There is a lot of incorrect information circulating regarding the UKIPO’s address for service rules for cloned UK Trade Marks following Brexit. We can confirm that, with effect from 1 January 2024, a UK address for service will be required for all new contentious proceedings involving cloned UK Trade Mark Registrations, derived from EU Trade Marks. This includes new oppositions, applications for invalidity and revocation applications.
What about cloned UK Registrations or UK Designations of Madrid Registrations, where there are no new proceedings?
There is no strict requirement to appoint a UK representative for all cloned UK registrations. However, in practice, and following the Marco Polo case, the new rules mean that if a cloned UK Trade Mark is challenged and there is no UK address for service, the UKIPO will notify the non-UK representative and the Proprietor will be allowed a period of one month to appoint a UK address for service. If that deadline is missed, the registration could be deemed to be invalid. Accordingly, we would recommend that a UK representative be appointed for all cloned UK Trade Marks, in order to ensure that all official notifications are safely received and to avoid the risk of Registrations being lost through cancellation.
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