Comparable UK trade marks and genuine use: post-Brexit update
On 01 January 2021, the United Kingdom Intellectual Property Office (UKIPO) cloned existing EU trade mark registrations and protected EU designations of international registrations into registered UK rights known as “comparable UK trade marks”.
When proving use of comparable UK trade marks (whether in the context of opposition, invalidation, revocation or infringement proceedings), rights holders are able to rely on European Union use dated on or before 31 December 2020 and/or UK use.
Therefore, from 01 January 2026, revocation applicants may request proof of use for a continuous five-year period in which only UK use is relevant; and for UK applications filed on 31 December 2025 onwards (which do not claim priority back to an earlier date) and which have been opposed on the basis of comparable UK trade marks, applicants may request proof of use for a period of time that does not encompass EU use.
Is action required?
Where comparable UK trade marks have not been used, rights holders are encouraged to use their marks in the UK as soon as possible but only if use is genuine and commercially relevant. However, it would be down to the facts of the case (including the relevant market, any reasons for non-use, timing of use preparations, and knowledge of an impending revocation action) as to whether a few months of UK use would be sufficient to prove genuine use in a revocation action filed early next year.
Conversely, those with a business interest in a mark identical/similar to a comparable UK trade mark may wish to conduct investigations into the extent of use of the comparable UK trade mark before the end of 2025, and consider whether to file non-use revocation actions in early 2026.
When conducting clearance searches and filing new applications in the UK, the risks associated with comparable UK trade marks that have not been used in the UK will continue to reduce this year.
Please contact your usual D Young & Co advisor if you have any queries.
