Brexit update: important changes to UK IPO Address for Service rules

 

Under new rules that came into force on 1 January 2021, all new UK trade mark, design and patent applications, and certain other UK IPO proceedings, now need a UK (or Channel Islands or Gibraltar) Address for Service.

 
This means that anyone wishing to file new UK applications, or initiate new proceedings in respect of an existing UK application or registration before the UK IPO after 1 January 2021 must, if they are not themselves located in the UK, Channel Islands or Gibraltar, provide the name and address of an attorney or representative who is.  Under the new rules, the UK IPO will no longer accept an Address for Service in the EEA in such circumstances.

Now that the Brexit transition period has expired:

  • new applications for the registration of an EU Trade Mark or Community Design will no longer extend to the UK.
     
  • existing registered EU Trade Marks and Registered Community Designs have been automatically cloned to create comparable UK rights.  It is not necessary for the owners of these comparable UK rights to have an Address for Service in the UK for the first three years following the expiry of the transition period.  However, from 1 January 2024, the UK IPO will require a UK, Gibraltar or Channel Islands Address for Service for any new contentious proceedings relating to a comparable right, including oppositions, invalidation/cancellation actions or rectifications.
     
  • the owner of a comparable UK trade mark or registered design created from an International trade mark/design designating the EU will require a UK, Gibraltar or Channel Islands Address for Service if any new proceedings directed against or based on that right are initiated after 1 January 2021.  The provisions allowing for the three-year retention of an EEA Address for Service do not extend to such rights.
     
  • new UK-re-filings of any EU Trade Marks or Community Designs that were pending on 31 December 2020 will require a UK Address for Service.  Any such re-filing must be filed by 30 September 2021 in order to have the benefit of the  filing (and, if appropriate, priority/seniority) date of the corresponding EU application.
     
  • UK IPO proceedings that were started before 1 January 2021 may continue with a UK or EEA Address for Service.


How can Dehns help?

We can:

  • handle any new UK trade mark, design or patent applications on your clients’ behalf
     
  • handle any new proceedings before the UK IPO in respect of existing UK trade mark, design or patent applications/registrations
     
  • handle the renewal of any existing UK trade mark, design or patent registrations
     
  • assume responsibility for any comparable UK rights created on 1 January 2021, and attend to their renewal 

 

For further details of any of our services, please get in touch with your usual Dehns attorney or mail us at mail@dehns.com