Overview of UK IPO's Address for Service Update for Cloned Rights

Starting from 1 January 2024, the UK Intellectual Property Office (UK IPO) will require that a UK address for service is appointed for UK comparable trade marks or re-registered designs.

Following the UK’s withdrawal from the European Union (EU), the UK IPO created over two million UK ‘cloned rights’ for EU trade mark and design registrations, known as ‘comparable trade marks’ and ‘re-registered designs’. Thus, if you owned an EU trade mark, registered design or an international registration which designates the EU before 11pm on 31 December 2020, the UK IPO will have created a cloned right based on this.

Due to the Withdrawal Agreement between the UK and EU, the UK IPO are unable to require owners of cloned rights to appoint a UK address for service for a period of three years from 1 January 2021. This period is due to expire on 1 January 2024, when the UK IPO will implement new address for service requirements for comparable UK trade marks and re-registered designs.

What are the new requirements?

From 01 January 2024, a UK address for service will be required in respect of UK comparable trade marks or re-registered designs in which new contentious proceedings are launched. This includes opposition proceedings, revocation proceedings, invalidation proceedings and rectification proceedings.

What is the impact of this change?

If a comparable UK trade mark or re-registered design is challenged, the UK IPO will examine the registration to check that a valid UK address for service has been appointed. In the event that the trademark or design registration in question does not have a valid UK address for service, the UK IPO will contact the registered proprietor by post to appoint a UK address for service and confirm their intention to oppose the challenge within a period of one month from the date of the letter.

Failure to comply with these requirements within the one month time period will result in the UK IPO treating the registered proprietor as not opposing the challenge, and the registration of the trade mark or design may be declared invalid or revoked.

This change may result in registered proprietors being required to meet very tight deadlines to appoint a UK address for service to avoid a loss of cloned rights, particularly in view of the fact that the UK IPO intends to contact registered proprietors via post.

Conclusion and Action Steps

Although it is not mandatory to appoint a UK address for service for comparable UK trade marks and re-registered designs until contentious proceedings are launched, we strongly recommend that owners of UK cloned rights appoint a valid UK address for service ahead of 1 January 2024 to ensure that all communications from the UK IPO are received in a timely manner and to avoid the risk of cancellation of comparable UK trade marks and re-registered designs.

Secerna LLP can provide you with a valid UK address for service for any UK trade mark or design registrations. If you would like to appoint Secerna LLP as address for service for any of your rights at the UK IPO or have any questions about this matter, please do not hesitate to contact us at docketing@secerna.co.uk.