End of grace period for UK clones on December 31, 2025

On December 31, 2025, the five-year grace period for so-called UK clone trademarks will end. These are national UK trademarks that automatically emerged from registered EU trademarks in the course of Brexit and were protected as additional comparable UK trademarks (same sign, same goods and services, same filing/priority date). The purpose of this conversion from EU to UK trademarks was to ensure trademark protection in the United Kingdom after Brexit.

Background

In accordance with the Withdrawal Agreement concluded between the EU and the UK, the UK left the EU on February 1, 2020. The transition period provided for in that agreement, during which EU law remained applicable to and in the UK, ended on December 31, 2020. During this transition period, use of the UK clone registrations within the EU was sufficient as proof of genuine use. However, since January 1, 2021, use in the United Kingdom is required to maintain rights to UK clones, and use within the EU is no longer sufficient.

Impact on practice

As a result, trademark owners who have not genuinely used their UK clones in the United Kingdom during the period from January 1, 2021, to December 31, 2025, now run the risk of having their UK clones canceled in whole or in part by third parties by way of cancellation requests. The (partial) cancellation of a trademark due to non-use would leave trademark owners unable to take enforcement action before the UK courts and unable to rely on their UK clone registrations in opposition or invalidation proceedings before the UK Intellectual Property Office (UKIPO).

Practical advise

In anticipation of this, it is essential that trademark owners carefully and promptly review their trademark portfolios to determine the extent of their past and present use within the UK, and, if necessary, develop strategies for future use. Where such rights have not been used on the UK market, but continued trademark protection is still desired (in whole or in part), it is advisable to commence (genuine) use of the UK clone registrations in the UK as soon as possible and/or filing new national UK trademark applications.

However, if use in the UK is not desired, it is advisable, at least for cost reasons, to take no further action but to wait and see whether third parties file a cancellation request based on non-use. Proactively abandoning the cloned UK trademark is not recommended because it incurs unnecessary costs. If a third party files a non-use cancellation request without first warning the trademark owner of such an intention, the UKIPO will not re-imburse the applicant for any costs. This principle reduces the risk of being attacked without warning. However, if a warning is issued, the trademark owner can, of course, (voluntarily) delete the cloned UK trademark within the set period. In contrast to Germany, in the UK it is extremely difficult to claim a warning fee for the warning letter. If the trademark owner fails to delete the trademark in time despite the warning letter and revocation proceedings are actually initiated, costs may be imposed on them. However, it is of course questionable whether a decision on costs in favor of the applicant would been forceable in an international context or whether the effort involved would be worthwhile, which ultimately also reduces the risk of a negative cost burden for trademark owners.