Is it cute or is it terrifying? No toy has ever caused such a divide in opinion. However, no matter what people think, the impact is the same: everyone has been talking about this mischievous-looking creature. The Labubu was officially the viral sensation of 2025.
Where did Labubu come from – and what now?
The origin of Labubu can be traced back to the mind of artist Kasing Lung, born in China and raised in The Netherlands. His illustrated book trilogy “The Monsters”, published in 2015, unveiled a whimsical world, shaped by his Chinese heritage and fascination with Nordic folklore, and brought various eccentric characters to life, including Labubu.
In 2019, Kasing Lung signed an exclusive licensing agreement with Pop Mart, giving the company commercial operation rights and the ability to transform Labubu from a toy to a powerful IP asset.
However, it was not until 7 years later, at the end of 2024, when the peculiar pet really started jumping into people’s shopping bags. Their scarcity is part of their appeal, with people going to great lengths to track them down, queuing for hours and paying hundreds of pounds for the addictive “blind box” experience. Social media is flooded with people flaunting their Labubus and special-edition Labubus are being sold at auctions for over $100,000.
According to Pop Mart’s 2025 Interim Results Announcement, “The Monsters” generated an impressive 4.81 billion yuan (approximately $669.88 million) by 30 June 2025, making it Pop Mart’s most profitable IP.
Pop Mart’s IP strategy
In the toy industry, when products transcend their physical counterparts, becoming distinctive, memorable brands, IP plays a vital role. It allows a story or symbol to become a concrete entity which the owner can safeguard and profit from. With the IP safely in their pocket, Pop Mart was able to spread the Labubu figurines over the globe and watch the money flow in.
Pop Mart displays a robust, multi-layered approach to their IP, encompassing copyright, trade marks, and patents, demonstrating an understanding that design and branding are both highly valuable assets. By 2024, the company held over 1,200 trade marks, 1,600 copyrights and 45 patents.
Pop Mart’s patents mainly cover innovations in product functionality and production techniques, including toy assembly methods, and CNC water transfer printing and related equipment. Design patents, on the other hand, primarily protect the toy’s overall shape, facial expressions, and distinctive visual features such as unique clothing or accessory designs.
After securing its core IP, Pop Mart began taking strong measures against infringers and imitators.
Labubu’s evil twin
It may have seemed like Pop Mart could walk blissfully off into the sunset after hitting the hype sweet spot, but where there is hype, counterfeiters soon follow. The toy industry is a significant victim of the counterfeit market, which in 2022 was valued by the OECD (Organisation for Economic Co-operation and Development) at $464 billion. Whilst the internet allows a product to gain worldwide popularity, carving a path across the globe also makes it easier for fake versions to appear.
In Labubu land, “Lafufu” has become the widespread term used to refer to the counterfeit toys. “Lafufus” have become almost as sought-after as Labubus for various reasons, including their lower price tag, extra, unique features, or even just a wish to go against the mainstream. They have become so popular that Lafufu manufacturers, small factories which are mainly located in the Guangdong and Hebei provinces in China, are also struggling to meet demand. They may seem like silly, affordable toys but do they represent something more sinister?
Counterfeit goods are a threat to brand value and can seriously harm revenue streams. They can even be health risks to consumers, especially when it comes to children’s toys, as they are often poorly made. Not only are they a threat to Pop Mart and their customers, Chinese authorities are also concerned by what the mass of “Lafufus” means for China’s growing reputation as an IP powerhouse. Labubus are an example of China transforming creativity into business opportunity, rivalling other Asian countries with a significant global cultural influence, such as Japan and South Korea, whilst Lafufus undermine the country’s innovation and prevent fair competition.
Nevertheless, Pop Mart is not giving up. They continue to strengthen their efforts in maintaining their unique position in the market, demonstrating the importance of strong IP protection.
Brand enforcement
A key aspect of enforcing the protected status of a brand is carefully monitoring the market so that you are aware if counterfeit goods appear. Pop Mart has implemented identifiers on their products to make genuine Labubus distinguishable from frauds, such as scannable QR codes, serial numbers and unique packaging design.
