Three Mathys & Squire Partners, Anna Gregson, Dani Kramer, and Martin MacLean, have been recognised in the 2026 edition of IAM Strategy 300 Global Leaders.

The guide acknowledges those that have showcased their strategic expertise in IP, which has been recognised by clients and colleagues across a range of sectors. Those that have been selected to feature in the prestigious directory have earnt their place through their consistently exceptional work and industry knowledge.

IAM says: Anna Gregson is a recognised leader for strategic IP advisory, leveraging her deep technical expertise in biotechnology to deliver specialised guidance across diverse sectors, including plant biotechnology and diagnostics. Her approach ensures that clients’ IP portfolios are not only technically sound but also commercially resilient.

Read Anna’s full interview here.

IAM says: Dani Kramer is a seasoned expert in internet television, software, and AI, with specialised knowledge in semiconductor devices and communication technologies. His career includes securing key patents in the internet television space and managing a portfolio of standard-essential HEVC MPEG patents, underscoring his impactful contributions to this field.

Read Dani’s full interview here.

IAM says: Martin MacLean is a distinguished legal practitioner with a robust background in biotechnology and intellectual property. With over 100 EPO hearings under his belt and a remarkable success rate of approximately 90%, he excels in areas such as protein therapeutics, antibodies, and vaccines.

Read Martin’s full interview here.

We would like to express our thanks to every client, contact, and peer who dedicated their time to engage in the research process. 

The full 2026 edition of the guide is available here.

Partner Samantha Moodie and Associate Clare Pratt have been featured in Life Sciences IP Review and Aesthetic Medicine providing commentary on the increased use of biotherapeutic molecules in the cosmetics industry, following from their own two-part article series.

In the article, they provide insights into the number of international patent applications for ‘bio-cosmetic’ products from 2020 to 2024, highlighting this growing trend and the close relationship between innovation and intellectual property.

They also share expert guidance on how best to utilise IP in this increasingly competitive industry, including best practice advice on drafting ‘use’ claims for cosmetics containing biotherapeutic molecules.

Read the first and second instalments of their related article series titled ‘The Line Between Beauty and Therapy’ in the relevant links.

Read the extended press release below.

Patent applications for ‘bio-cosmetic’ products have doubled to 12,130 in 2024 from 6025 in 2020, says leading intellectual property law firm Mathys & Squire. Bio-cosmetics are a rapidly growing market of consumer cosmetic products containing biological molecules that promote tissue regeneration and repair.

The number of bio-cosmetic applications also grew 9% to 12,130 from 11,130 last year.

Biological molecules, previously used in complex medical procedures, are increasingly finding novel and unique applications in cosmetics aimed at consumers. Examples include:

• The use of stem cell extracts in high-end anti-aging, scar reduction and hair restoration products
• DNA repair enzymes, including genome-editing enzymes, used to correct UV damage in skin cells
• Stimulating collagen production in the body to delay signs of aging
• Exosomes carrying bioactive cargo such as proteins, peptides, lipids, RNA, and DNA used to restore skin volume, rejuvenate the skin and reduce wrinkles.
• Polynucleotides (long chains of nucleotides derived from DNA or RNA) used in high-end cosmetics to promote tissue repair, increase hydration, and improve skin elasticity.

Samantha Moodie, partner at Mathys & Squire, says, “These innovations were previously developed for use in complex medical procedures. However, innovation in the cosmetics industry has begun to use treatments which harness the body’s own biological pathways to boost skin repair and regeneration.”’

“Carrying out research and development in the cosmetics industry can be costly, especially when developing cutting-edge technologies. Patents play a crucial role in helping companies recover these investments by protecting their innovations – as well as helping firms maintain their competitive advantage.”

“The strong uptick in patent fillings shows that cosmetic companies are increasingly looking to the patent system to safeguard their inventions.”

The use of biological molecules  in cosmetic applications are a “grey area” between traditional medical and cosmetic uses – careful patent drafting is required to avoid patent law exclusions.

Mathys & Squire add that careful drafting of patent applications, particularly the claims, is required when covering bio-cosmetic technology that often straddles the line between medical and cosmetic applications.

