The UK and the EU have been separate trade mark jurisdictions since 1 January 2021. Since that date, only use made in the UK will count towards genuine use in the UK and only use in the EU will count towards genuine use in the EU.
At the time of Brexit, however, the UK and the EU agreed on a system of mutual recognition of ‘genuine use’ in each other’s jurisdiction where that use had taken place in the five-year period prior to 1 January 2021. As discussed below, the weight of that mutually recognised use will begin to diminish in practical terms over the next few years and will cease to carry any weight from 1 January 2026 onwards.
In the Withdrawal agreement between the UK and the EU, it was agreed as follows:
Article 54 of the Withdrawal Agreement
1 (a) the holder of a European Union trade mark registered in accordance with Regulation (EU) 2017/1001 … shall become the holder of a trade mark in the United Kingdom, consisting of the same sign, for the same goods or services; …
5. In respect of trade marks in the United Kingdom referred to in point (a) of paragraph 1 of this Article, the following shall apply:
(b) the trade mark shall not be liable to revocation on the ground that the corresponding European Union trade mark had not been put into genuine use in the territory of the United Kingdom before the end of the transition period;
In other words, if the owner of a UK Registration which is derived from an EU Trade Mark or an EU designation under an International Registration is required to provide evidence of use in any UK proceedings, it may rely on use up to and including 31 December 2020 made in the 27 remaining member states of the EU to the extent that the relevant five-year period for providing evidence of use includes a period of time before 31 December 2020.
Similarly the EUIPO has confirmed that use of the mark of an EUTM or an EU designation in the UK prior to 1 January 2021 may also count as genuine use of the EU mark, again to the extent that the relevant five-year period includes a period of time before 1 January 2021:
Can use of the EU trade mark in the UK before the end of the transition period maintain the rights conferred by the trade mark?
Use of the EU trade mark in the UK before the end of the transitional period constitutes, in principle, use ‘in the EU’ (or for exports from the EU to third countries, Art. 18(1) EU Trade Mark Regulation). Use of the EU trade mark in the UK before the end of the transitional period counts for the purpose of maintaining the rights conferred by the mark – provided that, and in so far as, it relates to the relevant period for which use has to be shown.
The table below shows the practical result of those transitional provisions.
Effectiveness and relevant periods of use in the “other” jurisdiction
Client A has an EUTM but has only used in the UK
In the period between 1 January 2021 and 1 January 2026, the client can rely on use made of its mark in the UK before 31 December 2020 to support its EUTM. However, the weight accorded to that use will diminish progressively the closer we get to 1 January 2026 because the time period taken into consideration will be commensurately shorter. After 1 January 2026, use in the UK before 31 December 2020 will not be of any use in maintaining an EUTM.
Client B has a UK Registration (derived from an EUTM) but has only used in the EU27
In the period between 1 January 2021 and 1 January 2026, the client can rely on use made of its mark in the EU27 before 31 December 2020 to support its UK TM. However, the weight accorded to that use will diminish progressively the closer we get to 1 January 2026 because the time period taken into consideration will be commensurately shorter. After 1 January 2026, use in the EU27 before 31 December 2020 will not be of any use in maintaining a UK TM.
If the owner of UK and EUTM has used its mark in both jurisdictions, none of this will present an issue in practice. However, owners of marks with low levels of sales or use only in one of the jurisdictions but with a continuing commercial interest in the other jurisdiction should consider shoring up their protection in the next two years or so.
The obvious answer would have been to refile a new application for the same mark and goods/services. However, recent cases before the European courts have found (see for example Hasbro’s Monopoly mark) that “evergreening” a mark can, depending on the particular circumstances, be considered to be “bad faith” if the re-filing is simply designed to avoid the need to provide evidence of genuine use. In those circumstances, it would be preferable to look at filing for a variant of the existing mark or the same mark in conjunction with a device element and/or for an expanded range of goods and services.
We enjoy working on IP matters and would be very happy to offer advice, tailored to your particular circumstances, on new filings to shore up your protection in the EU and the UK.
Contact us to book a call with one of our team to discuss your needs further.