Brexit and Comparable UK Marks: Why Old EUTMs Are Now UK Obstacles

When the United Kingdom left the European Union on 31 January 2020, existing EU trade marks (EUTMs) ceased to have effect in the UK. To prevent a sudden loss of rights, the UK government created comparable UK trade marks — automatic clones of every EUTM that was registered at the end of the transition period on 31 December 2020. These comparable marks now function as independent UK national rights, and they can block new UK applications just like any other earlier mark on the register.

What Are Comparable UK Trade Marks?

A comparable UK trade mark is a standalone UK registration that was automatically created from an existing EUTM as part of the Brexit transition. Every EUTM that was registered as of 31 December 2020 received a corresponding UK mark, free of charge and without any action required from the owner.

These comparable marks retain the original filing date and priority date of the parent EUTM. They are fully independent rights — they can be enforced, licensed, assigned, and renewed separately from the original EU registration.

The Legal Basis

Comparable UK marks were created under the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, as amended. The regulations provided for the automatic creation of a UK right that mirrors the EUTM in terms of the mark itself, the goods and services covered, and the filing and priority dates.

The comparable mark carries a UK registration number that is different from the original EUTM number, prefixed with “UK009” followed by the original EUTM number.

Why This Matters for New Applicants

The practical effect is that the UK register now contains thousands of additional earlier rights that did not exist as UK national marks before Brexit. A brand that previously only held an EUTM — and therefore had no separate UK filing — now has an independent UK right that can be cited against new applications.

For anyone filing a new UK trade mark, this significantly increases the number of potential conflicts. A comprehensive clearance search must now account for these comparable marks, many of which belong to European companies that may not actively trade in the UK but still hold enforceable rights.

Comparable Marks as Grounds for Opposition

Comparable UK marks function identically to any other UK registration in opposition proceedings. The owner of a comparable mark can oppose a new UK application on the grounds of likelihood of confusion under Section 5(2) of the Trade Marks Act 1994, or on the basis of reputation under Section 5(3).

The fact that the mark was created automatically rather than filed directly does not reduce its legal weight. It carries the same enforcement power as a mark that was deliberately applied for and examined by the UKIPO.

The Non-Use Vulnerability

There is, however, an important counterbalance. Comparable UK marks are subject to the standard UK non-use provisions. A trade mark that has not been genuinely used in the UK for a continuous period of five years can be revoked.

Because comparable marks inherited the filing date of the parent EUTM, many of them are already more than five years old. If the owner has never actually used the mark in the UK, the comparable mark is vulnerable to a revocation action. This is a critical strategic tool for applicants who face an opposition from a comparable mark with no genuine UK use.

Pending EUTM Applications at Brexit

EUTMs that were still pending (not yet registered) as of 31 December 2020 did not receive an automatic comparable UK mark. Instead, the applicant was given a nine-month window to file a corresponding UK application while retaining the original EUTM filing date.

If the applicant did not file within that nine-month period, no UK right was created. This means that some EUTMs filed before Brexit have no UK counterpart, creating gaps that new applicants may be able to exploit.

International Registrations Designating the EU

International trade marks registered under the Madrid Protocol that designated the EU were also affected by Brexit. These registrations received comparable UK trade marks on the same basis as directly filed EUTMs.

For international registrations that were still pending at the end of the transition period, the holder had to file a separate UK designation or a national UK application to preserve their rights.

Strategic Implications

• Expanded search scope: UK clearance searches must now include comparable marks. Failing to account for them risks an unexpected opposition.
• Non-use as a defence: If a comparable mark is cited against your application, investigate whether the owner has genuinely used the mark in the UK. If not, a revocation action may eliminate the obstacle.
• Dual filing strategy: Companies that held an EUTM before Brexit and wish to maintain UK protection must now manage two separate rights — the EUTM for the EU27 and the comparable mark (or a fresh UK filing) for the UK.
• Renewal obligations: Comparable marks must be renewed independently from the parent EUTM. Missing a UK renewal deadline will result in the loss of the UK right.

Common Mistakes

• Ignoring comparable marks in searches: Many applicants still search only for directly filed UK marks, missing thousands of comparable rights.
• Assuming comparable marks are weak: They carry the same legal force as any UK registration, including original filing dates that may predate the applicant’s mark by years.
• Failing to challenge non-use: Many comparable marks have never been used in the UK. A revocation action is often the most effective way to clear the path.
• Neglecting dual management: Owners of comparable marks must manage them separately from their EUTMs, including separate renewals, assignments, and enforcement actions.

Key Takeaway

Brexit created a parallel layer of UK trade mark rights that applicants and brand owners must now account for. Comparable UK marks are real, enforceable rights that can block new applications, even if the owner has no commercial presence in the UK. For new applicants, thorough clearance is essential. For owners, managing these rights — or challenging their non-use — is a critical part of any post-Brexit UK trade mark strategy.