Samantha Moodie says, “Often cosmetic companies have to rely on patent applications that cover a new and innovative use of an already known biological molecule for cosmetic treatment.”

“Uses that have a medical or therapeutic effect are considered unpatentable by many patent offices (such as the European patent office), whereas purely cosmetic uses are allowable.”

“This means that cosmetic companies need to carefully consider the information and data provided in their patent applications as well as the precise language in their cosmetic use claims to avoid unintentionally falling within the scope of patent law that excludes patents for therapeutic or medical uses.**”

Mathys & Squire recommend that companies seeking to protect a new and innovative cosmetic use of a bio-cosmetic product should:

• use clear language to define the “cosmetic” and “non-therapeutic” effects of the product so as to avoid covering any unintended therapeutic or medical applications;
• avoid including statements in the description that relate to or describe any alleged therapeutic benefit of the cosmetic molecule; and
• define the intended user of the bio-cosmetic product as a “healthy individual” to avoid encompassing medical treatment of an unhealthy or sick ‘patient’.

Samantha Moodie adds that, “In some circumstances, it may even be possible to cover cosmetic and therapeutic applications in the same application when a bio-cosmetic product has distinguishable cosmetic and therapeutic effects.”

“In this scenario, a clear definition of the diseases that can be treated should be included alongside data that demonstrates the intended therapeutic effect. In addition, user groups relevant for the cosmetic use and separate data demonstrating the cosmetic effect should also be included.”

*Containing biological molecules such as stem cell extracts, exosomes, polynucleotides, collagen and endonucleases 

**Article 53(c) of the European Patent Convention states that patents cannot be granted for methods treating the animal or human body by surgery or therapy, or for methods of diagnosis practiced on the animal or human body.

Head of Trade Marks and Partner Claire Breheny has recently been featured in Law360 following the latest Court of Appeal decision between Adidas and Thom Browne in, ‘Adidas Ruling Offers A Warning For Brands On Position Marks’.

The IP dispute involves the sportswear brand and fashion designer brand Thom Browne, who had already brought Adidas to court in 2021 regarding the IP protection of their three stripe design. In the latest edition of the case, the Court of Appeal referenced EU case law to demonstrate that Adidas were not protecting a ‘single sign’, and consequently did not uphold their arguments.

In her commentary, Claire highlights the importance of detail when applying for, and managing, position marks, as evidenced through the case. The example also shows how the court will not overlook ambiguity, and can be treated as a lesson to those considering such IP protection.

To read the full article click here.

As this year’s Nobel laureate Omar Yaghi said, “science is the greatest equalising force in the world.” Yet many communities still face disparities in health, education, connectivity, and economic opportunity. STEM can help close these gaps through robust digital communications that keep people connected and enable rapid relief, voting technologies that make participation easier to trust, cleaner energy systems that use resources more efficiently, interactive tools that enrich learning and public spaces, and accessible health technologies that improve everyday communication and quality of life. With the above in mind, it is inspiring to spotlight black innovators whose patented ideas are already turning this promise of STEM into everyday progress.

Black History Month is as good a time as any to honour and celebrate some of the technical contributions of black people working in STEM to the world we live in, so in this article I explore some modern-day technologies developed by black people solving problems at the core of how we call, vote, hear and play.

Dr. Marian R. Croak

The telephone may have slain distance, but the internet now carries the burden of keeping us reliably connected, and Dr. Marian R. Croak’s work is central to that reliability. An important Voice over Internet Protocol invention, covered by patent US 7,599,359, addresses end-to-end performance monitoring in packet networks to keep calls intelligible under real-world conditions. Croak also helped facilitate small-donor philanthropy at scale with US 7,715,368 on text-to-donate, a mechanism that proved its value during disaster relief efforts in 2010. Taken together with a substantial wider portfolio, these patents form part of the infrastructure that underpins remote work, telehealth, and everyday family calls. [1], [2]

