Registered trade marks: are you using sufficiently? 31 December 2025 deadline looms

One of the golden rules of maintenance for registered trade mark owners is that you must use your trade mark.

Under UK and EU laws, a registered trade mark must be used at least within the grace period of five years from the date of registration and for continuous periods of five years thereafter.  If not, the registration becomes liable to revocation at the suit of a competitor on non-use grounds.

Brexit deadline

As a consequence of Brexit, an important use deadline is coming up on 31 December 2025 for owners of pre-Brexit EU registered trade marks (“EUTMs”).

After the UK finally left the EU on 31 December 2020, EUTMs were no longer valid and effective in the UK, and use of EUTMs in the UK could no longer count as qualifying use of EUTMs.

In order to preserve the pre-existing rights of owners of EUTMs, the UK effectively ‘cloned’ pre-Brexit EUTMs by creating as from 31 December 2020 equivalent UK registered trade marks (maintaining the same filing, priority and registration dates as their corresponding EUTMs).

However, as from 31 December 2020, those corresponding UK registered trade marks could only be kept alive through use in the UK (use in the EU would not count).

A continuous five-year period will be up on 31 December 2025, and if that corresponding UK registered trade mark is not used by then, it could be lost.

Contrariwise, as from 31 December 2020, EUTMs must be used in the EU (use in the UK is of no assistance).  If there has been no use in the EU during the continuous five-year period ending on 31 December 2025, the EUTM is likewise open to attack.

Use guidelines

Not all uses of a registered trade mark qualify.  Here are some guidelines (in no particular order).

First, use must be ‘genuine’, which is defined as use of a registered trade mark to create and or maintain a market.

In other words, use must be commercial.

Second, genuine use must be in relation to the registered goods and/or services.  To the extent that it is not, the mark is vulnerable to total or partial revocation.

Suppose a registration for “t-shirts, shirts and jumpers” solely used for t-shirts.  The other items could be red-lined out of the registration.

Often trade marks are registered in respect of broad terms like “clothing”.  If non-use is identified for a sub-category within that term, say, “men’s clothing” then the registration may be narrowed accordingly.  The trick is to use a mark for sufficient of the registered goods and/or services to maintain the wide term (or be more specific in framing the goods and/or services of trading interest).

Third, use simply to promote other goods and/or services does not qualify.  A car dealer gives away a bottle of champagne with each car sale.  That is not genuine use in respect of champagne.

Fourth, genuine use must be in the jurisdiction covered by the trade mark registration.  So as touched on above, a UK registered trade mark must genuinely be used in the UK; EUTMs in the EU, although genuine use in one EU country may suffice.

Fifth, not all commercial uses amount to genuine use.  Where a mark is used minimally for registered goods and/or services, this can be adjudged merely ‘token’ use.

Sixth, use must be by the registered trade mark owner and/or with their consent.  Consent can be oral, but this may be difficult to prove.  Appropriately drafted written licences are always preferable, not least because uncontrolled licensing can lead to other misfortunes, like revocation for generic and/or misleading use.

Seventh, use must be of the trade mark in the form that it is registered, so use of a stylised sign may not be the same as use of a registered word trade mark.  Variant use can sometimes qualify but only if the sign used does not alter the distinctive character of the trade mark as registered.

The prudent course for registered trade mark owners is periodically to review your registered trade mark portfolios, and your strategies for effective maintenance thereof.

For those affected, this will include relevant consideration of the important Brexit use deadline of 31 December 2025 identified above.

We specialise in the prosecution, maintenance, licensing and enforcement of registered trade marks in the UK, EU and worldwide.

This piece was contributed by Robert Humphreys and Tristan Morse. Do please reach out to a member of the team if you would like to discuss matters relating to intellectual property or commercial law generally.

All the thoughts and commentary that HLaw publishes on this website, including those set out above, are subject to the terms and conditions of use of this website.  None of the above constitutes legal advice and is not to be relied upon.  Much of the above will no doubt fall out of date and conflict with future law and practice one day.  None of the above should be relied upon.  Always seek your own independent professional advice.

Humphreys Law