News & Events about IP just for you

Changes to trade mark and patent law in Gibraltar

In October 2020, the UK Government declared that the territorial effect of five important IP treaties would be extended to cover Gibraltar from 1 January 2021. These treaties are the Paris Convention, the Patent Cooperation Treaty, the Madrid Protocol (on International trade marks), the Nice Agreement (on trade mark classification), and the Berne Convention (on copyright).

Following on from this, a bill was passed in on 11 December 2020, making some amendments to trade mark and patent law in Gibraltar, and is now on the Gibraltarian statute book as the Trade Marks and Patents (Miscellaneous Amendments) Act 2020. The bill can be accessed here.

Under these amendments, international trade mark applications filed on or after 1 January 2021 designating the United Kingdom will have effect in Gibraltar. WIPO have clarified that this also applies to a designation of the United Kingdom filed after 1 January 2021, presumably on an international trade mark application filed before 1 January 2021.

Further, comparable trade marks (that is, UK trade marks corresponding to existing EU trade marks, which will come into existence at the end of the transition period) will have effect in Gibraltar, whether they result from a direct EU trade mark application, or an EU designation of an international trade mark registration.

UK registered designs automatically extend to Gibraltar (under the Gibraltar Designs Act 1928), and so there is no need for the amendments to mention comparable designs.

On the patent side, any patents granted in the United Kingdom resulting from PCT applications filed on or after 1 January 2021 will have effect in Gibraltar. It is debatable whether this also extends to EP(UK) patents derived from PCT applications; the amendment requires that the patent must be “registered in the United Kingdom under the United Kingdom’s Patents Act 1977” in order to extend to Gibraltar, and it is not obvious whether this is the case for an EP(UK) patent (although a canny lawyer could doubtless argue either way).

If you have any queries about any of the points raised above, please get in touch.

Jason Stevens, Patent Attorney and Maximilian Theiss, Paralegal

Featured

NFTs - the new way to exploit your IP

02/08/21

Non-fungible tokens are the latest fashion in the cyber world. Building on blockchain technology, NFTs may be a new way to exploit intellectual property rights.

Artificial Intelligence Patents at the EPO and UKIPO

14/06/21

The number of patent applications for inventions relating to Artificial Intelligence “AI” is growing fast! But, can artificial intelligence be patented at the European Patent Office? The answer is both yes... and no.

Related News

The Horror, and The Magic of Copyright

15/05/23

Arguably, one of the most horrifying times for an IP owner is when protection dies (or expires)...

The scope of protection of a patent is fundamental to whether a patent is infringed.

11/04/23

In 2017 the U.K. Supreme Court issued its landmark ruling in Actavis v Eli Lilly [2017], that fundamentally changed how U.K. patent infringement is assessed, by the (re-) introduction of a ‘doctrine of equivalents’, in which a feature that falls outside of a ‘normal’ interpretation of the claims but that nonetheless varies from the invention in a way that is ‘immaterial’, infringes a U.K. patent. This can provide a U.K. patent with a broader scope of protection than was the case prior to the Actavis decision.

Here we look at how the Actavis decision has been applied and developed in subsequent decisions by the U.K. courts.

Trade Mark Team Strengthened with Senior Management Appointments

04/04/23

Danielle Cooksley has been appointed Director of Trade Marks and Liam Peters has been received a promotion to Partner.

Changes to R&D Tax Credits, and introducing the Pioneer's Platform from Wynne-Jones IP

27/03/23

From April this year, reforms to the R&D tax-credit schemes become effective. For some, the changes will be welcomed but others will find they lose out on tax-savings in an economy with ever increasing costs. At Wynne-Jones IP, we’re delighted to offer entrepreneurs, start-ups and SME’S a bit of extra help where it’s needed most. We offer a unique service, the Pioneer’s Platform, that helps businesses secure their first patent application at an affordable cost.

IP Assistance for SMEs- Last Orders for the IP Access Scheme?

09/03/23

Intellectual Property is a key aspect to consider for SMEs looking to develop and, if used correctly, can be a tool to grow and protect a business. However, the types and scope of protection of different forms of IP are frequently confused and misunderstood. This lack of understanding, along with the frequently prohibitive costs of certain forms of IP, is often the cause of businesses neglecting actual and potential IP rights that could be hugely beneficial. Nevertheless, there are a number of options for UK SMEs to help them develop and utilise their IP.

EPO Guidelines Update March 2023

08/03/23

As of 1^st March 2023, the latest version of the EPO Guidelines for Examination have entered into force. In addition to a number of minor changes, such as the provisions for drawings and debiting procedures, the Guidelines have been amended to take into account some significant changes in European patent practice over the last year.

EPO Fee Increases 1 April 2023

08/03/23

The EPO has announced a set of fee increases effective on 1 April 2023.

Wynne-Jones IP to support Cheltenham Open Door throughout 2023

23/12/22

Wynne-Jones IP are delighted to announce Cheltenham Open Door as it’s nominated charity for 2023. The charity, which operates from two locations in Cheltenham, support vulnerable, disadvantaged and lonely people.