02/10/2025
The end of 2025 marks the very end of the period during which use of a trade mark in the EU could potentially be taken into account in defending a UK “clone” registration against a non-use action. It will be 5 years since the Brexit transition period ended; the UK left the EU at midnight on 31 December 2020.
Almost all territories have a “use it or risk losing it” approach to registered trade marks. In the UK and the EU, there is a 5-year grace period following registration. During that 5-year period, a trade mark cannot be challenged for non-use. At the end of that initial 5-year period the registration can be challenged if it has not yet been put to genuine use. A registration can also be challenged for non-use at any later stage if it has not been used for a continuous 5-year period.
To preserve the rights that had extended to the UK prior to Brexit, the UK IPO created on 1st January 2021 “clones” of EUTM registrations and of granted EU designations of International Registrations.
UK clones of EUTM registrations can be recognised by the initial numbers “009” which precede the EUTM number – so eg EUTM Registration No 017867542 would have produced UK clone Registration No 00917867542. UK clones of granted EU designations of IRs have the initial numbers “008”.
The UK IPO recognised that many of the resulting clone registrations were for marks that had not been put to use in the UK, though they might have been used elsewhere in the EU. It was acknowledged that allowing these clone registrations to be challenged almost immediately on the basis of non-use would likely lead to unintended and unjust outcomes.
Accordingly, the Withdrawal Agreement Act provided that any use that had been made of such a mark in the EU before 1 January 2021 would count as use of the comparable UK right, whether such use was made inside or outside the UK. As of 1 January 2026, use of a trade mark in the EU will no longer be relevant in any new proceedings brought in the UK. Those 5 years are up.
Owners of registered trade marks should review their portfolios periodically to consider whether they still have adequate protection for their marks in all relevant territories and whether any of their registrations may be vulnerable to challenge. It is also good practice to build up and maintain a portfolio of suitable evidence of use of each mark in each territory. This can be very helpful if a trade mark owner ever needs to show use and/or reputation of their mark.
But what is “suitable” evidence?
What will the UK IPO require to show genuine use in the UK?
In the UK, evidence should be in the form of a witness statement, ideally from someone who has first-hand knowledge of the facts. The facts set out in the witness statement should be supported by relevant exhibits. The UK IPO have to believe the witness, but they do like to see the supporting exhibits. If missing, questions are raised as to why the mark hasn’t been shown, for example on an invoice. It is possible in some cases for the witness to be examined on their statement at a hearing.
The evidence must show that the registered mark has been used by the registered proprietor or with their consent. The evidence should demonstrate for which goods or services the trade mark has been used and the financial turnover from sales of these goods or services under the trade mark during the relevant period. If possible, the evidence should include examples of sales records showing the mark in use for the goods/services for which use is claimed: copies of sales invoices or similar. Commercially sensitive information may be redacted, or the numbers rounds in the witness statement.
It is also helpful to include evidence showing how the goods/services have been advertised under the trade mark, if possible with examples of such advertising from the relevant period.
Evidence showing use of the mark in a form which does not alter its distinctive character (as compared to the form in which it was registered) will be accepted by the UK IPO as showing use of the registered mark. So minor variations, such as using a mark registered in block capitals in upper or lower case and/or in any normal typeface will make no difference. Similarly, if a mark is registered in black and white, evidence showing use of the mark in particular colour(s) should be accepted. But if the mark is registered in colour, evidence showing use in different colours may not necessarily be accepted.
What will the EUIPO require to show genuine use in the EU?
The EUIPO wants to see the mark of the registration on materials filed. They do not accept witness statements. Particular importance is placed on invoices and it will often be an uphill struggle to persuade the EUIPO that genuine use has taken place unless at least some invoices showing the registered mark are submitted.
The EUIPO can also be quite strict about the format of the mark as registered and as shown in evidence. For example, invoices showing an abbreviated form of the registered mark may not be accepted.
Use does not have to be throughout the EU or even in a substantial part of the European Union to be deemed genuine. The borders of the Member States must be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the European Union. It would be possible for the EUIPO to find that an EUTM had been put to genuine use even if the evidence showed that the mark was only used within a single Member State.
Evidence must establish the place, time, extent and nature of use of the trade mark. In addition to invoices, material including images of packages, labels, price lists, catalogues, photographs and newspaper advertisements can be of benefit.
The EUIPO will conduct an overall assessment of the evidence and will only find the mark to be in use if the evidence directly and clearly demonstrates use – without the need to guess.
The revocation of McDonald’s EUTM registration of their mark BIG MAC in 2019 demonstrated the importance of filing sufficient and suitable evidence of use (see Rob McLaughlin’s blog from 2019 here. McDonald’s appealed against this decision and filed additional evidence including advertising material, consumer surveys, Google Analytics Data, and a financial audit report. In 2022, the Board of Appeal partly overturned the decision of the Cancellation Division and held that use of the registered mark had been demonstrated for some of the goods and services.
Supermac (who had applied to revoke the registration) then took the case to the General Court. In 2024 the General Court found[2] that the evidence filed by McDonald’s only showed use in respect of “Foods prepared from meat products; meat sandwiches” in Class 29 and “Edible sandwiches; meat sandwiches” in Class 30 and the registration was further restricted to these goods only.
The evidence filed by McDonald’s in respect of other goods and services was considered insufficient by the General Court. For example, McDonald’s had submitted advertising posters, screenshots from a television commercial and content from its French Facebook page during the relevant period in order to demonstrate use of BIG MAC in relation to “chicken sandwiches”. However, the General Court held that even though this evidence showed a connection between BIG MAC and chicken sandwiches, it did not demonstrate the quantities, regularity, and recurrence of the distribution of the goods concerned, or the dates and prices at which the goods were marketed.
The best records to keep
Whether you have registered your mark in the UK, the EU or elsewhere, it is very important to keep good records of how your mark is actually used. Having ready access to a portfolio of evidence of use can be extremely helpful if you ever need to rely on your registration – whether in opposition or infringement proceedings – or to defend it against a non-use cancellation action. A trade mark attorney can advise you on how to build up and maintain a portfolio of suitable evidence.
1] Shopify v EUIPO – Rossi and Others (Shoppi) Case T-222/21 Judgement on 12/10/2022: C_2022463EN.01002901.xml
2] Judgment of the General Court in Case T-58/23 | Supermac’s v EUIPO – McDonald’s International Property (BIG MAC) on 05/06/2024: EUR-Lex – 62023TA0058 – EN – EUR-Lex
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
