UK address for service rules – latest update regarding comparable UK Trade Marks derived from EU Trade Marks

We recently reported the decision of the Appointed Person in MARCO POLO (O/681/22) (see our newsletter here) and the UKIPO’s new Tribunal Practice Notice (which can be found here), relating to address for service rules and correct service of documents (see also our previous newsletter).

In view of the upcoming ‘deadline’ of 31 December 2023 for EU representation of cloned UK Trade Marks, and due to incorrect information being circulated, we set out below an update on the address for service rules following Brexit.

The current address for service rules

UK Applications filed after 1 January 2021

An address for service in the UK, Gibraltar or Channel Islands is required when filing a new UK Trade Mark or Design Application, and when filing an opposition, cancellation or invalidity action against a third party’s Application or Registration.

Existing UK Registrations and Applications filed before 1 January 2021

A UK address for service is also required for existing UK Trade Marks and Designs in all contentious proceedings such as oppositions, invalidity applications and revocation actions.

If your right is challenged, and your address for service is outside the UK, the UKIPO will ask you to provide an address in the UK, Gibraltar or the Channel Islands within a period of one month, if you wish to defend your rights. If you fail to do this, then the proceedings against your Trade Mark/Design could succeed and you could lose your right.

UK Designations of International Trade Marks and comparable UK Trade Marks derived from EU Designations of International Trade Marks

For UK Designations of International Trade Marks, which would not ordinarily have a UK representative at the time of filing, the UKIPO will initially notify the WIPO representative or the Holder by post of any opposition, cancellation or revocation action. This could delay receipt of official notifications and result in the Trade Mark being inadvertently lost (see our report following the Marco Polo case here).

Once a UK address for service has been provided, the UKIPO will serve the relevant Notice on the applicant/proprietor. If no address for service is appointed within that one month period, the UK Designation may be deemed withdrawn or declared invalid.

Accordingly, it is advisable to have an address for service in the UK for all UK Trade Marks and UK Designations.

UKIPO address for service rules for cloned UK Trade Marks, derived from EU Trade Marks – what is changing on 1 January 2024?

Under special arrangements made in the Withdrawal Agreement, EU representatives could continue to act as the address for service in respect of comparable UK Trade Marks for a period of three years after Brexit, until 31 December 2023.

However, from 1 January 2024, the same rules, as set out above, will apply to all EU derived comparable UK Trade Marks where no UK address for service has been appointed. This means that an address for service in the UK will be required for any contentious proceedings.

Please note that there is no absolute requirement to appoint a UK representative for all existing UK Trade Marks or Designs.

We would, however, always advise having an address for service in the UK for UK Trade Marks or Designs, and the new Tribunal Practice Notice highlights the importance of appointing an address for service as soon as possible, in order to ensure that official correspondence from the UKIPO is safely received, and that there is no risk of unintentionally losing your UK Trade Mark/Design.

Whilst it is not mandatory, other than in inter partes proceedings, we would therefore recommend that the owners of any UK Designations or comparable UK Trade Mark Registrations derived from EU Trade Marks appoint a UK address for service as soon as possible.

If you would like any further information regarding the address for service rules or any other trade mark matters, we would be very pleased to assist; please contact Rebecca Atkins or any member of the A+I Trade Marks team.