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.
The Enlarged Board of Appeal has recently confirmed in G 2/24 that, after all appeals are withdrawn, appeal proceedings are terminated – even if an intervention is filed during the appeal. A party who intervenes only on appeal does not have the right to continue proceedings after the appeal is withdrawn.
The referring Board of Appeal in T 1286/23 sought clarification with the following question:
“After withdrawal of all appeals, may the proceedings be continued with a third party who intervened during the appeal proceedings? In particular, may the third party acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC?”
Background – Interventions at the EPO
Under Article 105 EPC, a third party that is sued for patent infringement may intervene in EPO opposition proceedings – even after the normal 9 month opposition window – provided that the intervention is filed whilst opposition proceedings are pending (or a subsequent appeal is pending). This allows the third party to bring new objections and evidence into the opposition.
The Decision – G 2/24
The Enlarged Board considered the situation where an intervention was filed during appeal proceedings following opposition and then all appeals are withdrawn.
G 2/24 confirms an earlier decision in G 3/04, deciding that such an intervener could not then continue with the proceedings. The Board that referred the question in G 2/24 questioned this approach and indicated an intention to deviate from G 3/04. However, in G 2/24, the Enlarged Board concludes that the legal situation has not changed substantively since G 3/04 in respect of the relevant provisions, and that the conclusion given in that decision still applies.
The Enlarged Board confirms that an appeal is a judicial review of the decision under appeal and is not a mere continuation of opposition proceedings. The principle of party disposition is also reiterated, in that the party has the right to withdraw an appeal (and the Board itself has no right to continue). Under Article 107 EPC, an appeal can only be filed by a party to the original proceedings that is adversely affected by the decision.
This reasoning led the Enlarged Board to decide that the intervener did not have the status of appellant and did not have further rights beyond a non-appealing party in respect of continuing proceedings.
As a result, if the sole appeal is withdrawn (or, should there be multiple appellants, then if all appeals are withdrawn), an intervener that only files an intervention on appeal does not have the right to continue with the proceedings.
Strategic Implications
G 2/24 gives patent proprietors more control over appeal outcomes when they are the sole appellant. For example, if an intervention on appeal raises new issues, the proprietor may opt to withdraw the appeal if they are the sole appellant. With the appeal terminating, this may allow the proprietor to fall back on an amended form of the patent maintained after opposition.
From the intervener’s perspective, it may be more beneficial to intervene in opposition proceedings rather than only on appeal. Whilst the ability to intervene will be determined by the proprietor bringing infringement proceedings, the third party may pre-emptively file an opposition in the first place (which may be filed anonymously).
In any case, intervening on appeal may still be a useful tool. For example, this may force the proprietor to withdraw the appeal and limit the patent to narrower claims.
G 2/24 therefore provides legal certainty confirming that interveners on appeal cannot continue with appeal proceedings once all appeals are withdrawn. This has implications for strategic decision-making in both opposing and defending patents at the EPO.
If you have any questions about your opposition strategy, please contact a member of our team.
We are delighted to announce that Partners Edd Cavanna, Max Thoma and Harry Rowe have been named as 2025 Rising Stars.
The Managing IP Rising Stars guide recognises leading intellectual property practitioners across more than 50 jurisdictions and a wide range of IP practice areas. This prestigious list highlights professionals who are making significant contributions to the field and showing strong potential for future leadership in the industry.
Each year, Managing IP conducts extensive research to compile its rankings, drawing on feedback from IP practitioners, firms, and clients. The process includes detailed surveys, interviews, and an independent analysis of publicly available information, ensuring that the rankings are rigorous and impartial.
Managing IP identifies Rising Stars who have demonstrated exceptional work within their firms and in the broader IP landscape. Being named a Rising Star is a mark of recognition for consistent, high-quality performance and is considered a notable achievement.
For more information on the Mathys & Squire rankings, visit the IP Stars website here.
