Stories

Background

From 1 January 2021, EUTMs no longer provided trade mark protection in the UK.  Therefore, the UKIPO cloned all EUTMs to create ‘comparable UK trade marks’ on the UK trade mark register.  These are identifiable from their UK009- / UK008- numbers.

A UK trade mark (and EU trade mark) becomes vulnerable to revocation if it is unused for five uninterrupted years.  To prevent unfair outcomes for comparable UK trade marks created on 1 January 2021 (many of which were never used in the UK), use of the corresponding EUTM anywhere in the EU before that date counts as use in the UK.  Therefore, EU use of a UK trade mark is only relevant for periods before 1 January 2021; after that date, only UK use is relevant.  These principles also applied to EUTMs, i.e., use in the UK before 1 January 2021 was also considered use of an EUTM in the EU.  This was important in relation to proving use and reputation.

What This Means for Trade Mark Owners

In practical terms, reaching this 5-year period following 1 January 2021 means:

• if a business wants to challenge a UK trade mark application filed on or after 1 January 2026, and they rely on a comparable UK trade mark, only use in the UK will be considered in relation to proving use and/or reputation during the course of such an opposition.

• if a third party files a revocation application or counterclaims for non-use, in most circumstances the relevant 5-year period will start after 1 January 2021, and therefore, again, only use in the UK will be considered in fending off such attacks.  We suspect that a result of this will be an increase in revocation applications against comparable UK trade marks.

In relation to EU trade marks, UK businesses need to be aware of the inverse of the above when seeking to rely on their pre-1 January 2021 registered EU trade marks, and that only use in the EU now counts.

Action Point

In practice, trade mark owners of such trade marks must now ensure separate, territorially‑specific use in both the UK and the EU.  If the UK is potentially an important market for an EU business, then it needs to start putting its comparable UK trade mark into use.  The same is true for UK businesses where the EU is potentially an important market.

Evidence such as sales, advertising, distribution, packaging and service delivery must clearly relate to the relevant market.  Put simply: a trade mark must be used where it is registered.

A Note on Evergreening

The UKIPO does not permit “evergreening”.  Re-filing UK applications merely to restart the 5 year non‑use clock will be deemed an application in bad faith and any resulting registration will be vulnerable to invalidation.  Trade mark owners should focus on establishing and recording real, commercial UK use, rather than trying to rely on procedural resets.

How Hansel Henson Can Help

As your UK trade mark partner, we can assist you and your clients by:

• Reviewing portfolios to identify UK or EU marks that may now be vulnerable.

• Evaluating and advising on UK evidence of use, including how to strengthen it.

• Managing oppositions, revocations and enforcement actions before the UKIPO, ensuring that arguments and evidence align with the post‑transition framework.

The expiry of the transitional period creates both challenges and opportunities.  We are ready to support you in ensuring your and your clients’ UK positions remain strong, enforceable and future‑proof as we move further into 2026 and beyond.

If you would like us to review a portfolio or discuss specific cases, please contact Justine Flockhart and Visha Patel.