Brexit and IP: Understanding the UKIPO address for service rules change

The UK government recently announced a change to the rules of representation before the UKIPO. From 1 January 2021, new trademark, design and patent applications and contentious actions at the UKIPO will require a 'UK address for service' to be appointed, as Vanessa Harrow and Kate McNamara explain.

What is an address for service?

The UKIPO guidance states that an address for service is:

an address that you use to correspond with the UK Intellectual Property Office (IPO) and also for the purposes of proceedings under IP legislation. It can be your address, or if you wish, you can provide the address of your attorney or representative”.

Under the current rules, actions before the UKIPO can have an address for service in the European Economic Area (EEA) appointed, meaning a correspondence address within any of the other 30 countries of the EEA could be used. However, following a call for views on this issue, in which 92% of respondents were in favour of the change, the UK government has now formally confirmed that the reference to the EEA will be removed.

The legal means to change the requirements for address services before the UKIPO have now been laid before parliament, and once passed, the change will come into effect on 1 January 2021.

What does this mean for trademarks and designs?

Any new trademark and design applications and contentious actions filed at the UKIPO, on or after 1 January 2021 will require a 'UK address for service' to be appointed, which is an address for service in either the UK (which for these purposes includes the Isle of Man), Gibraltar or the Channel Islands.

A UK address for service will also be needed for all registered or granted rights where a request is made to change the nature of the right, e.g. a request to divide a trademark.

Moreover, if a pending UK trademark application is challenged on or after 1 January 2021, even where the application was filed in 2020, it will be necessary to appoint a UK address for service to defend the opposition proceedings (if the applicant is based outside the UK).

Similarly, if a registered trademark or design is challenged and the registered owner is based outside the UK, it will be necessary to appoint a UK address for service to defend the cancellation action.

It is also important to note that the new rules will apply to any applications for UK trademarks and designs which have been filed claiming priority from an EU right that is pending at the end of the transition period. There is only a nine-month period from the end of the transition period to file this type of conversion application, and under the proposed changes, it will be necessary for any such application to be filed with a UK address for service.

Please speak to us today about representation before the UKIPO:

Does it apply to cloned UK trademarks and designs?

EU trademark and design registrations that will be automatically cloned on to the UK register will not need a UK address for service for the first three years following the end of the transition period.

Similarly, if the cloned UK rights (except those originating from an international right) are challenged during this three-year period, the registered owner will not be required to appoint a UK address for service within the three-year period.

Conversely, if a cloned UK right originating from an international registration is challenged, it will be necessary to appoint a UK address for service to defend the proceedings, even when this is commenced within the three-year period following the end of the transition period.

Are there exceptions?

There are several exceptions to the new rules to consider.

Firstly, the UKIPO has confirmed it will not, for the most part, be necessary to update the address for service for existing registered rights. In addition, in accordance with current practices, for these existing rights, a UK address for service will not be needed to update the register when proceeding with the following actions:

  • renewing a registration,
  • surrendering a registration,
  • adding details of a licence agreement made with third parties,
  • requests by the rights holder to change the registered address; or
  • correcting an error or omission in the register.

What does the change mean for patents?

Any new patent application or challenge to a granted patent filed at the UKIPO on or after 1 January 2021 will require a UK address for service to be appointed. In addition, if a granted UK patent is challenged on or after 1 January 2021 and the registered owner is based outside the UK, it will be necessary to appoint a UK address for service in order to be involved in the proceedings and defend the patent.

The UKIPO has confirmed that, in accordance with current practices, a UK address for service will not be needed to renew a granted patent. However, for all other actions relating to a granted or registered patent, including a request to change the nature of the right, an address in the UK (which includes the Isle of Man), Gibraltar or the Channel Islands will be required.

Does it apply to European patents?

Currently, granted European patents which designate the UK are transferred automatically onto the UK register with no validation required. However, transfer is with reference to the applicant’s details only, as the UKIPO requires authorisation (by the filing of a Form 51 ‘Appointment or change of agent’) before it can recognise any representative. This will not change. However, from 1 January 2021 any representative appointed will need to have an address in the UK (which includes the Isle of Man), Gibraltar or the Channel Islands.

What are the benefits of a UK address for service?

These changes mark an important step in the UK’s departure from the EU and the EEA.

While there are still some exceptions to the requirement for a UK address for service, there are clear benefits to having a UK address for service for all your UK intellectual property matters at the UKIPO. Not only will this mean your UK adviser will receive all official correspondence on your behalf (including the UKIPOs citation reports), but it will mean you will have a local expert immediately at hand if any substantial matters should arise.

Working with a trusted partner like Novagraaf will ensure all your UK trademark, patent and design matters are managed by a team of experts with extensive experience of UK law and practice, ensuring timely and pragmatic action can be taken where needed.

If you are interested in learning about how Novagraaf could assist you with your UK trademark, patent and design matters upon the end of the transition period, please contact us below.

Vanessa Harrow is Head of Trademarks at Novagraaf in the UK and Kate McNamara is a Patent Attorney at Novagraaf in the UK.

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