Following Brexit, on 1 January 2021, the UK Intellectual Property Office (UKIPO) automatically converted approximately two million EU trade mark registrations into UK "cloned" trade marks (known as comparable UK trade marks).
As many rights holders will be aware, UK trade marks are vulnerable to cancellation by third parties if they have not been put to genuine use for a continuous period of five years. To avoid "unintended and unjust" outcomes, the UKIPO clarified at the time of Brexit that, because many of the newly created UK cloned trade marks had never actually been used in the UK, the use of such marks in the EU before 1 January 2021 (whether inside or outside the UK) would count as use of the cloned UK right. Use in the EU (which no longer included the UK) after 1 January 2021, however, would not count.
We are now approaching the end of the five year window since 1 January 2021 which means that, from 1 January 2026, if a cloned UK mark has not been used in the UK, it may be vulnerable to cancellation for non-use by third parties.
Rights holders should be alive to the risk of cancellation for non-use. They should assess their trade mark portfolios to see whether they can adequately prove UK use of any cloned registrations and, if necessary, consider how they can make effective use of such marks.
We also encourage holders of cloned UK trade marks to review their address for service on the UK trade mark register. The UKIPO has provided guidance on updating the address for service concerning cloned registrations (to an address in the UK, Gibraltar or the Channel Islands) and more information is in our previous article here.
For help with protecting your cloned UK trade marks, please get in touch with our Brands team.