Comparable UK trade marks
At the end of the Brexit transition period on 1 January 2021, the UK Intellectual Property Office (UK IPO) created “clone” UK trade marks (UKTMs) of any European Union trade marks (EUTMs) which were registered at that time. These trade marks are known as comparable UKTMs, and they are standalone rights within the UK. They were created to ensure that the “cloned” EUTMs would afford the same legal protection and rights to their owners in the post-Brexit landscape as UKTMs did, with the additional advantage of retaining their original EU filing date.
Prior to 1 January 2021 use of any such comparable trade marks in the EU was deemed genuine use in the UK as well. However, as of 1 January 2026, any comparable UKTMs which have not been genuinely used in the UK in the preceding five-year period could be vulnerable to challenge from third parties, seeking to use revocation for non-use action, to extinguish these rights. Such UKTMs cannot be relied on in trade mark enforcement, opposition or cancellation proceedings either.
Risks to comparable UK trade marks
Section 46(1) of the Trade Marks Act 1994 (TMA) provides would-be challengers an opportunity to try to revoke a UKTM on the ground of non-use, if the UKTM holder cannot show genuine use for an uninterrupted period of five years after registration without any cogent explanation for the non-use. Prior to 1 January 2026, use in the EU counted towards this five year period, but that is no longer the case.
If the trade mark is successfully revoked for non-use, it will be removed from the UK trade mark register, and the rightsholder will lose the protection of registered UK rights in their brand. The added bombshell to this is that once revoked, the original EU filing date will also be lost. The practical implication of this is that, once the owner of the comparable UKTM applies to re-register it, if someone else with a similar mark for similar goods and services has in the meantime registered their mark in the UK, that person’s registered rights will now pre-date the owner of the comparable UKTM’s registered rights, placing them at a disadvantage in defending any subsequent opposition against the fresh trade mark application.
Practices to mitigate risks
Owners who wish to protect their rights under comparable UKTMs should note and observe the following:
- Ensure they make genuine use of their UKTM in the UK as soon as possible. Under section 46(3) of the TMA, an owner who has let their UKTM languish unused for five years can reduce the impact of a challenge at the UKIPO by commencing or resuming genuine use in the UK and proving this use occurred at least three months before the date the challenge was launched. The resumption of use must not have occurred in the knowledge of a pending challenge.
- Ensure that any commencement or resumption of trade mark use is more than just token, and is not minimal simply to try to avoid challenge for non-use. Owners should have tangible commercial interests in the UK to support evidence of genuine use.
- Conduct an audit of brand portfolios to identify any comparable UKTMs which are at-risk of a non-use challenge, and decide on an appropriate brand strategy to manage or dispose of any at-risk trade marks.
- Keep appropriate records and documentation evidencing trade mark use, or intended trade mark use.
By Keith Dunn & Eileen McKendry-Gray of A&L Goodbody.
