The UK Intellectual Property Office (UKIPO) has renewed attention on trademark “evergreening” in its latest tribunal practice developments dated 26 August. The concern is familiar: a proprietor nearing the point at which genuine use must be shown files a fresh application for the same or substantially overlapping mark, potentially seeking a new five-year grace period. Existing UKIPO case law does not treat repeat filing as automatically bad faith, but where the evidence suggests that a refiling was intended to avoid genuine-use obligations, that purpose can become a significant factor in a bad-faith assessment under section 3(6) of the Trade Marks Act 1994.
For brand owners, the practical issue is not whether refiling is permissible in the abstract, but whether the commercial rationale for doing so can be explained and evidenced. A repeat application that closely mirrors an older registration, particularly where genuine use is weak or absent, may face closer scrutiny in revocation, opposition or invalidity proceedings and may also increase costs exposure. Portfolio strategy should therefore link renewals and refilings with genuine-use evidence management rather than treating a fresh filing as a simple way to reset the non-use clock.
