Use it or lose it - the fate of the UK cloned marks

When it comes to Brexit and trade marks, the dust has largely settled. As many will be aware, following 31 December 2020 (or “IP Completion Day”), European Union Trade Mark registrations no longer extended to the UK. The owners of EUTM registrations were provided with a UK “clone” registration, i.e. the UK portion of the EUTM, to recognise the UK rights they held as a result of the EUTM registration. This was a huge exercise at the UKIPO, with around two million new UK registrations being added to the UK register overnight. The clone registrations can be identified with the prefix 009 (for marks which were created as a result of an existing EUTM registration) or 008 (for marks which were created as a result of an EU designation of an International Registration).

Whilst the UKIPO has issued guidance around address for service in relation to the clone registrations and many rights holders have taken the opportunity to add a UK address for service, we are now approaching a new deadline in relation to the UK clone marks.

At the moment, the owner of a UK cloned registration could rely on use of the mark in the EU in the past five years to defend a revocation action, for proof of use purposes in an opposition or to support a reputation claim. Where the five year period includes time before 1 January 2021, use in the EU could be considered without the need to show evidence which relates to use in the UK. However, use of the mark in the EU in the time period after 1 January 2021 would not be taken into account in relation to assessing genuine use or reputation in the UK. The window of time where evidence of EU use could be relied upon therefore is shortening.

On 31 December 2025, the five year window will elapse and rights holders cannot rely on use of the trade mark in the EU to support genuine use or reputation of the UK cloned registration. Rights holders have a short window to either use or lose these registrations, which may become vulnerable to cancellation for the first time from 1 January 2026. Whilst the UK cloned registrations will not be automatically cancelled after this point, they will become vulnerable to a non-use action where instigated by a third party. Furthermore, if use of the marks is challenged within opposition proceedings against third party applications, rights holders may not be able to rely on the cloned registrations if they cannot adequately demonstrate proof of UK use.

It is therefore prudent for rights holders to review their trade mark portfolios and consider whether they are in a position to provide evidence of use of the cloned registrations in the UK, or be aware of the risk of cancellation if they cannot.