Now is the time for owners of "Brexit Clone" UK Trade Mark Registrations and EU Trade Mark Registrations to review whether these trade marks are in use and, if so, in which territory. After 31 December 2025, EU use prior to January 2021 will no longer count to support a UK clone registration, and vice versa, meaning registrations could find themselves vulnerable to non-use revocation.
Background & Current Position
When the UK left the EU, the Withdrawal Agreement Act was passed to ensure continuity of trade mark protection in the UK for EU rights holders. As a result, on 1 January 2021 UK "clones" of EU trade mark registrations were automatically created; so-called "comparable rights".
Under the trade mark laws of both the UK and EU, a registration that is older than 5 years from its grant becomes vulnerable to non-use revocation if it has not been used in the relevant territory for the goods/services for which it is registered, in the previous 5-year period.
Given that many Brexit clones corresponded to EUTM registrations that had never been used in the UK, there was a risk of an unjust scenario where these new UK rights would be immediately vulnerable to non-use revocation. To avoid this, the Withdrawal Agreement held that where the relevant 5-year period included a period of time before 1 January 2021, use in the EU (regardless of whether or not such use included in the UK) would count to support the validity of a UK clone. Where the 5-year period included any period of time falling after 1 January 2021, use in the EU (and outside of the UK) was deemed not to count.
The same was true for EUTMs: Use of an EUTM in the UK after 1 January 2021 could no longer constitute use "in the EU" for the purposes of maintaining the rights conferred by an EUTM registration; use of an EUTM in the UK before 1 January 2021 could constitute use "in the EU".
31 December 2025 Deadline
The end of this year will mark the point at which it is no longer possible for a 5-year period to include a period of use before 1 January 2021. After this point any non-use revocation action filed against a Brexit clone can only be defended by showing genuine use in the UK. Use in the EU will no longer be relevant. The converse will be true for EUTMs which will no longer be able to rely upon UK use to maintain a registration if attacked for non-use.
It is therefore highly advisable to conduct a review, well in advance of the year end, of portfolios of both EUTM registrations and Brexit clone registrations and their usage to determine if any will be affected by this deadline.
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