30/11/2020
Headline Points
The rules governing address for service for intellectual property rights in the United Kingdom will change after the UK exits the European Union on 1 January 2020. Subject to legislative implementation, which is expected this week, from 1 January 2021 the UKIPO will no longer accept addresses in the EEA as a valid address for service. As a result, any party wishing to file an application for a trade mark, patent or registered design will need to appoint an address for service within the UK, Gibraltar or the Channel Islands.
The changes will also affect other procedures relating to existing rights such as oppositions, cancellation actions and rectifications. Any party wishing to commence or contest contentious proceedings before the UKIPO based on prior existing rights will also need to provide an address for service within the UK, Gibraltar or the Channel Islands.
Trade Marks
Applications
From 1 January 2021, any application for a trade mark filed at the UKIPO must have an address for service in the UK, Gibraltar or the Channel Islands. This also applies to applications for UK trade marks filed during the first nine months after 1 January 2021 that claim the filing or priority date of an earlier EUTM application.
Contentious Proceedings
Any contentious proceedings commenced after 1 January 2021 that are based on prior existing rights, or rights that were not created as part of the Brexit process, the UKIPO will require an address for service in the UK, Gibraltar or the Channel Islands in order for the party to engage in the proceedings. This does not apply to proceedings that have commenced before the Office prior to 1 January 2021 and are ongoing. In these cases, the UKIPO will not require the parties to provide an address for service the UK, Gibraltar or the Channel Islands.
Comparable Rights
Owners of comparable UK rights (clones) that have been created as a result of owning an existing EUTM registration will need to provide an address for service in the UK Gibraltar or the Channel Islands as of 1 January 2024. Additionally, if such rights are involved in contentious proceedings, the UKIPO will not require a new address for service initially, but will do so on or before 1 January 2024.
N.B. the above does not apply to comparable UK rights that are created as a result of owning an existing EUTM designation of an international trade mark. Owners of these rights will need to provide an address for service the UK, Gibraltar or the Channel Islands as of 1 January 2021.
Post Registration Actions
All post registration actions, with the exception of the following, will require an address for service the UK, Gibraltar or the Channel Islands as of 1 January 2021.
- renewing a registration
- surrendering a registration
- adding details of a licence agreements
- changing address details
- correcting an error or omission in the register
Registered Designs
Applications
From 1 January 2021, any application for a registered UK design or a deferred registered Community design filed at the UKIPO must have an address for service in the UK, Gibraltar or the Channel Islands. This also applies to applications for UK registered designs filed during the first nine months after 1 January 2021 that claim the filing or priority date of an earlier Community Design.
Contentious Proceedings
If a registered UK design is challenged via a revocation or an invalidity action on or after 1 January 2021, the UKIPO will require that the owner provide an address in the UK, Gibraltar or the Channel Islands to engage in the proceedings.
Comparable Rights
Owners of comparable UK rights (clones) that have been created as a result of owning an existing Community Design registration will need to provide an address for service in the UK Gibraltar or the Channel Islands as of 1 January 2024. Additionally, if such rights are involved in contentious proceedings, the UKIPO will not require a new address for service initially, but will do so on or before 1 January 2024.
N.B. the above does not apply to re-registered designs created from international designs designating the EU. Owners of these rights will need to provide an address for service the UK, Gibraltar or the Channel Islands as of 1 January 2021.
Patents
Applications
From 1 January 2021, any application for a UK patent filed at the UKIPO must have an address for service in the UK, Gibraltar or the Channel Islands.
European Patents
Granted European Patents which designate the UK are transferred onto the UK Register automatically. No validation is required. They are transferred with the applicant’s details only, as the UK IPO must have authorisation before it can recognise any representative. This will not change after 1 January 2021.
From 1 January 2021 if the owner wishes to appoint a representative, they will need to have an address in the UK, Gibraltar or the Channel Islands. In the event that the owner already has a UK address for service for its European Patent (for example, the address of a UK representative who acted for you at the European Patent Office) The UKIPO will still require authorisation for that representative so that it can be sure they are acting for the owner in the UK.
Contentious Proceedings
If any challenge is made to a UK granted patent after 1 January 2021, it will be necessary provide an address for service in the UK, Gibraltar or Channel Islands.
Renewals and Post Registration Actions
The owner of a granted patent will not need to file a UK, Gibraltar or Channel Islands address if they wish to renew it.
For all other post registration actions relating to a granted patent, the owner will require an address for service in the UK, Gibraltar or the Channel Islands.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
