After Brexit, will EU trademark owners still be protected in the UK?

The "United Kingdom (UK) Withdrawal Agreement from the European Union (EU)" provides for a transition period, which ends on December 31, 2020. After that, the registered trademark (EUTM) of the trademark owner in the European Union will no longer be protected in the UK. The British government has taken measures to ensure that the trademarks of current European trademark owners continue to be valid in the UK. As of December 31, 2020, trademarks that have been registered in Europe are automatically created in the British Trademark Register. For European trademark applications that are still pending at the end of the transition period, applicants must choose to extend the European application to the UK before September 30, 2021 and request a priority date for the European application. 

In view of the above changes, applicants who have obtained trademark rights in the European Union and the United Kingdom are required to take the following measures：

1. New trademark applications need to be submitted in the EU and the UK at the same time

         If the applicant wishes to apply for protection of the trademark in both the European Union and the United Kingdom, the applicant needs to submit an application for trademark registration in the European Union and the United Kingdom at the same time, rather than hoping that the application will be automatically extended to the United Kingdom 9 months after the trademark registration application is filed in the European Union, because the current 9-month period is highly uncertain, which is likely to cause the applicant's application to be postponed.

If the trademark owner wishes to rely on the registration of a British trademark (UKTM) to prevent third-party trademark applications in the EU, he should file a new trademark application in an EU member state to protect the exclusive rights of the trademark in the EU. After December 31, 2020, British trademark owners will not be able to rely on British trademark rights to prevent third parties from using or registering the same trademarks in the EU.

3. Review current trademark disputes

          All trademark disputes arising from British trademark rights need to be resolved before December 31, 2020. After the transition period, all requests for objections or trademark revocation in the EU based on British trademark rights will be rejected.

4. Review of trademark portfolio

         For trademark owners who already have registered trademarks in the European Union, but for various reasons, they do not want to obtain the corresponding British trademark registration (for example, the trademark owner may have signed a coexistence agreement that excludes the United Kingdom). At this time, the trademark owner should actively choose to cancel his trademark registration in the United Kingdom and consider re-applying after the transition period is over.

4. Review of trademark portfolio

         For trademark owners who already have registered trademarks in the European Union, but for various reasons, they do not want to obtain the corresponding British trademark registration (for example, the trademark owner may have signed a coexistence agreement that excludes the United Kingdom). At this time, the trademark owner should actively choose to cancel his trademark registration in the United Kingdom and consider re-applying after the transition period is over.

Nuances that trademark owners need to pay attention to after the Brexit transition period ends include：

1. The right holder needs to determine whether the EU trademark application under review should be extended to the UK before September 30, 2021

If the applicant has an EU trademark application pending review, he can apply for the registration of the same trademark in the UK within 9 months after the end of the transition period, and the EU application date is required to be the priority date.

2. Filing of registered trademark licenses or security interests in the UK.

 The license or security interest of a registered trademark in the European Union will not be automatically copied to the British trademark register. Applicants need to apply to the British Intellectual Property Office before January 1, 2022 for any such licenses or security interests filed in their corresponding registered trademarks in the European Union.

3.Update the pending trademark process

It is best for applicants to organize and classify the corresponding EU trademark registrations and all pending UK trademark applications. For trademarks registered in the EU, their registration number in the UK will be composed of the last 8 digits of the EU trademark and start with UK009. For international registrations (IR) designated in the European Union, the new British trademark registration number will consist of the last 8 digits of IR and start with UK008.

4. EU trademarks and their corresponding British trademarks need to be renewed separately

 If the applicant's European registered trademark needs to be renewed after December 31, 2020, the applicant needs to renew his EU registered trademark and his British registered trademark automatically created in the UK.