Are you using your cloned trade mark registration in the UK?

Prior to Brexit, an EU trade mark granted the rightsholder trade mark protection in the UK in addition to the other EU member states. Following Brexit and IP Completion Day (31 December 2020), the UK Government decided to grant EU trade mark owners a UK clone of their EU trade mark (UK Clone) to ensure continued protection for their brand in the UK.

Why is this important now?

Well, it is first important to know the concept of non-use. In the UK, a registered trade mark is vulnerable to being cancelled either in whole or in part, for non-use after the first 5 years of registration. This means that if the trade mark has not been used in commerce for the goods and services it is registered for in the first 5 years, a third party can apply to cancel the registration.

Crucially, from 1 January 2021 to 30 December 2025, if a UK Clone trade mark is subject to non-use cancellation, the owner can rely on evidence of commercial use in the EU to prevent the non-use cancellation. However, from 1 January 2026, evidence of use in the EU will no longer be considered for defending a non-use cancellation. Therefore, after 1 January 2026, owners of a UK Clone will need to show evidence of actual use of the UK Clone trade mark in the UK.

What is considered use?

The use of the trade mark must be for commercial purposes. Examples of commercial use include, affixing the trade mark to goods or the packaging, offering or exposing the goods for sale and supplying services under the trade mark. The use must be targeted at UK customers.

How to identify UK Clone trade marks

A UK Clone’s trade mark number begins with the number ‘9’ followed by the EU trade mark number – for example ‘UK00910101010’.

What to do next?

We recommend that trade mark owners review their trade mark portfolio and determine if there are any UK Clone trade marks and whether these are being used in the UK. This is particularly important for trade mark owners based outside of the UK.

If there are UK Clone trade marks that are not used between 1 January 2021 and 31 December 2025, trade mark owners should begin using the mark extensively in the UK before 1 January 2026. Alternatively, if use is intended in the medium to long term, trade mark owners may wish to file a new UK trade mark.

If you have a UK Clone trade mark and are using it in commerce in the UK, it is recommended to keep a file of use evidence which includes details such as dates, place and nature of use.

If you require assistance with any aspect of trade marks, please do not hesitate to get in touch with us and one of our specialist intellectual property solicitors will be able to assist.