Following Brexit, many trade mark owners now hold two UK registrations for the same mark: one originally filed directly with the UKIPO, and one automatically cloned by the UKIPO from EU Trade Marks that were registered by 31 December 2020 (the end of the Brexit transition period). Although this duplication was automatic at the time, trade mark owners are now faced with a decision: should both UK registrations be maintained, or is one sufficient?
This question often arises when owners begin to consider upcoming renewals. Each UK registration - whether a national filing or a cloned right - must be renewed independently. As a result, maintaining both registrations involves paying two sets of renewal fees and managing two distinct renewal processes, which can increase both administrative burden and cost. It is also rare for the renewal dates to coincide between the national filing and the cloned right, which can sometimes serve to hide any duplication.
When faced with this situation, there are a number of important factors that we recommend that trade mark owners should consider when deciding whether to retain both registrations:
1. Compare the Marks
It may sound rather obvious, but it is important to ensure that the marks protected by the duplicate registrations are actually the same. Or are they perhaps a word mark and a lowly-stylised version of the same name? If the marks are different, then it may be appropriate to retain both registrations if the marks remain in use.
There may also be a more nuanced factor to consider here. Trade mark registrations for names (or word marks) are often presented and registered in capital letters (e.g. MEWBURN ELLIS). This is a recognised convention for not claiming any particular arrangement of upper or lower case letters and gives a little more flexibility with how the trade mark owner can use the mark. If the other registration is for a more precise arrangement of the name (e.g. Mewburn Ellis), then this could be a factor in favour of retaining the capital letter version.
2. Compare the Goods and Services
Trade mark owners should carefully compare the specifications of goods and/or services listed in both registrations.
While the cloned UK registration mirrors the specification of the ‘parent’ EU registration, it may differ from the UK national filing for the same mark. If the goods and services covered by both registrations are identical or substantially overlap, it may not be necessary to maintain both.
However, if one registration includes broader coverage, is more commercially relevant, or better reflects the business’s current and/or future plans, this may influence which registration should be prioritised.
Furthermore, if one registration covers goods and/or services that are no longer relevant – perhaps in other classes – then it may be appropriate to discount any such items from the consideration, so that they do not unduly influence the decision.
3. Check Filing and Priority Dates
Given that cloned UK registrations retain the original EUTM filing and priority dates, there may be some discrepancy between the dates of the two UK registrations. An earlier filing date could offer longer-standing rights in enforcement or opposition proceedings. Trade mark owners should therefore assess whether either registration offers stronger legal protection based on its filing history.
4. Consider Existing Licenses and Agreements
Right holders should also carefully consider whether either (or both) of the duplicate registrations are the subject of or are explicitly referred to in any licences or other agreements. If this is the case, then it would seem to be important to retain any such registrations in order to maintain the validity of those agreements and so avoid the need to renegotiate terms.
5. Consider Use and Vulnerability to Cancellation
One of the more time-sensitive considerations is whether the trade mark has been genuinely used in the UK. Under both UK and EU trade mark law, a registered mark becomes vulnerable to revocation if it has not been put to genuine use in the relevant territory for a continuous period of five years in relation to the goods and/or services for which it is registered.
For national UK registrations, the relevant territory is evidently limited just to the United Kingdom.
But for Brexit cloned UK marks, a transitional grace period has allowed owners to rely on use of the mark within the EU until 31 December 2025, in order to demonstrate genuine use in the UK. However, when the relevant 5-year non-use period ends on 1 January 2026 or later (which may soon begin to arise), only use of the mark within the UK will be taken into account when assessing whether a cloned UK registration has been genuinely used.
Whilst this consideration will therefore soon become less relevant, for the time-being at least, retaining the cloned UK registration will give greater scope for proving genuine use (and indeed a reputation in the mark).
7. Extended Protection to Gibraltar
A subtle yet important distinction between cloned and national UK registrations is that cloned UK marks extend to Gibraltar, reflecting the territorial scope of the original EUTMs. If trade mark protection in Gibraltar is commercially important, this may be a reason to retain the cloned registration.
Concluding Comments
Unfortunately, there is no one-size-fits-all answer; the decision should be based on a careful assessment of the commercial relevance, legal strength, and strategic value of each registration and including a consideration of the various factors discussed above.
If you would like assistance reviewing your trade mark portfolio or advice tailored to your specific circumstances, please do not hesitate to contact our Trade Mark team who would be delighted to help.
This blog is co-authored by Paris Ware-Lane and Andy King.
Paris Ware-Lane
Paris is a trainee trade mark attorney and a member of our trade mark team. Paris graduated in 2024 with a BA in French and Classics (Latin and Ancient Greek) from the University of Edinburgh. She also holds a MA in Law (Conversion) from the University of Law. Her dissertation critically evaluated the UK courts' assessment of single-colour trade marks. Paris joined Mewburn Ellis LLP as a Trainee Trade Mark Attorney in 2025.
Email: paris.ware-lane@mewburn.com
