Trade mark use for long-lead products: lessons from the Marcos decision

A recent UK trade mark appeal decision before the Appointed Person offers useful guidance for businesses developing brands in sectors where products take years to bring to market, such as automotive, engineering, and other build-to-order industries.

The case highlights both the flexibility and the limits of the “genuine use” requirement under UK trade mark law and reinforces a key message for brand owners: registration is not a “file and forget” exercise.

Background

Marcos Cars Limited owned a UK trade mark covering, among other things, vehicles in class 12 and clothing in class 25. The mark became the subject of revocation proceedings on the basis of non-use.

While the business had not sold any cars under the mark during the relevant periods, it had developed a prototype vehicle, displayed it at events, promoted it online, and even taken an order for a car (although production had not begun).

At first instance, the Hearing Officer found that this activity did not amount to genuine use. On appeal, that finding was revisited.

Genuine use without sales: possible, but not automatic

A key takeaway from the appeal is that genuine use can, in appropriate cases, be established even where no sales have been made.

The Appointed Person confirmed that in niche markets, particularly for specialist or low-volume products, the absence of sales is not determinative. The decision draws on established case law recognising that certain sectors are characterised by:

• low demand;
• production to specific order;
• limited volumes; and
• lengthy development cycles.

In those circumstances, genuine use may be established through:

• preparatory steps (such as developing prototypes);
• outward-facing promotional activity; and
• evidence that the product is being actively brought to market.

Applying this framework, the appeal decision found that the company’s activities, including public exhibition of a prototype, press coverage, social media activity, and taking a bona fide order, were just sufficient to establish genuine use for motor cars in class 12.

The critical role of outward-facing activity

However, the decision also makes clear that not all preparatory activities will qualify.

The emphasis is on external, market-facing conduct. Internal steps, or activity lacking visibility to customers, will not be enough. The use must be consistent with the essential function of a trade mark identifying origin and creating or preserving a market presence.

In practical terms, this means businesses should ensure they are generating:

• visible engagement with the market;
• evidence of customer targeting; and
• documented promotional efforts.

Without this, even substantial development work may not count.

Promotional goods: use must match the registered goods

The position was very different for the class 25 clothing. Although the mark had been applied to branded clothing, there was no evidence of meaningful commercial activity in clothing as a product category. Instead, the clothing was used primarily for promotional purposes in support of the vehicles.

The appeal confirmed that this kind of use will not maintain protection unless the business is genuinely creating a market for the goods themselves. Promotional use tied to another product line is not sufficient.  

As a result, the registration was revoked in full for class 25.

Partial revocation and narrowing of protection

Even within class 12, protection was not preserved across the full specification. The evidence supported use only in relation to “motor cars”, not the broader categories originally claimed (such as engines, parts or other vehicles). The registration was therefore restricted accordingly.

This illustrates the real risk of overbroad specifications where use is limited in practice.

Key takeaways for businesses

This decision offers several practical lessons:

• Registration is only the starting point: Rights must be maintained through genuine commercial use.
• Long development timelines require planning: If a product may not reach market within five years, businesses should actively build a public-facing presence early.
• Document everything: Evidence of exhibitions, media coverage, customer engagement and orders can be critical.
• Match the specification: Protection will only survive for the goods and services actually supported by genuine use.
• Promotional use has limits: Branding on merchandise will not preserve protection unless there is a real market for those goods.

Conclusion

The Marcos decision underlines that trade mark strategy must evolve alongside product development. For businesses operating in niche or long-lead sectors, early and visible market engagement is not just commercially beneficial, it can be decisive in preserving valuable IP rights.

A well-planned approach to use, evidence and specification can make the difference between retaining meaningful protection and facing substantial revocation.