Our Trade Marks team share their advice on managing your trade mark portfolio to avoid revocation after the changing regulations post-Brexit.
Following Brexit, EU registrations ceased to protect trade marks in the UK after “IP Completion Day” on 31 December 2020, the end of the 11-month period after 31 January 2020 during which the UK continued to be subject to EU rules. To address this, the UKIPO, under the Withdrawal Agreement Act, automatically created comparable (cloned) UK registrations for all EU trade marks registered before 1 January 2021.
This created a split in protection across jurisdictions, with a need for duplicated efforts to maintain enforceable trade mark rights. In the UK, a registered trade mark must be used in the UK within 5 years from the date of registration in respect of the goods/services it covers. An EU trade mark must be used in the EU within 5 years of its registration.
Scenarios in which a trade mark owner may need to prove use in the UK/EU:
- In response to a revocation action on the ground of non-use; and
- In response to a request for proof of use of a mark registered 5 years prior to the filing (or priority) date of an application being opposed on the basis of that earlier registration.
Before Brexit, use in the UK of a mark registered in the EU would typically constitute genuine use of an EU registration. Similarly, use in the EU before IP Completion Day is relevant when assessing use of a UK cloned right.
However, following Brexit, any use of a UK cloned mark in the EU after 31 December 2020 no longer counts as use of the UK registration. Similarly, only use of a mark within the EU (i.e. not the UK) would constitute genuine use of an EU registration for that mark.
As such, cloned UK registrations created due to Brexit may be at risk of revocation after 31 December 2025 if they have not been used prior to this date in the UK for the goods/services covered by the registration. Moreover, owners of UK cloned registrations will no longer be able to rely on use of the mark in the EU when proving use of those registrations in opposition proceedings directed to UK applications filed after 31 December 2025.
We therefore recommend that clients review their UK and EU trade mark portfolios to determine whether their registered marks have been used in the UK or EU, respectively.
How we can assist
Portfolio Review:
We can assess your UK and EU trade mark portfolios, and discuss with you the extent of use in relevant jurisdictions for all registered goods and services.
New Trade Mark Applications:
We can advise on the benefit of filing new trade mark applications where a registered mark has not been used for specific goods or services in either the UK or EU. Such advice would be provided on the basis that trade mark owners should mitigate the risk of new applications being considered to have been filed for the purposes of “evergreening”, i.e. filed for the purpose of circumventing the requirement for proving use of registrations. (See our article on Hasbro’s trade mark filing strategy which was ruled as an abuse of law: “No Get out of Jail Free Card for Hasbro.”).
Visit our dedicated trade mark page here to learn more and meet our team.
