Owners of comparable UK trade marks face ‘use it or lose it’ commercial risk

When the UK formally exited the EU, European Union trade marks (EUTMs) no longer covered the UK. In an attempt to remedy this, the UK Intellectual Property Office (UKIPO) created comparable UK trade marks at the end of the Brexit transition period on 1 January 2021.

This provided assurance to owners of EUTMs that their trade marks would be afforded the same legal protections in the UK after Brexit as those that had been applied for and registered originally in the UK.

As with any other UK registered trade mark, comparable trade marks are subject to a ‘use’ requirement. Failure to use the mark for a continuous period of five years makes the mark vulnerable to challenge and owners must provide justification for the non-use. Without a good reason for the non-use, the mark may be ‘revoked’ – that is, removed from the UK trade mark register.

While the legal arrangements that were put in place on Brexit provided for use in the EU – which, at the time, included the UK – to count as use of the comparable UK right, use after 1 January 2021 must be in the UK. If this has not happened, comparable rights will become vulnerable to a non-use challenge from 1 January 2026, five years on from when they were first created.

Many owners of comparable trade marks may be unaware of the change in the use requirements, but if businesses and individuals fail to act now, their trade marks could be at risk, according to Pinsent Masons trade mark expert Désirée Fields. “If your comparable UK trade mark is revoked for non-use then you will lose these trade mark rights in the UK.”

If owners of these trade marks miss this deadline, it will be possible for them to apply to register a new UK trade mark after 1 January 2026. However, this approach has several significant drawbacks, said Fields. “Although comparable UK trade marks were created automatically and at no cost to their owners, there will be financial and resource costs attached to a new filing,” she said. “You will also lose the original EUTM filing date. This could have serious implications if a third party has successfully registered a UK trade mark which is similar to yours as they could seek to rely on that, with its now earlier filing date, to oppose your application.”

Pinsent Masons brand expert Gill Dennis said failure by owners to act now could also give rise to challenges from third parties. “If a new trade mark is filed but use is not commenced for some time, third parties may seek to challenge the new trade mark application or registration for bad faith arguing that there is no intent to use the mark and that the new application has been filed in bad faith to ‘evergreen’ the right.”

Comparable UK trade marks are recorded on the UK trade mark register. Although they retain their original EUTM filing date, they are standalone UK trade marks which can be managed and commercialised separately from the original EUTM. They only give trade mark rights in the UK. Existing EUTMs still provide trade mark protection in EU member states. UK businesses and individuals can still register an EUTM in the same way as before Brexit. 

As the 1 January 2026 deadline looms, Dennis said owners of comparable trade marks should look to use these trade marks before the end of 2025 to avoid losing these rights. “The use must be genuine, meaning that it should involve real commercial exploitation of the mark and not simply be token use intended only to preserve the registration.”

Owners may also wish to use this opportunity to review their trade mark portfolio ahead of the deadline. “If use of your mark in this way no longer fits with your current commercial strategy, then consider whether the comparable UK trade mark is still a necessary, and cost effective, part of your trade mark portfolio,” said Fields. “If not, then you may not wish to renew it.”