UK updates 'address for service' guidance for post-Brexit comparable TMs
UK Intellectual Property Office releases new guidance on rules for 'address for service' required for comparable trademarks and re-registered designs | Changes affect comparable trademark rights created from EU-wide rights following Brexit.
The UK Intellectual Property Office (IPO) has released updated guidance explaining the rules governing the ‘address for service’ required for IP rights in the UK.
These changes affect rights created from EU-wide rights following the UK’s departure from the EU in January 2020.
The updated guidance, published on Friday, September 1, details changes to the 'address for service' requirements for’ comparable trademarks and re-registered designs, and will take effect from January 1, 2024.
This follows the provision within the Brexit withdrawal agreement of a three-year ‘grace period’ for the UK to make these changes.
New rules
Primarily, if an applicant wishes to change the address for service recorded against a comparable trademark or re-registered design—provided the right was not derived from an international registration—on or after January 1, 2024, the IPO will require a new address in the UK, Gibraltar or the Channel Islands.
The IPO will also require a UK, Gibraltar or Channel Islands address for service for all comparable trademarks or re-registered designs involved in any invalidation, rectification, or revocation proceedings launched on or after that same date, provided the right was not derived from an international registration (which already requires a UK, Gibraltar, or Channel Islands address in these circumstances).
For proceedings started on or before December 31, 2023, the IPO said that there is no obligation to provide a UK, Gibraltar or Channel Islands address for service on existing registered comparable rights not derived from an international registration.
However, applicants can change an EEA (European Economic Area) address for service to a UK, Gibraltar or Channel Islands address if they wish.
An IPO spokesperson said of the updated rules: “Most customers with comparable rights will not need to take any action.”
However, they reiterated that: “Owners of comparable trade marks and re-registered designs will only need to provide a UK, Gibraltar or Channel Islands address for service from January 1, 2024 if they enter contentious proceedings, such as invalidation or rectification.
“A UK, Gibraltar or Channel Islands address for service will not be required to renew a comparable right.”
Owners of comparable rights requiring further information can get in touch with the IPO’s Information Centre by emailing: information@ipo.gov.uk.
An address for service is an address at which an IPO customer can receive correspondence from the office or third parties regarding an application or registered right.
It can be any address with which the customer or their business is associated.
Failure to provide a valid address for service could result in an application being treated as withdrawn, according to the IPO.
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