Dr. Lonnie G. Johnson

Dr. Lonnie G. Johnson’s inventive arc spans play and power. The Super Soaker (see US 5,074,437) redefined a consumer category through elegant pressure management. More recently, his Johnson Thermo-Electrochemical Converter (JTEC) filings, for example US 10,522,862, US 11,239,513, and US 11,799,116, relate to solid-state architectures that convert heat directly into electricity via membrane-electrode assemblies. The proposition is straightforward but significant: fewer moving parts, higher potential efficiency, and a route to harvesting industrial waste heat that could materially improve energy productivity. [3]

Lanny S. Smoot

In themed environments, the best engineering vanishes into the experience. Lanny S. Smoot’s portfolio exemplifies that principle. His retractable, internally illuminated“lightsabre” (US 10,065,127) pairs clever mechanics with controlled optics to create an effect that is both theatrical and robust. Across more than a hundred patents, Smoot’s work extends to sensing and interactive systems that allow venues to modulate content in response to guest behaviour, technology with clear applications beyond entertainment, including education and public exhibitions. [4]

Dr. Juan E. Gilbert

Trust in elections is built on processes that are easy to use and easy to audit. Juan E. Gilbert’s recent patents, US 11,334,295 for a transparent interactive interface for ballot marking and US 11,036,442 for a transparent interactive printing interface, are designed to make voter intent visible and verifiable at the point of selection. By allowing users to see exactly what is being printed as choices are made, these systems aim to reduce cognitive load, particularly for voters with disabilities, while strengthening paper-based audit trails. [5]

Prof. Fred McBagonluri

For custom hearing aids, small improvements in modelling and manufacture result in large gains in everyday usability. Prof. Fred McBagonluri’s co-invented filings, US 8,096,383 for tapered vents in ultra-small in-ear devices, US 8,135,153 for automatic wax-guard modelling, US 8,224,094 for left and right side detection of 3D ear impressions, and US 7,979,244 for aperture detection in hearing-aid shells, target pain points that historically caused feedback and user discomfort. The outcome is faster production, better fit, and more consistent acoustic performance. [6]

Summary

It is no secret that black people are underrepresented in STEM, which is why it is especially meaningful to me, as a black person with a STEM background, to see black inventors creating tools that work towards solving the problems above. As a patent attorney, it is even more meaningful to me to see those solutions protected by patents, because that recognition helps turn ideas into scalable innovations, attracts investment, and secures credit for the inventors shaping our future.

References

[1] Marian R. Croak – Wikipedia: https://en.wikipedia.org/wiki/Marian_Croak_
[2] Brooks Kushman profile (Croak & Jackson): https://www.brookskushman.com/insights/black-history-month-dr-marian-croak-1955-and-dr-shirley-ann-jackson-1946/
[3] Lonnie G. Johnson – Wikipedia: https://en.wikipedia.org/wiki/Lonnie_Johnson_%28inventor%29?
[4] Black Engineer profile (Lanny S. Smoot): https://www.blackengineer.com/imported_wordpress/1987-beya-winner-receives-100th-career-patent/
[5] Juan E. Gilbert – Wikipedia: https://en.wikipedia.org/wiki/Juan_E._Gilbert
[6] Fred McBagonluri – Wikipedia: https://en.wikipedia.org/wiki/Fred_McBagonluri?

We are delighted to announce that Partner Chris Hamer has been featured in the 2026 edition of IAM Global Leaders.

IAM Global Leaders 2026 celebrates some of the finest patent professionals in intellectual property, highlighting those that demonstrate an exceptional understanding of their specialism and the wider IP landscape, as well as consistent, high-quality work for their clients.

Those that have been chosen as IAM Global Leaders were featured in the IAM Patent 1000 2025 directory earlier this year as Recommended Individuals, in which Mathys & Squire were also ranked in the Gold tier as a firm.

IAM writes: “Chris Hamer is a diligent attorney, known for his timely and detailed advice. He has impressive expertise and know-how in the field, and he has navigated numerous challenging patent filings, ensuring crucial protection is achieved. His strategic approach is highly valued, empowering companies to make informed business decisions.”

To mark his recognition in the directory, Chris has featured in an online interview with IAM in which he shares his expert advice on IP strategy, patent portfolios, oppositions and appeals, and emerging technology within the industry.

