The Clone Race – The final sprint for EU brand owners to protect their cloned UK trade marks

Following the UK's exit from the European Union, all registered EU trade marks were "cloned" into identical new UK trade mark registrations (the "Cloned Marks"). In doing so, a unique five-year grace period was created by way of amendment to the Trade Marks Act 1994. However, this period is now drawing to a close and is set to expire on 31 December 2025.

In this article, we take a look at what this deadline means for Cloned Marks rights holders and, in particular, how EU brand owners can safeguard their Cloned Marks and protect their brand.

What is a Cloned Mark?

Easily identifiable by the prefix of either 009 or 008 in their UK trade mark registration number, Cloned Marks were created as a consequence of British withdrawal from the EU. As part of this exit, on 31 December 2020 (known as "IP Completion Day"), all EU registered trade marks were replicated into corresponding UK trade marks.

These identical marks recognise the UK rights held as a result of the prior EU trade mark registration, and retain the same filing, renewal, priority and seniority dates. That said, they are entirely independent from the original EU trade marks and are managed as separate entities for the purpose of any renewals, assignments and licensing agreements. As a result of their standalone status, they can also be subject to individual challenge in isolation from challenges to the original EU trade mark.

Currently, owners of Cloned Marks can rely on the use of the mark in both the UK or any of the EU member states prior to IP Completion Day to defend a revocation action for non-use in the UK or to evidence any reputation claims. However, from 31 December 2025 this protection will come to an end and any use in EU member states will no longer suffice as evidence of use in the UK.

Why is this important?

The outcome of this is that from 1 January 2026:

Cloned Marks become vulnerable to cancellation by way of non-use actions.

If use in the UK cannot be sufficiently evidenced, Cloned Marks will become vulnerable to cancellation by way of non-use actions. Whilst any cancellations of Cloned Marks will not happen automatically, it is essential to note that as the protections of this transitional period are drawing to a close there is an ever-reducing time to address these risks by making genuine use of these Cloned Mark registrations in UK.

Use of the EU trade mark can no longer be relied upon to support genuine use or reputation in the UK, for example, if use of the Cloned Mark is challenged within opposition proceedings against third parties.

This is particularly important to EU brand owners, who may be unaware of the Cloned Marks non-use in the UK until it is too late.

What can I do now to protect my Cloned Marks?

Review your trade mark portfolio

In light of the above, it is sensible to review your trade mark portfolio without delay and identify any Cloned Marks held. Thorough consideration should then be given as to the Cloned Marks use and whether this can be sufficiently evidenced.

In particular, consideration should be given to:

• The extent to which any Cloned Marks are being used in the UK;
  • Whether the scope of the goods and services for which they are registered is still accurate;
  • Whether you have any evidence available to support the Cloned Marks use in the UK in relation to all of the goods and services that they are registered for; and
  • If the Cloned Marks are not being used in the UK but you consider that they may be in the near future, whether it would be prudent to start their use now in order to build protection.

There is still a fading opportunity to rectify any shortcomings ahead of the upcoming deadline however, it is essential that these steps are taken promptly.

Appoint a single UK agent to manage your UK trade mark portfolio.

Following a change of practice at the UKIPO, failure to appoint a UK address for service risks that important correspondence from the UKIPO is not received and any deadlines missed. You can find out more about the importance of this change of practice here.

Furthermore, a UK agent will have specific knowledge of UK trade mark law, processes and, in particular, how to mitigate the risk of any loss of rights as a result of the upcoming Cloned Mark deadline.

By appointing a single UK agent, you can ensure that your UK trade mark portfolio (including any Cloned Marks) is protected, managed effectively and that you will not unintentionally lose important brand rights come the deadline.

Need help?

Taking control of your trade marks is very much about creating a legal asset in your brand and is crucial to maximising revenue in your business. Our Intellectual Property experts are here to support you in your journey and assist you in taking control from a legal point of view.

Please get in touch to find out how we can help you and your business.