Address for Service for Intellectual Property Rights
When the UK left the EU with effect from 1 January 2021, the UK Intellectual Property Office (UK IPO) set out guidance surrounding the requirements of an address for service for UK intellectual property rights for the following three years until 1 January 2024, in particular for comparable trade marks and designs.
The UK IPO has just issued fresh guidance to consolidate evolving practice and to govern what will happen from 1 January 2024.
The UK IPO will require a UK address for service
Whilst an EEA address for service was acceptable for all matters pre-Brexit, following the UK’s departure from the EU and the decision of the ‘MARCO POLO’ case, the UK IPO requires a UK address for service (defined as UK, Gibraltar or Channel Islands, abbreviated to the UK for short), to be provided when new applications for patents, trade marks or designs are filed or when an existing right is challenged by a third party.
When is an EEA address for service still acceptable?
Patents – if an EEA address is recorded, it is not necessary to provide a UK address for service for renewing a patent or changing the address of the owner. All other actions require a UK address for service.
Trade marks and designs – if an EEA address is recorded, it is not necessary to provide a UK address for service for any of the following actions:
- renewal of the registration
- surrender of the registration
- recordal of any licence agreement
- changing the address of the owner
Comparable rights derived from EU Trade Marks (EUTMs) or designs (clones) – what is changing?
If you wish to change the address for service recorded against a comparable trade mark or re-registered design on or after 1 January 2024, the UK IPO will require a new address for service in the UK.
Owners of UK clone rights that were created from EU rights as a result of Brexit will need to provide a UK address for service, for all comparable trade marks or re-registered designs where they are involved in any invalidation, rectification, or revocation proceedings launched on or after 1 January 2024. The UK IPO will ask the owner to provide a UK address for service and if none is provided, then the proceedings could succeed, resulting in a loss of rights.
For proceedings started on or before 31 December 2023, there is no requirement to provide a UK address for service on existing registered comparable rights not derived from an international registration. However, you can change an EEA address for service to a UK address if you would like to.
Comparable rights derived from EU designations of international trade marks or Hague Designs – current practice
Following the Marco Polo decision, the UK IPO already requires a UK address for service if the registered trade mark or design, which derived from an EU designation of an international trade mark or Hague Design, is involved in any invalidation, rectification, or revocation proceedings.
If a UK right derived from an EU designation of an international registration and the address for service recorded on the UK register is one that is not in the UK, the UK IPO will issue communication through a mail delivered letter to said address, setting a one-month deadline for a UK address for service to be provided.
If you choose to change the existing address for service recorded against a comparable mark or re-registered design derived from an international registration, the new address for service will need to be in the UK.
Barker Brettell’s advice
Whilst a UK address for service is technically only required for new applications, certain recordals or when an existing right is challenged, many UK trade marks, designs and patents still have an EEA address for service and there is a risk that if they are challenged and they do not have a UK address for service, communication that a UK address for service is required may not be received and the UK right could be lost unintentionally.
We therefore recommend that a UK agent, such as Barker Brettell, is appointed now and in the future against all UK rights, including UK, Madrid and Hague designations to avoid any issues if the right is subject to attack. Processes should also be updated to ensure that this step is incorporated into prosecution matters before WIPO.
If you or your client would like assistance with recording Barker Brettell as the UK address for service or you would like to discuss this matter further, please do not hesitate to contact your usual Barker Brettell attorney or a member of our trade mark team.