Click here to read the full interview on the IAM website.

The Nobel Prizes are some of the most prestigious awards available to creators, leaders and scientists in the world. Awarded by the Nobel Foundation, the prizes commend those that have achieved greatness in the six available categories: Physics, Chemistry, Physiology or Medicine, Literature, Economic Sciences, and Peace.

In this article, Associates Max Ziemann, Clare Pratt and Greg Jones examine the innovation behind the laureates that have been granted the Nobel Prizes of this year, discussing the award-winning innovation that have taken home the prizes in their specialist areas.

Nobel Prize in Chemistry by Max Ziemann

The Royal Swedish Academy of Sciences has awarded the 2025 Nobel Prize in the field of Chemistry to Susumu Kitagawa, Richard Robson, and Omar M. Yaghi for the development of metal–organic frameworks

Metal-Organic Frameworks (MOFs) are a type of macromolecule having an extended structure made of metal ions and organic linkers in a repeating pattern. In many cases, MOFs contain large pores within their molecular structures, which are able to take part in ‘host–guest chemistry’, i.e. holding smaller molecules in place within the pores.

Richard Robson first modelled MOF-like structures with metal ions and organic building blocks in 1974 during his time at the University of Melbourne. He considered the potential in linking different types of molecules together to form a diamond-like lattice structure, instead of using individual atoms. In 1989 Robson designed a tetrahedral nitrile containing ligand (4′,4′′,4′′′,4′′′′ tetracyanotetraphenylmethane) which was able to form a co-ordination complex with copper in a repeating tetrahedral lattice providing large pores between the copper centres. Robson theorised that the pores within such structures could be used to catalyse chemical reactions. However, these early MOFs lacked the chemical stability for such a use.

In 1997 Susumu Kitagawa designed a three-dimensional MOF using cobalt, nickel, or zinc in combination with 4,4’-bipyridine to form an MOF structure intersected by open channels and providing spaces that could be filled with gas (methane, nitrogen, oxygen, etc) whilst retaining stability. Kitagawa also pioneered flexible MOFs which can change shape, for example when they are filled or emptied. Flexibility of the MOF structure can lead to significant changes in their physical and chemical properties. This has a major impact on the adsorption and desorption of guest molecules from pores within the MOF which allows for fine-tuned adsorption and desorption in response to external stimuli.

Omar M. Yaghi was responsible for coining the term MOF in 1992. In 1995 Yaghi achieved crystallisation of metal-organic structures using metal ions and charged dicarboxylate linkers, as well as removal of guest molecules to provide a highly stable and porous structure. Yaghi’s lab first synthesised ‘MOF-5’, a MOF of the formula Zn₄O(BDC)₃ where BDC^2- is terephthalic acid.  MOF-5 is notable for exhibiting one of the highest surface area to volume ratios of any MOF, at 2200 m²/cm³, which is approximately a football pitch worth of area within the size of a sugar cube. Various analogues of MOF-5 have since been developed with differing dicarboxylate linkers in order to fine tune the dimensions of the cavities.

This combination of properties gives MOFs an enormous potential for gas storage within the pores of the MOF structure. Yaghi’s group have even designed MOFs that are capable of harvesting atmospheric water from desert air simply by trapping water molecules in specialised pores. Flexible properties and enormous surface area to volume ratios allow for very large volumes of gas to be stored and released at will within an MOF structure. MOFs can also be tailored for gas separation, such as carbon capture applications. MOFs therefore have a huge potential in environmentally beneficial technology including both capture and storage of greenhouse gasses (CO₂, methane, NOx, etc) as well as storage and controlled release of alternative fuels such as hydrogen.

Kitagawa, Robson, and Yaghi have made considerable scientific contributions to the field of chemistry, which will no doubt continue being developed for key climate change mitigation strategies including absorption of greenhouse gases and providing water security.

Nobel Prize in Physiology or Medicine by Clare Pratt

The 2025 Nobel Prize in Physiology or Medicine was awarded to Mary E. Brunkow, Fred Ramsdell, and Shimon Sakaguchi for their groundbreaking discoveries concerning peripheral immune tolerance, the mechanisms by which our immune system spares our own tissues while still defending against pathogens.

