Following the UK’s exit from the EU, the UK Intellectual Property Office (UKIPO) created “comparable” UK trade marks for all EU Trade Marks (EUTMs) and International Registrations designating the EU that were registered by 31 December 2020. These cloned UK marks retained the original filing, priority and seniority dates but became independent UK rights governed by UK law.
Transitional Period
A five-year transitional period (1 January 2021 to 31 December 2025) allowed owners of cloned UK marks to rely on use of the corresponding EUTM in the EU to defend against non-use cancellation or to prove use in opposition proceedings.
This gave businesses time to adapt without losing protection for marks primarily used in the EU.
Key Change from 1 January 2026
From 1 January 2026, use within the EU will no longer be accepted as evidence of genuine use for cloned UK trade marks. Only use in the UK will count. This means:
- Cloned UK marks that have not been used in the UK for the relevant goods/services will become vulnerable to revocation for non-use.
- Enforcement and opposition proceedings will require proof of UK use.
Practical Implications
What does this mean for rights holders? Here are the key risks:
- Third parties may file non-use cancellation actions from 1 January 2026.
- Cloned marks without UK use will lose strength in enforcement and opposition.
Recommended Actions
To safeguard your rights, take these steps now:
- Audit Your Portfolio: Identify cloned UK marks (prefixes UK008 or UK009) that have not been used in the UK.
- Establish UK Use: Begin or increase genuine commercial use in the UK for relevant goods/services.
- Keep Records: Document UK-based activities such as invoices, marketing materials, packaging, social media campaigns, and distribution records.
- Consider New Filings: If UK use is not feasible soon, filing a new UK application may be advisable.
Next Steps
We recommend conducting a portfolio review immediately and implementing a UK use strategy before the end of 2025 to safeguard your rights.
If you would like any help with this please contact Laura Trapnell, Head of IP, at [email protected] or call 0800 2800 421.
