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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

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