A major challenge for the immune system, which encounters countless microbes, bacteria, viruses, and other threats every day, is to ensure that immune responses do not mistakenly target the body’s own cells. When this regulation fails and the immune system attacks self-tissues, autoimmune disease results. The prevailing understanding had been that an immunological process called central immune tolerance, the elimination of any developing T or B lymphocytes that are autoreactive in the thymus, was primarily responsible for preventing such reactions. However, the laureates are recognised this year for uncovering the complementary and crucial role of peripheral immune tolerance.

In the 1990s, Sakaguchi carried out experiments in mice that had their thymuses removed. These mice developed severe autoimmune disease, suggesting that mechanisms beyond thymic deletion were needed to maintain tolerance. Further research led him to identify a subset of CD4⁺ T cells expressing CD25 (the IL-2 receptor α-chain), classed as regulatory T cells (Tregs), which act as a “brake” on the immune response and protect the body from autoimmune attack.

This was followed by work from Brunkow and Ramsdell who, while studying a mouse strain known as scurfy, discovered a mutation in the Foxp3 gene that caused severe autoimmune disease. In 2001, they demonstrated that mutations in the human ortholog, FOXP3, cause IPEX syndrome (Immune dysregulation, Polyendocrinopathy, Enteropathy, X-linked).

Two years later, Sakaguchi built on these findings, showing that FOXP3 is a master regulator of the development and function of regulatory T cells, and that these cells regulate immune activity to ensure the body’s defences do not turn against itself.

Their discoveries opened a new field in immunology, peripheral tolerance, and have become vital to the development of new medical treatments. These insights are informing therapies for autoimmune diseases and organ transplantation, where modulating regulatory T cells may improve graft acceptance and reduce the need for long-term immunosuppression. They have also paved the way for novel approaches in autoimmunity and cancer immunotherapy, where targeting regulatory T cells is an area of active clinical research.

The Nobel Prize in Physics by Greg Jones

Awarded to John Clarke, Michel H. Devoret and John M. Martinis for the “discovery of macroscopic quantum mechanical tunnelling and energy quantisation in an electric circuit.”

Those that are familiar with quantum technology and the associated developments of quantum sensors, computers and cryptography, might already be aware of the pivotal work of Martinis, Devoret and Clarke in this field. Their contributions have been fundamental in helping to bridge the gap between theory and the practical applications of quantum mechanics.

Through experiments performed in  1984 and 1985at the University of California, the future Nobel Laureates investigated the whether quantum mechanical effects could only be demonstrated at a microscopic scale with the examination of only a small number of particles. At that time, a common belief was that quantum mechanics was limited to a much smaller scale, and could not be visibly demonstrated in larger, macroscopic objects.

Using a superconducting electrical circuit (an electrical circuit which has no electrical resistance), the trio used an approximately 1cm² silicon chip containing a Josephson junction (a thin layer of non-conductive material between the superconductors within the circuit) to explore the outcome when a current passed through the circuit. The measurement of the voltage across the Josephson junction provided direct evidence that quantum mechanics could be an influence in macroscopic systems, by showing that quantum tunnelling had occurred through the Josephson junction, a phenomenon that is impossible through a classical ‘non-quantum’ model  of physics.

Their research not only expanded the understanding of quantum mechanics but also demonstrated the potential for practical applications at a larger scale.

We are delighted to be sponsoring the MassChallenge UK Awards 2025 on Thursday 23 October, an event that will mark the closure of their reputable Accelerator Programme.

The evening will look to celebrate the 40 startups and small businesses that have been supported by the programme this year, which has enabled the participants to gain access to C-Level connections, office spaces in The Royal Docks, invaluable mentoring, and much more.

The impressive finalists this year include startups from a wide range of sectors such as AI, health tech, and sustainable food. Each of the businesses have already demonstrated remarkable potential, not only through their innovative ideas, but also through their ambition to create meaningful impact within their relevant industries.

