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.
