Comparable Trade Marks in the UK: Use them or lose them!

On 1 January 2021, following the departure of the UK from the EU, the UK Intellectual Property Office (UKIPO) automatically granted so-called ‘comparable’ (also known as 'cloned') UK trade mark registrations for every EU trade mark that was registered on or before 31 December 2020.

In the UK, as in the EU, a trade mark registration becomes vulnerable to revocation if it is not used for any consecutive period of five years after the registration date. In the case of comparable trade marks, use of the trade mark in the EU prior to 1 January 2021 would also be considered use of the comparable UK mark. This has meant that owners of comparable marks have been able to maintain and enforce UK trade marks, even when the trade mark has not been used in the UK.

However, that is about to change. From 1 January 2026, five years on from the date the comparable trade marks were created, use of a trade mark in the EU will no longer be accepted as use of the comparable UK mark. In practice, this means that the comparable mark will become unenforceable if it has not been used in the UK in the preceding five years.

So, what can owners of comparable trade marks do?

- If there is no current intention to use the mark in the UK, the registration can be withdrawn or simply allowed to lapse at the next renewal date.

- Start making use of the trade mark in the UK before 1 January 2026. This will allow the comparable trade mark to be enforced if required e.g. in a UK trade mark opposition or against a non-use revocation action. The main benefit of this is that the comparable UK mark retains the original EU trade mark application filing date, which is the effective date of protection.

- If there is a genuine intention to use the trade mark in the UK within the next five years, but not before 1 January 2026, a new application could potentially be filed to restart the five-year period. The downside of this is that owners of similar UK trade marks, applications for which were filed after the original EU filing date, may have grounds to challenge the later-filed UK application, or indeed the eventual registration, on the basis of their earlier rights.

Author: Fiona Jones