It’s now almost five years since the end of the transition period following the UK’s departure from the EU.
At the start of January 2021, the UKIPO automatically created “cloned” UK trade mark registrations to mirror existing EUTMs. This ensured that owners of EUTMs registered before Brexit continued to benefit from protection in the UK without needing to file new national applications.
Non-use Revocation and Cloned UK Rights
In the UK, once a trade mark has been registered for more than five years, it becomes vulnerable to non-use revocation. A third party could therefore successfully challenge the registration if the owner cannot show genuine use of the mark in the UK during a continuous five-year period for the registered goods and services.
When the Brexit transitional provisions were agreed, one key question was whether cloned UK registrations would immediately become vulnerable to revocation if they were already over five years old and the owner could not show genuine UK use. A strict approach was not followed and instead (from 1 January 2021 to 31 December 2025) owners of cloned UK registrations have been able to rely on evidence of use anywhere in the EU to defend UK non-use challenges or to prove use in UK opposition proceedings.
However, this transitional protection ends on 1 January 2026. From the start of next year, owners of UK cloned registrations will only be able to rely on use within the UK to defend non-use revocation actions or to prove use in opposition proceedings. Use in the EU will no longer count as genuine use of the UK mark.
What Does This Mean for Rights Holders?
Many owners of EUTMs (and therefore of the corresponding cloned UK registrations) have never used their marks in the UK. In these cases, it is highly likely that a revocation action brought by a third party would succeed, and the cloned UK registration would be revoked in full. For some, this may not be an issue—particularly if the UK is not a key market—but for others, it could present a significant risk.
It is therefore important for trade mark owners to:
- Review their portfolios
Identify any cloned UK marks that may be vulnerable. This is also a good opportunity to check that the cloned registrations accurately reflect the goods and services of interest, and to consider refiling if there has been a rebrand or expansion.
- Maintain comprehensive records
Ensure they have clear evidence of use in the UK, such as invoices, marketing materials, social media activity, advertising campaigns and press releases – good record-keeping will put trade mark owners in as strong a position as possible to defend against a revocation action.
- Consider future UK plans
If a mark is not currently used in the UK but there are plans to enter the market, trade mark owners should assess whether their registration is already vulnerable to non-use revocation. If so, steps should be taken to commence use as soon as possible or, alternatively, owners should consider refiling national applications to ensure ongoing protection.
If you would like further information or have any questions, please contact one of our trade mark attorneys.