of registration in the United Kingdom and shall continue in force for so long as the registration in the United Kingdom remains in force in respect of the goods for which the trade mark is registered in Gibraltar.

Which trademarks can be issued in Gibraltar?

The trademarks which can be registered in Gibraltar in furtherance of the amendment of 2021 are International trademarks registered under the Madrid Protocol, Comparable trade marks (EU), and Comparable trade marks (UK ).

What are the necessary papers required for filling out an application for trademark registration in Gibraltar?

The necessary papers required for filling an application for trademark registration in Gibraltar are - Application for Registration of a trademark (Form 1), a Certified representation of the trade mark, a Certificate of the Comptroller of the UK Patent Office (under his title of Registrar of Trade Marks) giving full particulars of the registration of the trade mark and two prints of the trade mark if the trade mark to be is a registered device.