Posted On / 01.07.2020

Important changes to trade marks affecting the UK after 31st December 2020

The problem
The end of 2020, barring any last-minute changes, marks the end of the Brexit transition period.  It also leads to some important changes in the way EU trade marks (EUTMs) and UK trade marks (UKTMs) will be treated in the UK and the EU.  The EU has published these changes this month, and here are four points to be aware of that apply from 1st January 2021:

1. Spanish law will regulate ownership of EUTMs held by UK individuals and businesses UNLESS those individuals and businesses also have a real presence in an EU Member State, in which case the law of that Member State will apply. This could have serious implications and we are looking at this very closely.

2. In the UK, EUTMs registered before 1/1/2021 will, in the UK, translate automatically into UKTMs on 1/1/2021.  This means that if you register an EUTM in July 2020 (which currently includes the UK as one of the 28 Member States) it will automatically be split into 2 on 1/1/2021 and you’ll have a UKTM just for the UK and an EUTM for the 27 EU Member States.

3. Any claim for “seniority” when applying for an EU trademark based on an existing UK trade mark will cease to have effect in the EU (meaning because you’ve got an existing UK trade mark you get first dibs on the same EU one).

4. International registrations based on an EUTM under the Madrid Protocol will only be valid in the EU, not the UK.  If you registered an EUTM and didn’t bother with a separate UK trade mark (UKTM) because until now the EU has included the UK, and EU registrations are a good deal (e.g. we do all 28 countries including the UK for £1,500 whereas the UK alone is £650) then your rights in the UK vanish for those international registrations when we’re no longer part of the EU’s trade mark system.

The solution
If you own trade marks either in the UK or EU, or have used your UK or EU trade marks as a basis for applications for other countries under the Madrid Protocol, you should come and talk to us as soon as possible.  There are still six months to go before the end of the transition period as at the date of writing (25 June 2020), so it’s not yet too late.

But on 1 January 2021 it will be too late to do anything about your trade marks. 

Please email our Head of Media, Entertainment & IP, Brian Levine at brian.levine@battens.co.uk  or call him on 0800 652 8373 for a short free preliminary assessment.

View our trademark services here.