While the initial effects of Brexit on trade mark and design registrations are baked into our consciousness, one noteworthy aspect will only take effect at the start of next year. Trade mark and design owners should consider appointing a UK address for service to reduce the risk of third-party challenges being successful by default.
It is currently the case that every new trade mark or design application filed directly before the UKIPO requires an Address for Service in the UK, Gibraltar, the Channel Islands or Isle of Man (UK AFS). It is to this address that official documents will be sent, such as registration certificates, notices of opposition or applications for invalidation. The UK AFS can be any address associated with the owner or, indeed, be the address of its representative, such as a UK Trade Mark Attorney.
However, there are two categories of UK-effective trade mark and design rights that may not have a UK AFS, namely:
- UK comparable trade marks and designs created automatically on 1 January 2021 to correspond to EU registrations that no longer had effect in the UK following Brexit. Many of these registrations retained the EU addresses of their owners or EU representatives.
- UK designations of International Registrations
Bar the below-mentioned exemption, where there is no UK AFS and those rights become subject to challenge, the UKIPO will write to the non-UK address requesting a UK AFS, within one month. Should a UK AFS not be provided in good time, opposed applications will likely be treated as withdrawn, and registrations subject to attack will ultimately be considered surrendered without any input from the owners.
For further reading, readers are directed to Amelia Skelding's article from February 2023: https://www.keltie.com/knowledge/ukipo-requires-uk-address-for-service-for-international-tms-and-designs).
Changes from 1 January 2024
Following Brexit, UK comparable trade marks and designs created from EU rights had been exempt from the requirement to provide a UK AFS, i.e. they could maintain EEA addresses. However, this will change from 1 January 2024 when the UKIPO will need a UK AFS for such rights in circumstances where:
- the trade mark or design is involved in any invalidation, rectification, or revocation proceedings launched on or after 1 January 2024;
- the owner wishes to change the address for service.
Again, should a UK AFS not be provided within the one-month timeframe provided by the UKIPO, the challenged right will likely be terminated by default.
To ensure matters are handled in a timely manner, and to avoid the risk of losing valuable UK rights by not providing a UK AFS in good time, we recommend that owners of comparable UK trade marks and designs appoint a UK-based address of service prior to 1 January 2024.
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.