Once counterfeit goods are identified, it is important to take rapid action to minimise damage to the brand. Pop Mart’s 2024 Annual Report notes that it “identified more than 10 forged authorisation letters, took down the domain names of 5 overseas websites selling infringing products, initiated 3 infringement lawsuits, and successfully intercepted over 1.3 million infringing products at customs, making every effort to safeguard the Company’s intellectual property.”
In 2019, Pop Mart filed an invalidation request with the China National Intellectual Property Administration (CNIPA) to challenge the unauthorised registration of the Labubu design patent. The CNIPA panel declared the entire design patent for the Labubu figure (No. ZL201830002145.4), which had been filed and granted to another party in 2018, invalid. The ruling reaffirmed the company’s originality and legitimate ownership of the character’s IP rights.
IP collaboration
Although the internet frenzy may be tailing off, Pop Mart continues to maximise the potential of its IP by forming strategic partnerships with other brands. For example, on the 18th of September, UNIQLO launched a clothing line featuring the “The Monsters” illustrations. This involves drawing up a licensing agreement so that Pop Mart are remunerated for the third-party use of the Labubu brand, as well as to ensure that the use aligns with Pop Mart’s wishes and there is no misuse of their image.
Holding the copyright to his creation, Kasing Lung profits from licensing deals and has now taken Labubu a step further, partnering with luxury Parisian leather brand MOYNAT to release a collection of Labubu-adorned handbags and leather accessories, which became available on the 11th of October.
Conclusion
Some people may think that Labubus have sent the world crazy, but, although their cuteness remains subjective, there is no doubt that they are an insightful case study on business strategy in a digital world, including the necessity of building and maintaining a robust IP portfolio. When the internet means that an individual’s or business’s creation could go viral overnight, a rigorous strategy for protecting IP, as well as surveillance of third-party use, is crucial.
Pop Mart’s success is no coincidence. Its strong IP framework sets a model for the designer toy industry, ensuring early copyright registration, strategic trademark protection and design rights for distinctive products. A vigilant infringement monitoring system allows the company to respond swiftly to counterfeits through legal and administrative action, safeguarding both brand value and market integrity.
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 BDC2- 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.
An interview with Partner Claire Breheny was recently featured in ‘Growing interest in non-alcoholic beverages opens new opportunities for brands’ by World Trademark Review. Claire provided commentary on how businesses looking to meet the heightened demand for non-alcoholic and low alcohol alternatives must ensure that their intellectual property strategy aligns with their new goals.
The article explores how shifting to non-alcoholic products is likely to have a positive impact for businesses. Firstly, a more extensive product line means a greater number of potential customers and, secondly, product advertising will be less bound by laws on alcohol advertising, making the brand more appealing to licensees. Claire highlights the fact that the market is still evolving and, despite large brands already offering non-alcoholic beverages, there is space for emerging brands to thrive if they position themselves in the right way.
To read the full article click here.
We are honoured to share that Mathys & Squire is a Silver sponsor of the WIPR Trademark and Brand Protection Summit 2025, taking place from the 28th to the 29th of October in San Francisco. Partner Claire Breheny will be attending the event in person.
The World Intellectual Property Review is the principal online publication for professionals in the IP industry, publishing news and guidance on the current issues facing businesses and legal practitioners.
WIPR organises the Trademark and Brand Protection Summit to connect prominent trade mark experts, including both the largest and most innovative brands and leading outside counsel. The event provides a pivotal opportunity to engage with like-minded peers and discover valuable insights into trade mark prosecution and enforcement in light of recent disruption for brand owners, such as AI and domain-related issues.
The program offers expert-led sessions and interactive panels designed to share a wide range of expertise in the latest legislative developments, strategic approaches to safeguarding your brand and how to maintain a competitive edge in an ever-changing global marketplace. On the 28th of October, Head of Trademarks Claire Breheny will be moderating a panel discussion on “Overcoming the Growing Problem of Domain Squatting and Trademark Misuses Online.” Alongside the other speakers, she will be sharing her in-depth knowledge on using innovative tools to detect infringers, and how to combat infringement cost-effectively and quickly.
For more information on the event, visit the website here.
