15th September 2023
“The deadline for the implementation of new rules from the UKIPO is fast approaching. The new rules will have a significant impact upon the UK trade marks and design portfolios of international businesses and rights holders need to be aware of this and be prepared to amend their portfolios, if necessary.”
The UK Intellectual Property Office (UKIPO) has updated its guidance in relation to a valid address for service following the decision in Tradeix Ltd v New Holland Ventures Pty Ltd. Under the new rules, which come into effect on 1 January 2024, a UK address for service must be provided if a UK registered trade mark or design is subject to new contentious proceedings.
With the ‘cut-off’ date fast approaching, it is vital to appoint a UK address for service to avoid the risk of losing your rights.
An address for service is the address recorded with the UKIPO for your registered trade mark or design. The address may be the applicant’s address or that of their representative. The UKIPO will use this address to send correspondence relating to opposition, invalidation, rectification or revocation of contentious proceedings.
Previously, documents issued in relation to contested rights were able to be served on non-UK addresses. This practice has been extended following Brexit, to allow EU representatives to act as an address for service until 31 December 2023. However, this approach is being discontinued and a UK address for service will be required before any formal serving of documents. The new rules will apply to EU derived comparable trade marks and registered designs.
If the address for service on record for a trade mark or registered design is changed on or after 1 January 2024, the UKIPO requires that the updated address must be an address in the UK, Gibraltar or the Channel Islands. Similarly, if a comparable trade mark or registered design becomes subject to contentious proceedings issued on or after 1 January 2024, the UKIPO will require a UK address for service.
Although there is no obligation to change the address for service registered with the UKIPO before the changes come into play on 1 January 2024, the absence of a valid UK address for service carries with it a great risk. Failure to provide a UK address for service may lead to correspondence being overlooked, unreceived, or delayed. The consequence of such an omission may result in the contested rights being lost.
To safeguard your comparable trade marks and registered design rights, we strongly recommend appointing a representative as a UK address for service. It is important not to wait until contentious proceedings begin to change your address for service, as this may put your rights at risk. As such, we encourage you to appoint a representative before the changes come into play on 1 January 2024. This will eliminate the risk of correspondence being unreceived if contentious proceedings commence and will avoid your rights being unintentionally lost.
Walker Morris offers a full IP & Trade Mark solution for your business so please contact Alan Harper or Sarah Williams who would be happy to support with this.