From 1 January 2026, use in the EU will no longer be relevant for UK comparable trade marks. Therefore, businesses that benefitted from the automatic creation of a comparable trade mark based on their registered EU trade mark must now ensure its use within the UK to avoid the risk of revocation.
What is a comparable mark?
The UK Intellectual Property Office automatically granted equivalent UK trade marks for every registered EU trade mark back in January 2021, known as "comparable marks". These comparable marks are standalone and subject to the usual UK laws.
Current position
In the UK, a trade mark registration can be revoked if it is not used for an uninterrupted period of five years (similar to the position in the EU). However, use of the mark in the EU before 1 January 2021 could be considered as use of the comparable mark. This has allowed comparable marks to be maintained, even where the marks have not been used in the UK.
From 1 January 2026
Effective 1 January 2026, the use of marks in the EU will no longer be considered when evaluating the use of comparable marks. This is because as of 1 January 2026 five years will have elapsed since the creation of the comparable marks. Therefore, if a trade mark has not been used within the UK in those five years, it could be at risk of revocation (particularly if the owner attempts to rely upon such a mark in an opposition against a UK application).
Why maintain a comparable mark?
Earlier rights
Comparable marks retain the original EU trade mark filing date. Therefore, it may be preferable to maintain the comparable mark rather than re-filing at a later date, to preserve the earliest registration date. This is particularly advantageous when subsequent similar marks have been registered by other applicants. Even if the owner of a comparable mark did not contest a later registration, it does not mean the owner of the later registration would not contest the registration of a new mark.
Administrative ease
As the filing date for a comparable mark is the same as the equivalent EU trade mark, their renewal dates also align, occurring every 10 years. This synchronization can be particularly advantageous from an administrative standpoint, especially for those managing extensive trade mark portfolios.
Cost
When the comparable marks were created, there was no associated charges. In contrast, filing a new trade mark incurs the usual costs. Therefore, maintaining the comparable mark is likely to be more cost-effective overall than registering a new mark later as the only fees payable will be renewal fees, rather than both filing and renewal fees.
Key takeaway
Trade mark owners wishing to maintain comparable marks in the UK that have not been used in the UK will need to make use of the mark by the end of this year to maintain the mark.
Jessica Gregson