There have been many important changes to IP due to Brexit, as outlined in our recent update. As mentioned in this update, one important change relates to the way in which the UK-IPO will communicate with IP rights owners. IP rights owners will need to be attentive to these changes to ensure that they are properly notified of any events that relate to their rights.
Registered IP rights in the UK (including patents, trade marks and designs) are associated with an "address for service", which is recorded on the relevant IP register. This address for service is used by the UK-IPO in written communication. It is important that the address for service is capable of receiving and processing important communications so that the IP owner is properly notified of any events or actions that relate to their IP right. This allows trade mark owners to be notified when someone opposes their trade mark application. Equally, it allows patent owners to be notified when a third party applies to revoke their patent.
Often IP owners use the address of a professional representative as their address for service. At GJE we act as address for service for many thousands of registered IP rights. We have systems and processes in place to receive and report official communications that are related to those rights.
Until recently the UK-IPO accepted an address for service that was located anywhere in the European Economic Area (EEA). This has now changed, due to Brexit, and from 1 January 2021 any new application will require an address for service that is located in the UK.
IP owners may need to update their procedures if they have been using an address for service that is outside the UK, since that will no longer be valid for new applications. The UK-IPO will not, however, require the address for service to be updated for all existing registered trade marks, designs and patents; an address for service that is within the EEA but outside the UK can continue to be used where that right remains on the register and there are no actions or proceedings related to it. If, however, the right is challenged then a UK address for service will need to be supplied, otherwise the IP right may be lost without any involvement from the owner.
Full details on the new legislation on address for service are can be found on the UK-IPO website. Now that the UK has left the European Union it is more important than ever to seek specialist advice for IP rights in the UK from a qualified UK patent or trade mark attorney.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.