An autumn of action for trade mark owners

Brexit non-use deadline imminent

31 December 2025 will mark five years since the end of the Brexit transition period. This is significant in the world of trade  marks, as UK and EU trade marks become vulnerable to being revoked after five years of non-use. Therefore, as well as marks which have not been used at all in the period since 1 January 2021, the following marks will become vulnerable:

• EU marks which have been used in the UK in that period but not in the EU. UK use is not enough to maintain an EU mark; and
• UK marks which have been used in the EU in that period but not in the UK. EU use is not enough to maintain a UK mark. 
  • This includes 'comparable marks' which were granted automatically upon Brexit, on 1 January 2021, and are UK equivalents of EU marks which were registered as at 31 December 2020.  These will all be five years old. They can be identified by their numbers which will begin with 9 for comparables of EU marks, and with 8 for comparables of international marks designating the EU.

It is important to check whether use has been made of marks in the right jurisdiction. Where use has not been made in either jurisdiction of marks which you want to maintain there, serious consideration should be given to whether you can now commence use of them, in advance of the deadline. Use must be genuine commercial use; token use is not enough. Preparations to make genuine commercial use can also count.

Furthermore, if such marks form the basis of an opposition or invalidity action, it may be worth seeking to conclude those proceedings before the marks become vulnerable to revocation. If a mark forming the basis of opposition or invalidity proceedings is attacked for non-use, it may be that the proceedings are stayed pending resolution of the revocation and of course, if the underlying mark is revoked, the proceedings based on it will be lost.

Finally, consideration could be given to filing a new application for marks which have not been used, where there is a solid commercial rationale to doing so.

Abolition of series marks

In Brief

The UK Intellectual Property Office (UKIPO) will soon cease accepting applications for series trade marks in the UK. Series trade marks which are already registered will continue to be registered. No firm deadline for the change has yet been given but anyone wishing to file a new UK series mark is advised to do so sooner rather than later.

Benefits and challenges of series marks

Series marks enable an applicant to make one UK trade mark application covering up to six variations of a mark, provided they are sufficiently close to each other. Section 41(2) Trade Marks Act 1994 (TMA) defines series marks as “a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non‑distinctive character not substantially affecting the identity of the trade mark”.

Note that there is no EU equivalent to UK series marks.

Series marks offer convenience and cost efficiency in the management of trade mark portfolios, as only one registration has to be docketed and maintained. They also offer applicants flexibility to test out slightly different versions of a mark without having to commit to the full spend involved in making multiple applications. 

However, from the UKIPO's perspective, they can also bring problems. Significant proportions of series trade mark applications receive objections; UKIPO data says that in 2022, 39% of series mark applications filed by unrepresented applicants were objected to, as were 17% of series mark applications filed by represented applicants. The more marks are applied for in a series, the higher the objection rate.  

No refunds are given for series mark applications which are rejected entirely or partly (i.e. where variations are deleted during the examination process).  The UKIPO feels this is financially disadvantageous to applicants, and it points out that "[t]he additional time spent processing these applications has resource implications for the IPO. It can also lead to processing delays."

Consultations on series marks​​​​​

A consultation on series marks in 2009 led to tweaks to the system, including reducing the number of marks which could be filed as part of a series to six (from 999, and with extra fees beyond two). However these tweaks did not resolve the perceived issues and in 2023, the government, via the UKIPO, included questions on series marks in its second consultation on its proposed digital transformation programme. The government's response to that consultation was published in April 2025 and confirms the government's intention to remove the ability to apply for series marks. It was noted that many respondents had supported keeping series marks; however, the evidence provided was not sufficient to overcome the perceived issues with and disadvantages of the system.

Existing series mark registrations will remain valid.

When will series marks stop being accepted?

No firm timeline has yet been given on when series mark applications will stop being accepted. However, it seems prudent to expect it could be as early as autumn/winter 2025. 

The UKIPO has said: “The series marks service will only be discontinued for new applications when the new digital trade marks service is launched”, and in its last update, dated 10 September 2025, it said "we will start work on our new digital trade marks service soon". It is not known how long that work is scheduled to take, but the digital transformation work in general continues apace; the new One IPO patents service is currently being piloted and is expected to launch in early 2026, while the One IPO patents search service launched in January 2025.

Can I rely on "permissible variants" instead?

Section 46 TMA sets out that "use of a trade mark includes use in a form (the ‘variant form’) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered".  It therefore allows businesses to rely on marks similar to the mark registered, both for infringement and to prove use of the registered mark, and it could be that in practice this provides some of the flexibility which series marks have provided to date.  It appears that scope to vary a mark may be reasonably broad in practice; see here our analysis of two recent Court of Appeal judgments in cases brought by easyGroup which at first instance had taken contradictory views, on the same facts, on whether or not variants of a trade mark were permissible: Court of Appeal "easily" reconciles High Court's contradictory outcomes on permissible variants and partial revocation. However, the certainty of a registration is surely preferable as a first line of defence.

Our advice

1. Review your trade mark portfolio to identify any marks becoming vulnerable to non-use as a result of the Brexit anniversary, and take appropriate action.
2. Consider whether you would like to make a series trade mark application, and if so, make it as soon as possible.

If we can help you navigate these developments please do get in touch with your usual contact or via IP@fieldfisher.com