27.3% of all applications filed at the European Patent Office (EPO) in 2024 originated from China, Japan, and Korea. Almost all of such applications claim priority from patent applications filed locally in those countries, which are normally prepared and filed in the local languages. This means that the content of such applications must be translated into an EPO official language (normally English) either when a corresponding European patent application is filed or a PCT application enters the regional phase.
The intricacies of translation
Translation issues can invalidate patents in Europe. Priority claims are only valid if a priority document contains a clear and unambiguous disclosure of a claimed invention. This is a very strict test and minor differences in language can lead to allegations that a claimed invention was not disclosed in an earlier priority application.
Similarly, when a European patent application is derived from a PCT application, whether or not matter is added during prosecution is judged against the content of the original PCT application rather than the content of a translation filed on entry to the regional phase. Again, the EPO’s test for added matter is a strict one – did the original PCT application contain a clear and unambiguous disclosure of a claimed invention? Minor changes in language can result in a patent application failing such a test.
Whenever such issues arise, the EPO is forced to consider the content of documents written in languages other than the working languages of the office. When dealing with languages such as Chinese, Japanese and Korean which are far removed from the European languages with which the EPO is normally familiar, knowledge of how languages work and the quality of translations used can become crucial.
The Opposition against EP2022349
The Opposition against EP2022349, filed by seven Opponents, illustrates how unsatisfactory translations can jeopardise the validity of patents before the EPO.
EP2022349 relates to an early vaporiser design for electronic cigarettes. The patent was involved in litigation in the UK and Germany among various e-cigarette companies in the mid-2010s because it represents an early example of an e-cigarette patent which covered modern e-cigarette designs.
The patent was based on a PCT application WO2007131449, originally drafted in Chinese. Unfortunately, the Chinese text itself was less than satisfactory, and the English translation submitted on entry into the European phase was also of limited quality. This later led to numerous added matter issues under Article 123(2) EPC.
Translation issues and Added Matter disputes
Air Inlet(s)
The Opponents objected that the application did not disclose an electronic cigarette having a single air inlet. The patentee explained that the Chinese characters 进气孔used to refer to the air inlets in the original Chinese implicitly referred to “one or more air inlets” because in Chinese if a specific number of air inlets was to be intended this would need to be made explicit in the Chinese (e.g. 一个进气口 one air inlet or 两个进气孔 two air inlets).
“Perforated” vs “Porous”
The original translation rendered a key term 多孔 (“Duo Kong” two characters literally having separate meanings as “many” and “holes”) as “perforated,” later corrected to “porous.” The Opponents objected that this correction introduced added matter, a point that was upheld by the EPO in a related divisional case.
“Frame” vs “Support Member”
The Opponents objected that 架体 ( “Jia Ti” two characters literally having separate meanings as “frame” and “body”) had a restricted meaning of “frame” and that the translation of 架体 as “support member” added matter.
Conjunctions and Prepositions
Even small linguistic nuances triggered disputes. For example, the location of the air channel in the claim was objected to with an Opponent contending that the original Chinese referred to the air channel being located “in the centre on one end surface of a cigarette holder shell” rather than “in the centre of one end surface of a cigarette holder shell”. This objection was refuted by the patentee with an explanation that in the original Chinese it was clear the central air channel was located in the centre of the surface of the cigarette holder shell.
Resolution and practical lessons
Ultimately the EP Opposition against EP2022349 ended without a formal conclusion on these translation disputes, as the case was withdrawn prior to a final decision. Nevertheless, the case provides a valuable example of issues which can arise when an inaccurate translation is used as well as the manner in which such objections may be overcome – in this case affidavit evidence was filed to explain the differences between English and Chinese.
The EP2022349 Opposition is a cautionary tale for patentees, attorneys, and translators alike. Above all, it reinforces the importance of investing in precise translations and expert linguistic input at the earliest stages of international patent prosecution.
