Address the Risk 2: Address for service rules expanded to EU imported rights

United Kingdom

The UK Intellectual Property Office (IPO) has announced new rules on the address for service requirements for trade marks and re-registered designs derived from EU rights retained post-Brexit. The new rules will apply from 1 January 2024 and will affect the owners of such rights who do not have a UK, Gibraltar or Channel Islands address for service.

In January 2023, the UKIPO announced identical measures for UK trade marks, as well as marks originating from international registrations under the Madrid or Hague systems, which we discussed in a previous Law-Now (here). The UKIPO has now extended this to all EU-derived marks and re-registered designs, with a potentially greater risk that rights owners are caught out.

Who is affected?

The new rules mean that, from 1 January 2024, any owner of an EU-derived UK trade mark or re-registered design must specify an address for service in the UK, Gibraltar or the Channel Islands if the trade mark or re-registered design is subject to any invalidation, rectification, or revocation proceedings involving comparable trade marks or re-registered designs that are initiated on or after 1 January 2024. The rules also apply when an owner changes their address for service voluntarily.

There is no change for proceedings that are started on or before 31 December 2023. The existing rules will continue to apply, and the IPO will continue to accept an address for service in any EEA country.

Equally, the rules will not apply to comparable trade marks or re-registered designs that were derived from international registrations under the Madrid or Hague systems. These already require a UK, Gibraltar, or Channel Islands address for service in any proceedings before the IPO.

What are the risks?

If proceedings are brought and there is no UK address for service on record, the IPO will post a letter to the owner requesting that they provide a UK address for service and confirmation of their intention to oppose the proceedings. If the owner fails to do so within 1 month from the date of posting, then they may be treated as not opposing the proceedings. This could result in the trade mark or re-registered design being declared invalid or revoked, the registration being rectified, or the application struck out, depending on the nature of the proceedings.

As mentioned in our previous Law Now, there are risks related to post being delayed or in some cases not being delivered at all. This is particularly dangerous for those holding rights derived from EU trade marks or designs, which were generated automatically at the end of the Brexit transition period.

Key actions

We would strongly advise owners of comparable trade marks or re-registered designs derived from EU rights to appoint a valid UK address for service as a priority, to avoid an irretrievable loss of rights.

Please reach out to your usual CMS contact if you or your clients could be affected by this development.

Co-authored by trainee solicitor Tycho Orton.