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

The UK Exit Agreement from the European Union (EU) provides for a transitional period that ends on December 31, 2020. Afterwards, the registered trademark (EUTM) of the trademark owner in the European Union will no longer be protected in the UK. The UK government has taken measures to ensure that the trademarks of current European trademark owners remain valid in the UK. As of December 31, 2020, trademarks registered in Europe have been automatically created in the UK Trademark Register. For European trademark applications that are still pending review at the end of the transition period, the applicant must choose to extend the European application to the United Kingdom before September 30, 2021, and request a priority date for the European application.
Given the above changes, applicants who have obtained trademark rights in the EU and the UK are required to take the following measures:
1. New trademark application needs to be submitted simultaneously in the EU and the UK
If the applicant wishes to apply for a trademark that is protected in both the EU and the UK, they need to submit both EU and UK trademark registration applications at the same time, rather than hoping that the application will automatically extend to the UK within 9 months after submitting the trademark registration application in the EU, as the current 9-month period is highly uncertain and may result in an extension of the applicant's application.
2. Timely layout of EU trademarks
If the trademark owner wishes to rely on registering a UK trademark (UKTM) to prevent third-party trademark applications in the EU, a new trademark application should be submitted in the EU member state to safeguard the exclusive rights of the trademark in the EU. After December 31, 2020, UK trademark owners will not be able to rely on UK trademark rights to prevent third parties from using or registering the same trademark in the EU.
3. Review of current trademark disputes
All trademark disputes arising from UK trademark rights need to be resolved before December 31, 2020. After the transition period, all requests for objections or revocation of trademarks in the EU based on UK trademark rights will be rejected.
4. Review of trademark combinations
For trademark owners who already own EU registered trademarks but do not wish to obtain corresponding UK trademark registration due to various reasons (for example, the trademark owner may have signed a coexistence agreement excluding the UK), the trademark owner should actively choose to revoke their trademark registration in the UK and consider reapplying after the transition period ends.
5. Review of signed intellectual property agreements
Applicants should review agreements related to EU intellectual property rights to determine whether modifications need to be made based on Brexit. You should review the terms related to definition, jurisdiction, applicable law, and region. If the agreement involves coexistence, licensing, or settlement, special attention should be paid.
After the Brexit transition period in the UK, trademark owners need to pay attention to the following matters:
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 to be reviewed, they can apply for the registration of the same trademark within the UK within 9 months after the end of the transition period, and the EU application date is required as the priority date.
2. Filing of registered trademark licenses or security interests in the UK
The license or security interest of registered trademarks in the European Union will not be automatically copied into the UK Trademark Register. Applicants are required to apply to the UK Intellectual Property Office before January 1, 2022 for any such licenses or security interests filed in their EU registered trademarks.
3. Update the pending trademark process
It is best for the applicant to organize and classify the corresponding EU trademark registration and all pending UK trademark applications. For trademarks registered in the EU, their registration number in the UK will consist of the last 8 digits of the EU trademark, starting with UK009. For the international registration (IR) of the designated EU, the new UK trademark registration number will consist of the last 8 digits of IR and start with UK008.
4. EU trademarks and their corresponding UK 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 their EU registered trademark and their automatically created UK registered trademark separately.