We posted some time ago (cast your minds back to December 2020, just before the end of the Brexit transition period (the Transition Period)) on the new rules on address for service for IP rights from 1 January 2021 (New rules on address for service for IP rights from 1 January 2021). The UK Intellectual Property Office (UKIPO) released guidance on this in November 2020, as a result of removing the reference to the European Economic Area (EEA) in the address for service rules.
That guidance set out that from 1 January 2021, only an address for service in the UK (including the Isle of Man), Gibraltar or the Channel Islands would be accepted for new applications and new requests to start contentious proceedings (including oppositions, revocations and invalidity actions) before the UKIPO.
Addresses outside the UK would no longer be accepted. The change applied across all registered IP rights (patents, trade marks and designs).
There were, however, transitional provisions in place in the new rules, allowing parties to continue using an EEA address in relation to applications or actions pending at the UKIPO at the end of the Transition Period (31 December 2020) and, for a limited three year period (to 1 January 2024), for actions relating to new UK 'comparable rights' (i.e. comparable trade marks and re-registered designs which were newly created UK national rights based on EU rights already registered at the end of the Transition Period).
UKIPO update on changes from 1 January 2024
As we approach 1 January 2024, the end of the three year grace period, the UKIPO published updated guidance on 1 September 2023.
Changes from 1 January 2024 for comparable trade marks and re-registered designs
The guidance reminds rightsholders that from 1 January 2024:
- If they own comparable trade marks or re-registered designs, they will need to provide a UK address for service if the rights are subject to contentious proceedings (e.g. invalidation, rectification, or revocation proceedings) launched on or after 1 January 2024 (provided the right was not derived from an international registration, which already requires a UK address for service in these circumstances). The UK, (Gibraltarian or Channel Isle) address can be the applicant's address or their legal representative.
- If they wish to change the address for service recorded against a comparable trade mark or re-registered design (provided the right was not derived from an international registration) on or after 1 January 2024, the UKIPO will require a new address in the UK, Gibraltar or the Channel Islands.
- For proceedings started on or before 31 December 2023, there is no obligation to provide a UK address for service on existing registered comparable rights (not derived from an international registration), but a registrant can change an EEA address for service to a UK, Gibraltar or Channel Islands address if they wish.
NB. These changes do not affect new applicants for UK rights, as they already need to provide a UK address for service.
The UKIPO has indicated that if a valid address for service is
not provided, it could lead to an application being treated as
Comparable trade marks and re-registered designs which derive from international registrations that designate the EU
If a registrant chooses to change their existing address for service recorded against a comparable mark or re-registered design derived from an international registration, the new address will need to be in the UK, Gibraltar or the Channel Islands.
If a registrant owns a comparable trade mark or re-registered design derived from an international registration, they will be required to provide a UK, Gibraltar or Channel Islands address if the registered right is involved in any invalidation, rectification, or revocation proceedings. A failure to do so may result in the proceedings against them succeeding (without their involvement) and they could lose their right.
If you would like any further advice on these new rules and how they may affect your business, then please do not hesitate to get in touch with the relevant contacts in the IP team.
With thanks to Trainee Solicitor, Haleema Punnu, for her contribution to this blog.
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.