From 1 January 2026, owners of comparable trade marks will no longer be able to rely on use of the trade mark in the EU to defend their rights in the UK.
Background
Following Brexit, an exact copy of all European Union Trade Marks and International Trade Mark Registrations designating the EU (EUTMs) were entered into the UK Intellectual Property Office (UKIPO) register. These trade marks were copied into the UKIPO register on 1 January 2021 and are referred to as comparable trade marks.
This meant that owners of EUTMs became owners of the same trade mark in the UK without needing to file a separate application.
Under both EU and UK law, trade marks cannot be challenged for non-use during the first five years after registration. After this period, owners need to be able to demonstrate genuine use of the mark if it’s disputed.
Proof of use
The comparable trade marks in the UK retained the same details as the EUTMs, including the filing date. As a result of this, many comparable trade marks would appear to be registered in the UK for more than five years. By way of example, if a EUTM was registered in 2010, its five year period would have expired in 2015. When it was copied over to the UK in 2021, it would retain this 2010 registration date, and this would make it seem as though it had been registered in the UK for over ten years.
Applying the five-year rule to the comparable trade marks immediately would have been unfair, as many businesses had not begun trading in the UK. To address this issue, a five-year transition period was introduced from 1 January 2021, which allowed owners to rely on use of the trade mark in the EU to defend their comparable trade mark in the UK.
This five year period comes to an end on 1 January 2026. From that date, owners of comparable trade marks will no longer be able to rely on its use in the EU to maintain their rights in the UK. Instead, they must show genuine use of the trade mark in the UK.
Next steps
Trade mark owners should review whether they have used any comparable trade marks in the UK and ensure that they would be able to show proof of use if necessary.
If the trade mark has been used in the UK but for different goods and services to those registered, it may be worth filing a new application to protect them because trade marks are only protected for the specific goods and services registered under it. The new application would be treated as independent to existing trade marks, so it could be challenged by the UKIPO or owners of any similar trade marks in the UK. However, if it is successfully registered, it would benefit from a five year period where no one could challenge it for non-use.
If you have any questions as a result of this article, please contact: [email protected].
