Frequently Asked Questions about Protecting Your Trade Mark on Tropical Islands

Advances in communication and travel have opened trade routes and access for consumers and traders across many industries.  Commerce in far-flung islands is no longer hampered by distance and a number of island states are now establishing their own intellectual property laws.  It is increasingly important to bear in mind the development of National trade mark laws particularly in countries where formal trade mark rights have been dependent on overseas registrations.

These are some of the countries where we have recently been asked how best to protect trade mark rights:

The British Virgin Islands allocates registered trade mark rights through an extension of an existing UK trade mark application.  The resulting British Virgin Islands registration is dependent on the UK base registration and any changes to the UK base registration must also be made to the British Virgin Islands registration The British Virgin Islands Trade Marks Act 2013 comes into force on 1 September 2015. Once the new Act is in force, trade mark registrations in the British Virgin Islands must be secured through a registration filed on a National basis.

French Polynesia has historically been covered by an extension of the French National registrations.  The extension of those rights is no longer automatic.  Older National registrations will continue to cover French Polynesia but National applications filed between 3 March 2004 and 31 January 2014 require separate validation if French Polynesia is to be covered.  National trade mark applications filed after 31 January 2014 require the owner to opt in to coverage in French Polynesia, if it is desired.

Vanuatu previously required an existing UK trade mark application or registration as a base to secure a Vanuatu trade mark right.  The Trade Marks Act 2011 transfers any rights secured under this system to National Vanuatu trade mark rights.  Trade mark applications should now be filed under the new Act and re-registration of a UK registration is no longer possible.

The Marshall Islands was once a US territory and trade mark rights were covered by US legislation.  No National legislation has been adopted since the Marshall Islands secured full sovereignty in 1986 so at the moment trade mark registrations cannot be secured.  Trade mark rights in the Marshall Islands depending upon common law rights and publication of cautionary notice is recommended to draw attention to those rights.

The Cook Islands was covered by the New Zealand Trade Marks Act 1953.  However, when that legislation was repealed and replaced by the 2002 Act, reference to the Cook Islands was removed.  Nothing was included in the 2002 Act to address transfer of trade mark registrations which used to cover the Cook Islands or to cover new trade mark rights sought in the Cook Islands.  At the moment there are no mechanisms to register trade mark rights in the Cook Islands so traders need to rely on their common law rights.  Publication of cautionary notices are recommended to draw attention to those rights.

Tuvalu, Kiribati and the Solomon Islands still operate under a system of re-registration based upon a registration in the UK.  The registration is valid for the duration of the UK registration and renewable once the UK registration is renewed.

This list is by no means exhaustive and we recommend on-going review with our network of local agents as the law continues to develop.