Revocation time-bomb in UK and EU trade mark system

One of the consequences of Brexit is that registered EU trade marks no longer provide protection in the UK after 2020. To plug that gap, the UK government passed legislation to ensure that UK clones of EU trade marks were created on 1 January 2021.

This operated to preserve registered trade mark rights across both the UK and the EU post-Brexit, which was clearly a good thing. It also created a jurisdictional split in protection and a corresponding jurisdictional duplication in the activity required to maintain enforceable trade mark rights, though, which is not such a good thing. It effectively planted a stealth time-bomb in the trade mark system.

The time-bomb

It's a feature of both UK and EU trade mark law that if a trade mark which is registered in one of those jurisdictions is not used in that jurisdiction by the owner or with its consent, for a continuous period of 5 years in relation to any of the goods or services for which it is registered, it will become subject to revocation in respect of those goods and services. 

When the UK was still part of the EU, this “use” requirement would be satisfied for EUTMs, and enforceable EU trade mark rights would be maintained throughout the EU (including in the UK), by use of the EU trade mark anywhere in the EU (including the UK).

Brexit meant that use of a trade mark in the UK after 2020 no longer constituted use of the trade mark in the EU, and created a potential revocation time-bomb which will detonate at the end of this calendar year on 31 December 2025, ie 5 years from the end of the Brexit transition period.

This creates substantial risk for businesses which currently have registered trade mark protection in both the EU and UK, but which do not use, and have not used, those trade marks to the same extent in both the EU and the UK.

It will mean that:

• UK trade marks which were cloned from EU trade marks, but which haven't been used in the UK in respect of some or all of the goods and services covered by registration since the clone was created on 1 January 2021, will be subject to partial or full revocation at the application of any interested third party at the end of 2025. This is likely to affect EU-based businesses particularly.
• EU trade marks which were originally registered by businesses seeking pan-EU protection, but which have only actually used the registered trade mark in the UK in respect of some of all of the goods or services covered by the registration, will be subject to partial or full revocation at the application of any interested third party. This is likely to affect UK-based businesses particularly.

Why Does this Matter?

In practice, the revocation time-bomb will mean that:

• The owner of a UK trade mark which was created as part of the Brexit-related cloning process will not, to the extent of the non-use, be able to enforce their UK trade mark rights against third parties who use identical or similar marks in the UK.
• The owner of an EU trade mark who has used the mark in the UK but not used the mark in the EU (or used it in respect of only some of the goods or services for which it has been registered) will not, to the extent of the non-use, be able to enforce their EU trade mark rights against third parties who use identical or similar marks in the EU.

It is also likely that any UK-based trade mark owner which seeks to enforce their trade mark rights in the EU after 2025, and any EU-based trade mark owner which seeks to enforce their trade mark rights in the UK after 2025, will be put to proof of the place, time, extent and nature of their use of their trade mark in the jurisdiction in question. This is because potential defendants to trade mark enforcement action will be encouraged to exploit the potential scope for revocation of the trade mark as a line of defence to the enforcement action. If they do, this will create an evidential burden and associated cost for trade mark owners even if they have made full use of their trade marks.

What to do?

It's important that UK and EU trade mark portfolios be regularly reviewed to check the extent to which each trade mark is being used (whether by the owner or a licensee), in the UK or EU (as the case may be) in respect of each of the goods and services for which it is registered.

Where there is or has been current or recent use of the mark in respect of certain goods or services, but that use isn't unambiguously clear from a simple internet search which any potential competitor could carry out, it's important for the trade mark owner to capture documentary evidence of the place, time, extent and nature of use of the trade mark. This evidence can then be used to prove use and defeat any third-party attempt to revoke the trade mark registration. Acceptable types of evidence can be dated copies of brochures, catalogues, advertisements, invoices etc. We can advise further on acceptable types of evidence.

Where there has not been current or recent use of the mark in respect of certain goods or services, the business should consider:

• Whether there's a business case for starting use of the mark in the jurisdiction in question, in which case evidencable preparations for starting such use should be commenced as soon as possible
• Whether there is a business case and realistic intention to starting using the mark in the jurisdiction in question, at some point in the next five years, in respect of some or all of the goods covered by the existing registration. If so, the business should consider filing a further, potentially more refined trade mark application to cover the goods and services in question. If granted, the new registration will not be subject to revocation at the end of 2025, as the 5-year non-use time-bomb will not start ticking in relation to that new registration until it is granted.  

When to do it

NOW! 

A review of the use of your registered trade marks in the UK and EU should start now, and certainly well in advance of the 31 December 2025 “detonation” date, to give plenty of time to plan and take appropriate action before the revocation risk crystallises.  

How we can help?

• We can assist in carrying out an audit of use (by the trade mark owner or its authorised licensees), and collating and maintaining evidence of such use, with a view to quickly and easily defeating any proof of use requirement if and when a revocation claim is made or threatened
• Where trade marks are being used by third parties with the trade mark owner’s undocumented consent (including group companies), we can draft appropriate licences to ensure that there is documentary evidence that the use is authorised by the trade mark owner and therefore use which can defeat a revocation claim. 
• We can advise on and file any fresh trade mark applications which it may be appropriate for a business to make where it has not used the mark in respect of certain goods or services in a particular jurisdiction since 2020, but in respect of which it has a genuine intention (if not concrete plan) to start using the mark in the next 5 years. 

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