Posted on February 06, 2024
It is now more than 3 years since the effective date of Brexit. Until 1 January 2024, the UKIPO had allowed representatives based in the EEA to perform all actions before the UKIPO in relation to marks and designs which were cloned from EUTMs, EU Designs or EU Designations under the Madrid or Hague systems. The UKIPO has confirmed that owners and their EEA representatives may remain as agent and address for service on the UK register for these cloned rights for the time being. However, if those cloned rights are involved in any invalidation, rectification, or revocation proceedings launched on or after 1 January 2024, then it will be necessary to appoint a UK address for service to act in those proceedings. (For the reasons why it would make sense, even if it is not yet strictly necessary, to appoint a UK agent for all cloned rights now, please see our previous newsletter).
To facilitate the appointment of UK addresses for service in relation to UK cloned rights, the UKIPO is currently offering three ways for recordal applications to be filed at the UKIPO:
• Global update - where a representative (but not owner) is changing all the designs and/or trade marks currently with a single EEA address for service to a single UK address for service. In other words, if an EEA firm instructs a UK firm to assume responsibility for all of their clients’ UK cloned rights where the EEA firm is currently the UK address for service, then this is the option to take.
• Bulk update – where at least 50 TM cases (but not designs) are relevant and they currently have common EEA representation (rather than ownership). In the notional example above, the EEA firm might want two different UK firms to become address for service for two of its clients, for example client A (with 100 cases) and client B (with 50 cases). This would be the preferred option for those recordals.
• Standard update – using the standard official forms provided by the UKIPO for the appointment of new representatives. This would be the option for smaller portfolios of marks and designs.
If we can be of assistance to you in taking over representation for your client’s cloned UK rights, please let us know.
We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys.
If we can be of assistance to you in taking over representation for your client’s cloned UK rights, please let us know.
