With the Brexit transition period having expired on 31 December 2020, brand owners should be aware of important changes on addresses for service that took effect from 1 January 2021. These rules have important implications for the management and protection of brands in the UK.
UK trade mark applications made after 1 January 2021
- The UK Intellectual Property Office (UK IPO) has changed the rules on addresses for service. An address for service is an address used to correspond with the UK IPO and also for the purposes of proceedings under IP legislation.
- The UK IPO will no longer accept an address for service for new trade mark applications in the European Economic Area (EEA).
- Applicants that file a trade mark application after 1 January 2021 at the UK IPO must have an address for service in the UK, Gibraltar or the Channel Islands.
- This requirement also applies to UK trade mark applications which have been filed claiming an EU IPO filing date as set out in Article 59 of the Withdrawal Agreement between the UK and the EU. Where an application for an EU trade mark was filed, but not granted, before 31 December 2020, a UK trade mark application made by 30 September 2021 pursuant to this Article will be deemed to have the same filing date and date of priority as the corresponding trade mark application filed in the EU.
- Applicants for international trade marks which designate the EU, and which are subsequently applied for in the UK, must also have an address for service in the UK, Gibraltar or the Channel Islands.
UK trade mark registrations and applications already in existence before 1 January 2021
- There is no need for a brand owner to change an address for service if it already owns a registered trade mark where:
- the right is on the register, and has no actions or proceedings related to it, or
- the brand owner wishes to renew the trade mark.
- If you have an EEA address for service and were involved in proceedings starting before, and are still ongoing on, 1 January 2021, you will not need to change your address for service to the UK, Gibraltar or the Channel Islands to conclude them.
- If your registered trade mark is challenged (by means of revocation and/or invalidity proceedings) after 1 January 2021, the UK IPO will require an address for service in the UK, Gibraltar or the Channel Islands for you to engage in the proceedings. Failure to do so may mean that the proceedings could succeed (without your involvement) and you could lose your right.
- Pending trade mark applications may be challenged once published by opposition proceedings. If an application is challenged on or after 1 January 2021, the UK IPO will require an address for service in the UK, Gibraltar or the Channel Islands.
- If you wish to challenge a trade mark application by opposition proceedings, the UK IPO will require an address for service in the UK, Gibraltar or the Channel Islands, unless your challenge is based on a ‘comparable right’, i.e. UK rights based on EU rights (see below).
- If you wish to challenge a registered trade mark, the UK IPO will require an address for service in the UK, Gibraltar or the Channel Islands, unless your challenge is based on a ‘comparable right’.
Special rules for comparable trade marks (i.e. UK trade marks based on EU rights)
- The Withdrawal Agreement means the UK IPO will not require a UK, Gibraltar or Channel Islands address for service in any new contentious proceedings relating to comparable rights for a period of three years – even if those proceedings were started on or after 1 January 2021.
- From 1 January 2024, the UK IPO will, however, require a UK, Gibraltar or Channel Islands address for service relating to comparable rights where new contentious proceedings are commenced.
International registrations derived from comparable trade marks
- The three-year retention of an EEA address does not apply to comparable trade marks created from international trade marks. A UK, Gibraltar or Channel Islands address for service will be needed if contentious proceedings arise in respect of such trade marks.
How can we help?
In light of the changes to the rules on address for service, MacRoberts can act as your representative/address for service for your UK trade mark portfolio. Our brand protection experts can also help you with all your brand protection needs in the UK.
To find out more, please get in touch with our specialist Intellectual Property team.