Brexit and Trademarks: Do you need to act to protect your “comparable” UK trade mark registrations from revocation risk?

On 1^st January 2021, at the conclusion of the Brexit transition period, European Union Trademarks (EUTMs) were no longer protected in the UK. In response to this, and to protect the owners of EUTMs from loss, the United Kingdom Intellectual Property Office (UKIPO) created UK comparable trademarks in respect of all existing EU Trademarks.

These comparable marks cloned existing EUTMs, retaining the original filing date, priority date and renewal dates of its EU Counterpart, and affirmed them with the same rights as any UK mark.

Equal to UK Trademarks, comparable trademarks are subject to a ‘use’ requirement and will be vulnerable to a revocation claim by a third party if not put to genuine use within a period of five years following the date of completion of registration. To successfully defend a revocation claim, the owner of the mark will either have to demonstrate genuine use or provide justification for non-use.

Genuine use can be defined as using your trademark in a real, commercial way for its intended purpose of distinguishing goods or services from a market competitor, as opposed to a mere token or artificial use solely to preserve rights to the mark.

Crucially, the five-year use period for comparable marks expires on 1^st January 2026. As a result, a myriad of revocation claims are expected in early 2026.

In the case of revocation, a trademark will be removed from the register, and the former owner ceases to hold any rights to the mark. The former owner may re-apply after 1^st January 2026; however, re-application is not without its drawbacks. In addition to the costs of re-application, another entity may apply in respect of the same trademark. If the alternative applicant’s application pre-dates the former owner’s re-application, the alternative applicant will have a claim to that trademark.

Further, a competitor may challenge a former owner’s re-application, alleging the application was made in bad faith, either to block a competitor’s use of the mark, or to obtain a monopoly over a style of marks.

For these reasons, it is critical that owners of comparable trademarks review their portfolio ahead of the deadline and make genuine and effective use of that mark prior to 1^st January 2026. As with any revocation action, the decision would ultimately come down to the facts of each case.

If you would like any further information or advice on these issues, please contact Karla Dooey from the Commercial team.

*This information is for guidance purposes only and does not constitute, nor should be regarded, as a substitute for taking legal advice that is tailored to your circumstances.