Gibraltar Intellectual Property (IP) Protection

The Intellectual Property (IP) associated with a business name or system can be one of its most valuable assets – but only if it is properly protected. Any business that wishes to establish a national or international identity should take steps to protect the use of its name, logo or other IP, such as patent rights, formulae/processes, designs, trade marks, franchises, licence agreements, ‘know-how’ and copyrights.

You own intellectual property if you:

Created it and it meets the requirements for copyright, a patent or a design
Acquired IP rights from the creator or a previous owner
Have a brand that could be a trade mark, such as a well-known product name.

A trade mark is a name or symbol used to identify the goods or services produced by a particular manufacturer or distributed by a particular dealer, to distinguish them from products associated with competing manufactures or dealers.

Protecting your intellectual property

Protecting your IP makes it easier to take legal action against anyone who steals or copies it. There are different types of protection depending on what you’ve created:

Registering a trade mark – product names, logos, jingles
Registering a design – appearance of a product, including its shape, packaging, patterns, decoration
Copyrighting your work – writing and literary works, art, photography, films, TV, music, web content
Patenting an invention – inventions and products, such as medicines.

You get limited automatic protection over some IP, such as design rights. However, it’s easier to prove you own IP legally if it is registered. You should keep your IP secret until it’s registered. If you need to discuss your idea with someone, use a non-disclosure agreement (NDA).

More than one type of protection can be linked to a single product. For example, you can:

Register the name and logo as a trade mark.
Protect a product’s unique shape as a registered design.
Patent a completely new working part.
Use copyright to protect drawings of the product.

It is not possible to make an original application to register a patent or trademark in Gibraltar. Applications must be made to the UK Intellectual Property Office (UKIPO) and then extended to cover Gibraltar within three years of the date of issue of the UK patent or trademark.

The register for patents or trademarks is based at Companies House, Gibraltar. The holder can take action through the UK or Gibraltar courts to enforce a patent or trademark.

International Trade Mark registration

The Gibraltar Trade Marks Act was updated as of 1 January 2021 to provide for Gibraltar’s withdrawal from the European Union and to ensure the continued protection in Gibraltar of existing rights and privileges in respect of EU trade marks, and international trade marks with an EU designation.

The amendments also included the implementation of the extension of the Madrid Protocol to Gibraltar in respect of designations of the UK in international trade mark applications made on or after the 1 January 2021.

The rights and privileges in respect of the following marks therefore automatically cover Gibraltar for as long as their registration remains in force in the UK:

International trade marks registered under the Madrid Protocol and designating the UK as a result of an international application made on or after 1 January 2021.
Comparable trade marks (EU), being those comparable trade mark rights automatically created in the UK on 1 January 2021 in respect of those EU trade marks with an existing EU trade mark registration immediately before 1 January 2021.
Comparable trade marks (UK) automatically created in the UK on the 1 January 2021 in respect of international trade marks designating the EU that had a protected status in the UK under the Madrid Protocol immediately before the 1 January 2021.

A comparable trade mark (EU) or comparable trade mark (UK) is treated in the UK as if applied for and registered under UK law. Being a fully independent UK trade mark, it may be challenged, assigned, licensed or renewed separately from the original EU or international registration.

The changes made to the Act to cater for Gibraltar’s withdrawal from the EU do not affect any trade mark that was already registered in the Gibraltar register before 1 January 2021.

The fact that international trade marks designating the UK, and comparable trade marks (EU) and (UK) are automatically given the same protection in Gibraltar as in the UK, does not preclude their registration in Gibraltar.

The owners of marks may opt to seek registration in Gibraltar, in spite of their automatic protection, because once a trade mark is registered in Gibraltar it does, in certain important respects, acquire a life of its own.

This means a trade mark can, for instance, be assigned to a different owner in Gibraltar to that in the UK, or certain classes can be assigned to owners different from that of the UK mark. This possibility gives brand owners a useful tool to deal with their trade marks and classes under their marks within the Gibraltar market.

Licensing Intellectual Property Rights

Licensing intellectual property rights is the process of granting the legal right to another party to use a creator’s IP, such as a trade mark, patent or copyright, in exchange for a fee or royalty. It would be an infringement of the rights if the other party used the IP without the licence.

IP rights can be licensed, and this is a common way to exploit the goodwill and reputation developed in your IP. You can grant a licence giving the licensee the right to manufacture your protected product for their own sales, in return for royalties. Choosing to grant such a licence has the benefit of allowing your product to reach a bigger market while also providing further income.

The terms and conditions on which the IP is licensed are varied and both parties usually agree these terms and conditions via negotiation. If you own the IP that you are licensing, you should be able to obtain favourable terms within the agreement.

Tax planning for IP rights

Income from IP rights can be derived by way of royalties. As with other sources of income, the tax planning of IP should focus on maximising the after-tax profits. To ensure that arrangements made to receive royalties are effective, it is necessary to analyse how various countries treat the payments of royalties, whether tax is withheld on such payments and how the income receipts and expenditures are treated.

Sovereign can provide cost effective advice to clients on the acquisition, exploitation, use and enforcement of IP rights on both a domestic and cross-border basis.