MassChallenge UK will be awarding a total of £20k in cash prizes throughout the event, reflecting their commitment to supporting the startup ecosytem in a way that is significant and meaningful. In this way, the awards are a great opportunity for attendees to gain both recognition and valuable financial support.

Partners Paul Cozens, Andrea McShane, Max Thoma, and Managing Associate Adam Gilbertson will all be attending the ceremony and presenting awards, recognising the achievements of some of the standout finalists.

As a partner of MassChallenge UK, we strongly look forward to celebrating the successes of the growing startups throughout the evening, and we are excited to see what the future holds for each of them as they continue to grow.

To sign up for the event, click the link here.

Find out more about MassChallenge UK here.

To mark Black History Month, we were delighted to welcome Romain Muhammad, CEO of Diversify World, to give an online talk to our Mathys & Squire team.

Romain Muhammad is a public speaker, DEI expert, and recruitment specialist who has over 15 years of experience in corporate leadership. His mission is to encourage more diverse and inclusive work places, which can often be achieved through increased awareness and education. He focuses on topics such as systemic inequality, privilege and anti-racism, which contributes to improved work environments and helps to make meaningful change.

He is the founder and CEO of Diversify World, a company that looks to support underrepresented communities within the workforce through their services of recruitment, consulting, learning and development, and research. Through the Diversify World, Romain works to help organisations ensure they are maintaining a fair and supportive working culture and ensure that talented candidates from marginalised communities do not face barriers to employment.

His impressive collection of awards includes being named in the Emerald Network Top 100 Inspiring Next Generation Muslims 2024 list, as well as being the Top 50 Most Influential Muslim in Europe Winner 2023. He has also been awarded an Aziz Foundation Scholarship and an Honorary fellowship at the Royal Historical society, acting as further evidence to his great work and knowledge. He has also acted as a representative for marginalised communities on multiple occasions and holds a widely recognised reputation.

In his talk, ‘Redefining Narratives’, Romain spoke about the misconceptions regarding Black history and identity, specifically touching on how the UK media and education system has misinformed many of us on the reality of Britain’s history. Through numerous historical examples, such as artefacts and artworks, Romain demonstrated how diversity in Britain was evident centuries before we were taught, directly challenging these mainstream perceptions. It was a truly insightful talk, and our staff were very much appreciative for his time and learnt a lot from the session.

Click here to read more about our Diversity and Inclusion policies.

We are delighted to announce that we have maintained our ranking in the Chambers and Partners 2026 guide, marking our 15th year being recognised in the directory.

The 2026 edition of the Chambers and Partners UK Legal Guide highlights some of the most highly regarded law firms and legal professionals across the country. Each year, the guide is the result of an in-depth research process, during which analysts conduct investigations and hold one-on-one interviews to gather comprehensive insights into various areas of law.

The guide included the following testimonials for Mathys & Squire:

“The team at Mathys & Squire have deep scientific understanding of the biotech sector. They operate as true strategic partners who grasp the scientific nuances of our innovations.”

“Mathys & Squire have people who have a strong grasp of the engineering aspects of our product.”

“M&S have consistently provided the highest quality service and have worked extremely closely with all levels of our organisation.”

Amongst the team, Partner Martin Maclean has also been ranked as a Band 1 Patent Attorney, with the following testimonials:

“Martin always goes above and beyond and provides the best advice.”

“His client service is consistently outstanding. He is responsive, thoughtful and highly attuned to the fast-paced and often unpredictable nature of startup life.”

For more information on the Mathys & Squire rankings, visit the Chambers and Partners website here.

Partner Harry Rowe and Trainee Trade Mark Attorney Tanya Rahman have been featured in Practical Law with their article, ‘Trade mark genuine use: “use it or lose it” Brexit deadline’.

In the article, they highlight the revocation risk for UK and EU trade marks following the upcoming deadline of 31 December 2025, providing vital guidance for reviewing trade mark portfolios, collating evidence of genuine use of trade mark registrations, to mitigate the risk of loss of rights.

This article first appeared in the October 2025 edition of PLC Magazine.

