From 31 December 2025, many EU trade marks (EUTMs) and UK “clone” registrations created after Brexit could become vulnerable to cancellation for non-use. It is important to review your portfolio ahead of this deadline to identify registrations that may no longer be defensible or enforceable, and take action to reduce risk.
Background
The UK left the EU on 1 February 2020. There was then a “transition period” which ended on 31 December 2020, after which EUTMs ceased to cover the UK. To preserve rights, the UKIPO created comparable UK registrations (“clones”) for all existing EUTMs.
In both the UK and EU, trade mark owners have five years from registration to start using a mark. After this, third parties can apply to cancel registrations if they have not been put to genuine use for a continuous five year period.
To account for Brexit, use of a mark in the UK before 31 December 2020 counted as use of an EUTM registration. Visa versa, use in any of the remaining 27 EU Member States before the end of the Brexit transition period could be used to support the UK “clone” registration.
What’s changing?
After 31 December 2025 (five years from the end of the transition period) UK “clone” registrations and EUTM registrations risk becoming vulnerable to cancellation on the grounds of non-use if they haven’t been used in their respective territories since 1 January 2021. Earlier cross-territorial use (UK use supporting EUTMs, or EU use supporting UK clones) will no longer count for defending non-use challenges or showing proof of use where the relevant period no longer extends before the transition period.
What does this mean?
The following will become vulnerable to non-use revocation:
-
EUTMs filed before 31 December 2020 that have not used been used in any of the 27 EU Member States since the end of the transition period; and
-
UK comparable registrations filed before 31 December 2020 that have not been used in the UK since the end of the transition period.
What to do?
If you have UK/EU registrations that are at risk, you may wish to consider the following options:
-
Commence use: Begin or resume genuine use in the relevant territory to avoid your UK/EUTM registrations becoming vulnerable to cancellation (or ensure there are valid reasons for non-use).
-
Review enforcement strategy: If a mark has not been used in the relevant territory and/or there is no plan to, be mindful that the mark will become vulnerable and will not be able to be relied on for enforcement where it may have been previously.
-
Build an evidence bank: Maintain dated proof of use evidence to defend future challenges.
-
Re-file strategically: If there is genuine commercial rationale, consider refiling in the UK or EU. Perhaps the form of a mark has changed or the goods and services of interest have expanded.
If you have any questions about your UK/EU trade mark portfolio and the upcoming changes, please contact Ruby Vinsome or your usual Kilburn & Strode advisor.