ALERT, ALERT! Danger for comparable trade marks as of 1 January 2026
Whilst Brexit may seem a distant memory for the intellectual property profession and intellectual property owners, its impact has once again shown up to the party for the owners of comparable trade marks.
To recap, 31 December 2020 was the end of the transition period for EUTMs to also cover the UK following Brexit. The result was that such EUTMs would no longer be enforceable in the UK. However, from 1 January 2020, equivalent UK national marks were automatically created on the UK Register as standalone national UK marks which are referred to as “comparable trade marks”.
We are now approaching the five-year anniversary of the transition date. During the past five years since 1 January 2020, if there is use of a trade mark in the EU, such use would be considered as genuine use for the comparable trade mark in the UK. This applies even if there had been no actual use of the trade mark in the UK. Essentially making the comparable trade mark risk-free from revocation for a five-year period.
What does this mean?
As of 1 January 2026, a comparable trade mark will be vulnerable to an action for revocation of the comparable trade mark in relation to all or some goods and/or services covered by the comparable trade mark if it has not been in use in the UK specifically, within the five-year period leading up to 31 December 2025.
This is where the “use it or lose it” principle comes in. If an owner of a comparable trade mark:
1. Has made genuine use of the mark within the five year period, there would be a very low risk of a successful revocation action by a third party. The benefits of maintaining the comparable trade mark is of course retaining the original filing date of the corresponding EU right.
2. Has not made genuine use of the mark within the five year period, it will be at risk of an action for revocation by a third party. However, such third party would need to file an action for revocation. In other words, it will not automatically be revoked by the UKIPO Office, an interested third party must take action.
If there has been no genuine use of the mark in the UK but the owner of the mark still wants to maintain the comparable trade mark, it is strongly suggested that genuine use of the mark is made in the UK prior to 1 January 2026.
If there has been no genuine use of the mark in the UK, and it is unlikely there will be by 1 January 2026, an option is to re-file a national UK trade mark. However, there is a warning as there must be a real intention to use the mark in the UK as a re-filing of the mark could be considered as filed in bad faith.
It is also suggested that a clearance search for the mark in the UK is conducted first to ensure that an earlier trade mark filed by a third party within the five-year period is not likely to be an obstacle to the registration of the re-filing of the mark having an earlier filing date.
We suggest owners of comparable trade marks review their portfolio, identify those marks that are still of interest in the UK, as well as marks that are no longer of interest. With particular regard to any comparable trade marks that are still of interest, maintain good record-keeping of any use of the mark in the UK specifically.
ip21 is very happy to assist in designing and implementing a UK trade mark strategy to achieve your commercial objectives. Contact us today at info@ip21.com or via our website.
Written by Cheryl Payne for ip21 Ltd
December 2025