Trade mark genuine use: “use it or lose it” Brexit deadline

Both UK trade marks and EU trade marks (EUTMs) become vulnerable to applications for revocation on the ground of non-use unless they have been put to genuine use for a continuous period of five years in the territory in which they were registered. Before Brexit, this requirement would be fulfilled for EUTMs by their use anywhere in the EU. After 11pm on 31 December 2020, known as IP completion day, any use in the UK of a EUTM, or a UK trade mark that was automatically “cloned” from an EUTM, does not count as use in the EU and, equally, any use in the EU does not count as use in the UK.

This situation has created an imminent revocation risk for trade mark owners, as the five-year period from IP completion day will conclude at 11pm on 31 December 2025. This will leave both UK- and EU-based businesses at risk of not being able to enforce their trade mark rights against third parties that use identical or similar marks in their relevant territories. It is imperative that businesses review their registered trade mark portfolios in advance of this upcoming deadline to mitigate the risk of revocation.

Genuine use

There are typically two instances in which a trade mark owner may need to provide evidence of genuine use of its trade mark registration:

• In response to a revocation action on the ground of non-use brought under section 46(1)(a) or 46(1)(b) of the Trade Marks Act 1994 (TMA), or Article 58(1)(a) of the EU Trade Mark Regulation (2017/1001/EU) (EUTM Regulation). This could be as a counterclaim to infringement.
• In response to a request under section 6A of the TMA or Article 47(2) of the EUTM Regulation for proof of use of a mark that was registered five years before the filing or priority date of an application that is being opposed on the basis of that earlier registration.

In order to constitute genuine use, the trade mark must have been used in the course of trade in respect of the specific goods or services covered by the registration.

Territories. The trade mark must have been used in a real, commercial way, in the territory in which the mark is registered; that is, within the UK for UK registrations and within the EU for EU registrations. It is not sufficient to use the trade mark in a minimal or token manner to seek to circumvent the risk of revocation.

For EUTM registrations, it is not necessary to demonstrate genuine use in every individual EU member state. What matters is that the use is sufficient to establish or maintain a real commercial presence within the relevant market. Therefore, commercially meaningful use in a single member state could be sufficient to qualify as genuine use across the entire EU.

Evidence of commercial use. There must be a clear and consistent chain of evidence demonstrating actual commercial use of the trade mark in connection with the specific goods or services covered by the registration (see box “Documenting genuine use”). However, genuine use is fact-specific and depends on the nature of the goods or services and the relevant market. In some cases, particularly where the goods or services are specialised, a short period of use or limited sales numbers may still constitute genuine use. The extent to which the mark has been used will be considered by reference to the market size of the relevant goods and services to determine whether that use was sufficient for the registrant to have acquired a market share.

Burden of proof. Where non-use is alleged, the burden is on the trade mark owner to demonstrate either genuine use of the trade mark or valid reasons for its non-use. These reasons must be due to exceptional circumstances that are beyond the owner’s control, such as delays caused by regulatory issues.

Variation of form. To best demonstrate the genuine use of a trade mark, it is recommended that the mark is used in the exact form in which it is registered. However, as brands evolve, updates to the visual presentation of a mark are common. Minor changes, such as modernising the design or refreshing the logo, may still be acceptable as long as they do not alter the overall distinctive character of the original registered trade mark. These variations can still constitute genuine use provided that the essential identity of the trade mark remains intact.

Earlier marks. The analysis of genuine use extends to all goods or services that are relied on in proceedings or are targeted by a revocation action. However, both the UK Intellectual Property Office and the EU Intellectual Property Office recognise that where a likelihood of confusion, or the continued validity of the registration, can be established based on only some of the earlier protected goods or services, it may be unnecessary to assess use across the entire specifications.

Subcategories. In practice, if genuine use is demonstrated for goods or services that are clearly identical or similar to those covered by the contested application, or where the revocation action only targets part of the specification, this may be sufficient to support the opposition or maintain the registration. However, evidence of use in respect of only a subcategory of a broader term, such as use in respect of video game software when the term “computer software” is covered, would likely lead to the registration only being considered to have been used for that particular subcategory.

