The owners of UK registrations that were cloned¹ from EU trade marks post-Brexit face an important deadline. Until now, owners of such UK registrations have been able to rely on EU use in support of those registrations, for example when asked to prove use of an earlier right in an opposition or in defence of a non-use cancellation action². After 31 December 2025, EU use will no longer count in UK proceedings. In short, if you own a UK cloned registration it may be vulnerable to cancellation by third parties, unless you have use specifically in the UK.

Rights holders reviewing their portfolios should be mindful of what qualifies as genuine use of a trade mark in the UK. Use that is only internal or token use will not suffice. Attempts to create the impression of UK use merely to mitigate risk of non-use cancellation will likely not succeed. Genuine use means real commercial exploitation of the mark for the purpose of creating a market share, though this does not necessarily mean a brand has to be a commercial success.

Rights holders should also be aware that simply refiling in the UK may not solve the problem. This opens the refiled mark up to a potential challenge of bad faith by ‘evergreening’, i.e. repeat filings to circumvent the need to prove use of a registration after 5 years.

Following the Supreme Court’s decision on 3 December 2024 in Skykick UK Ltd and another v Sky Ltd there is also an increased risk that cloned marks, like any other UK mark, with overly broad descriptions of goods or services may be vulnerable to invalidation by a third party on the ground of bad faith (i.e. lack of genuine intention to use). This is a further important consideration in any enforcement scenario.

Please contact the Carpmaels Trade Marks team if you have any questions about UK cloned trade marks or how best to protect your trade mark portfolio in light of these changes.

[1] Following the UK’s departure from the EU on 31 December 2020, EU trade mark registrations no longer extended protection to the UK. To mitigate the impact on brand owners, all existing EU registrations were automatically cloned on the UK register to ensure continuing protection.

[2] The UKIPO has been generous in allowing this. By contrast, the EUIPO has taken the position that UK evidence is irrelevant for any EUIPO proceedings after 31 December 2020.