New UKIPO requirements – everything you need to know
From January 1, 2024, the United Kingdom Intellectual Property Office (UKIPO) will require a UK address for service when starting new contentious proceedings against a UK comparable trade mark or re-registered design. If a UK address for service is not provided, this may result in the loss of rights for the holder.
What are UK comparable trade marks and re-registered designs?
When the UK left the EU, the UKIPO established UK comparable trade marks and re-registered designs. This allowed for existing EU trade marks and registered Community designs to be cloned to create "comparable" UK trade marks and re-registered designs. These UK rights have the same legal status as if they were originally applied for and registered under UK law. They are independent rights that can be challenged, assigned, licensed, or renewed separately from the original EU rights.
When will a UK address for service be required?
From January 1, 2024, the UKIPO will require a UK address for service when launching any new contentious proceedings (e.g. oppositions, invalidations, and rectifications) against UK comparable trade marks or re-registered designs. If an application is submitted without a UK address for service, the UKIPO will request the registered owner to provide one.
If an application to invalidate, revoke, or rectify a comparable trade mark or invalidate a re-registered design is received without a UK address for service, then the UKIPO will send a written notification to the registered owner, requesting them to provide a UK address for service.
What happens if a UK address for service is not provided?
If a UK address for service is not provided, then the UKIPO may interpret that the registered proprietor is not contesting the action. This could lead to the severe consequences for those trade mark and design rights as the registration could be declared invalid, revoked, or rectified.
What is the deadline to provide a UK address for service?
The UKIPO will issue a communication instructing the rights holder to provide an address for service. The rights holder will have one month from the date specified on the communication in which to comply. Since the request will be sent by post, there might be limited time to act in response.
Who will receive the direction to provide a UK address for service?
The UKIPO communication will be sent to the current contact details registered at the UKIPO at that time. It is important to check that the current contact details are up to date on the trade mark registry. If a representatives details are available, the UKIPO will send communications to this address instead of the registered owner's address.
To avoid any potential loss of rights, contact ip21 Ltd. and speak to one of our trade mark attorneys. Early action is recommended before 1 January, 2024, to ensure your instructions are handled in good time before the changes come into effect.
You can find more information in the UKIPO Tribunal Practice Notice (2/2023), published on January 25, 2023.