As 31 December 2025 approaches, so too does a significant turning point in the post-Brexit trade mark landscape. This date marks five years since the United Kingdom’s departure from the European Union and brings into focus some important rules regarding the validity and enforceability of EUTMs and UK clone registrations.
What are UK clone registrations?
On 31 December 2020, the Brexit transition period ended, and every EUTM that was registered at that date was automatically duplicated into a corresponding UK trade mark registration. These are commonly referred to as clone registrations. UK clone registrations mirror their EUTM counterparts exactly, sharing the same filing date, registration date, and specification of goods and services. However, each clone functions as an independent UK trade mark registration.
Genuine Use During the Transitional Period
Up until this point, use of a mark in the EU prior to 31 December 2020 could be relied upon to support the validity of the UK clone registration. In practical terms, this meant that pre-2021 use in EU Member States was treated as if it were use of the UK clone itself. The same principle applied in reverse, use of a mark in the UK prior to 31 December 2020 could also be relied upon for the purposes of maintaining and enforcing the corresponding EUTM.
However, from 1 January 2026, the UK and EU trade mark systems stand completely separate for the purposes of genuine use and reputation. After 1 January 2026, owners must be able to demonstrate genuine use in the United Kingdom during the preceding five years. Any use that took place only in EU Member States, even extensive use, cannot be relied upon to maintain or enforce a UK clone. The same principle applies to use of EUTMs, use of the mark in the UK after 31 December 2020 cannot be treated as EU use, and will not prevent a non-use challenge before the EUIPO or EU courts.
Practical Considerations for Brand Owners
It is important that brand owners take note of this transition and prepare for the practical risks they may now encounter. If a UK clone registration has not been used in the United Kingdom since 1 January 2021, it will become vulnerable to total or partial revocation for non-use and may no longer be enforceable in opposition or invalidity proceedings before the UKIPO. Similarly, if a mark has been used only in the UK since 1 January 2021, the corresponding EUTM may face cancellation for non-use before the EUIPO.
Taking this into consideration, we would encourage brand owners to take the following steps prior to 1 January 2026;
1. Audit your trade mark portfolio: Identify all cloned UK registrations in your trade mark portfolio, and determine where the mark has been in use over the past 5 years.
2. Assess your use: If a mark has not been used in the UK or the EU, consider whether continued protection is required in that jurisdiction
3. Commence use: If you intend to maintain your trade mark registration, commence use of the mark in the relevant territory as soon as possible.
4. Consider filing new trade mark registrations: If your registration will become vulnerable to a non-use challenge, filing a new trade mark application may be the most effective way to ensure there is no gap in your protection.
Conclusion
The period during which pre-2021 use could be recognised across borders is coming to an end, and use in the UK and EU must now be treated as completely distinct for the purposes of maintaining and enforcing rights. Portfolio review and proactive planning will be essential for brand owners who wish to preserve their trade mark rights in both the United Kingdom and the European Union.
If you need assistance with IP strategy, trade mark portfolio management, or protecting your rights across the UK and EU, please contact FRKelly.