Contact our team
Claire Breheny – Partner | [email protected]
Partners Martin MacLean and Anna Gregson have been featured in ‘Global vaccine patents rise, as data reveals shift in Big Pharma strategy’ in LSIPR, ‘Global vaccine patents up 7% in a year despite US government’s stance’ in Manufacturing Chemist and ‘Vaccine patent applications hit record high, new data reveals’ in Drug Discovery World.
In the articles, Martin and Anna provide commentary on how, despite anti-vaccine rhetoric stemming from parts of the new US administration, the number of vaccine patent applications being filed are still rising steadily after the post-COVID spike, highlighting that traditional vaccine technologies are making way for safer methods following the success of the COVID-19 mRNA vaccine.
Read the extended press release below.
Global vaccine patents applications grew by 7% in the year to June 2025, rising to 1220 from 1135 the previous year, says intellectual property (IP) law firm Mathys & Squire.
Vaccine patent applications increased sharply after the COVID pandemic with 15% growth recorded in 2023/24, when patents applications increased from 983 to 1,135. Even so, the volume of applications is still up 129% compared with 2018/19, when there were just 542.
What is interesting to note is the very clear shift in vaccine strategy that has been adopted by pharmaceutical companies, and in such a short period of time. Traditional vaccine technologies such as toxoid vaccines and attenuated vaccines are being replaced by safer, more agile technologies such as mRNA vaccines.
Patent applications for RNA vaccines now dominate the evolving patent thicket, increasing 31% to 449 in 2024/25, up from 344 the previous year and only 20 in the year 2018/19. RNA vaccines deliver a small immune triggering part of the virus directly into a cell.
Mathys & Squire says vaccine technology is moving away from traditional vaccines to more advanced technologies like DNA and RNA vaccines. Traditional vaccines include ‘toxoid’ vaccine types, which use inactive toxins to prompt an immune response, like the tetanus vaccine, and subunit vaccines use proteins to trigger an immune response.
Consistent with this shift to new technologies, toxoid vaccines saw the sharpest drop in patent applications, with filings down 28% to 97 in 2024/25, from 134 the previous year. Inactivated vaccines saw a 5% drop to 264, from 279 in 2023/24.
Mathys & Squire says the success of the Covid mRNA vaccine shows that using these newer, more agile technologies can deliver effective protection at a lower cost than conventional vaccines. There are also significant safety benefits to the newer technologies.
Traditional vaccines, such as live attenuated vaccines or toxoid vaccines often require the culture of large quantities of the microbes. This requires expensive equipment and reagents and can be associated with safety and containment concerns.
On the other hand, the genetic material used in RNA vaccines is comparatively cheap and easy to produce. Additionally, since RNA vaccines do not contain a pathogen (either active or inactive) they are not infectious, making them safer for patients, clinicians and those involved in their manufacture, says Martin MacLean, Partner at Mathys & Squire.
Anti-vaccine comments from parts of the new US administration may further slow development of vaccines.
Mathys & Squire warns that recent anti-vaccine comments from some US Government officials risks adding to a slowdown in vaccine R&D.
Martin MacLean says: “Vaccine development is an expensive process. Mixed messaging from the Government could deter new investment – and therefore limit the number of new vaccines that can be developed and patented.”
RNA patents boom, and are now the largest number of new patent filings.
* Year end 30 June 2024. Figures are based on international vaccine patent applications published under the Patent Cooperation Treaty (PCT) during the 12 months to June 2019, 2023, 2024 and 2025, classified by type: inactivated (264), live attenuated (31), mRNA (449), subunit (261), multi-subunit (32), toxoid (97), viral vector (86).
Managing Associate Richard Jaszek has been featured in WIPR (World Intellectual Property Review) with his article, ‘Is the UK’s £16bn space industry being held back by out-of-date patent law?’
The article highlights how the rapidly advancing innovation in the space sector requires a robust intellectual property framework, the existence of which is ambiguous on account of the territoriality of patent law. According to Richard Jaszek, the UK is at risk of falling behind within the space-tech industry and it’s time to consider whether the nature of our patent law plays a part.
Read the article in full 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.