Authorised third-party use. Use of the registered trade mark by a third party, with the owner’s consent, is deemed to constitute use by the owner. Importantly, this consent must have been given before the use took place. A common example of authorised third-party use is that made by licensees. Similarly, use by companies that are economically connected to the trade mark owner, such as subsidiaries or affiliates, may also qualify as genuine use, as long as the use is authorised. Where goods are manufactured by, or under the control of, the trade mark owner and then placed on the market by distributors, whether at wholesale or retail level, this is also generally recognised as genuine use of the registered mark.

Documenting genuine use

Failure to adequately document genuine use can leave registrations vulnerable to revocation. However, proving genuine use of a trade mark presents practical challenges, especially in gathering and organising sufficient evidence to satisfy legal requirements. Trade mark owners should:

• Compile a range of documents that demonstrate actual commercial and genuine use of the mark in connection with the registered goods or services. Suitable evidence may include sales invoices, marketing materials, packaging, labels, product catalogues and photographs showing the mark in use. Providing data on sales volume, turnover and market share further supports the commercial significance of the mark’s use, helping to establish that the use is genuine and not merely token.
• Maintain clear and consistent records over time. Trade mark owners should proactively gather and preserve robust evidence as the trade mark is used, because opposition or revocation deadlines often allow only a short timeframe to collect and file supporting documents, making last-minute evidence collection difficult.
• Analyse whether a trade mark has been used only in relation to some of the goods or services covered by the registration. If this is the case, the use of the trade mark may be insufficient to maintain the registration for the remaining goods or services, potentially leaving those parts of the registration at risk.

Post-Brexit cloning
Before Brexit, the scope of protection of an EUTM registration extended to the (then) 28 member states, including the UK. IP completion day marked the end of the 11-month Brexit transition period during which the UK remained subject to EU regulations. After IP completion day, EUTM registrations no longer offered protection in the UK. However, Article 54 of the EU-UK Withdrawal Agreement allowed for EUTMs to become “comparable” UK trade marks.

To address this change, the Trade Marks (Amendment etc) (EU Exit) Regulations 2019 (SI 2019/269) inserted a new section 52A and paragraph 1 of Schedule 2A into the TMA, which provided that EUTMs registered before 1 January 2021 would be treated as comparable UK registered trade marks from IP completion day; that is, they would be automatically “cloned”. These comparable UK trade marks maintained the same filing date, priority and seniority as the original EUTM registration, thereby preserving existing rights in the UK without requiring re-examination or refiling.

As a result, trade mark protection became split between the two jurisdictions, requiring efforts to separately maintain enforceable rights.

Genuine use after Brexit
Before Brexit, using an EUTM in the UK generally constituted genuine use of the EU registration. However, since IP completion day, the use of a comparable UK trade mark in the EU no longer qualifies as use of the UK registration. Likewise, only use within the EU now qualifies as genuine use of an EU registration. This means that:

• Comparable UK trade marks may face revocation after 31 December 2025 if they have not been genuinely used in the UK for the relevant goods or services over the preceding five years.
• Owners of comparable UK trade marks cannot rely on use within the EU in opposition proceedings filed after 31 December 2025; proof of use must relate solely to the UK.

Actions for businesses
Trade mark owners should review their trade mark portfolios ahead of the 31 December 2025 deadline and assess whether the use of their comparable UK trade marks and EUTMs still aligns with their current business strategy, and whether that use is likely to be considered to have been genuine.

It is essential that businesses carefully evaluate whether retaining the comparable UK registrations or EUTMs continues to be both necessary and suitable for their business, which involves assessing:

• The trade mark’s ongoing relevance to the brand strategy.
• The trade mark’s role in protecting key products or services.
• Whether the costs associated with maintaining the registration outweigh the benefits that it provides.

By conducting this review, owners can make informed decisions to optimise their trade mark portfolios. Where trade marks have not been used for certain goods or services in the UK or the EU, or if a business has rebranded and the trade mark is no longer used in a way that corresponds to the original registration, particularly where the change affects the distinctive character of the original mark, it may be advisable to file new trade mark applications. However, these filings should be managed carefully to avoid being perceived as “evergreening”, that is, submitted in bad faith solely to bypass the requirement to prove genuine use.