There has been a recent revision in the need for a UK address for service from the UKIPO.
Our newly hired Trade Mark Attorney, Kirsten Coetzee has broken down the details of this change, with the assistance of Patent Attorney Dr Iain McCrindle.
Requirement for UK address for service from 1 January 2024
There has been a recent revision regarding the requirement to have a UK address for service at the United Kingdom Intellectual Property Office (UKIPO). From 1 January 2024, the UKIPO will require a UK address for service for all comparable UK trade marks and re-registered UK designs, where new contentious proceedings are launched against such rights. Failure to comply with these new requirements could result in a permanent loss of rights.
Address for Service
The address for service is simply the contact address that is recorded at the UKIPO for a given intellectual property (IP) right, such as a trade marks or a registered design. The recorded address for service could be used by the UKIPO or third parties to contact owners of IP rights, and will also be used by the UKIPO to send documents and communications relating to IP proceedings.
The address for services can be a business or even a home address, but is more commonly the address of the IP owner’s legal or professional representatives.
Comparable UK trade marks and re-registered UK designs
With the UK’s exit from the European Union (EU), Registered Community Designs and EU Trade Marks ceased to have affect in the UK from 1 January 2021. As a result, the UKIPO created comparable UK trade mark registrations and re-registered designs for all EU rights, having the same legal standing as an equivalent UK registered right.
These EU rights were automatically replaced by UK rights, such that owners of Registered Community Designs were automatically provided with a re-registered UK design, and owners of EU Trade Marks were provided with a comparable UK trade mark registration.
New requirements
As of 1 January 2024, the UKIPO will require a UK address for service (being and address in the UK, Gibraltar or the Channel Islands) for comparable trade marks and re-registered designs, where any new contentious proceedings are filed against such rights. This includes revocation, invalidation and rectification actions.
Where a new contentious action is filed in respect of a comparable trade mark registration or a re-registered design, and where no UK address for services is recorded, the UKIPO will contact the owner of the right by post, directing them to recorded a UK address for service within 1 month of the letter being issued. As such, any delays in the UKIPO communication being delivered outside of the UK could leave the owner with little or no time to respond.
The biggest risk of not recording or providing a suitable UK address for service at the UKIPO in such a scenario, is that it may be deemed that the owner does not wish to contest the challenge filed against the trade mark or registered design. The proceedings against the IP right could therefore succeed without any involvement from the registered owner, resulting in the registration being invalidated or revoked.
It is also necessary to provide a UK address for service when filing a new patent, trade mark or design application at the UKIPO. If a valid UK address for service is not provided, the UKIPO may treat your application as being withdrawn.
In order to avoid the unnecessary loss of rights, or new applications being treated as withdrawn, it is highly recommended that a UK address for service is recorded at the UKIPO. Where professional or legal representative details are recorded for a registered right, the UKIPO will use such details for communications instead of the owner’s details. This further highlights the benefit for any IP owners based outside of the UK having a UK representative, especially considering that there is no charge for Scintilla to record ourselves as the representatives at the UKIPO.
Scintilla continues to advise and assist IP owners and associates based outside of the UK in relation to UK intellectual property rights, and we always welcome any further enquiries.
– by Kirsten Coetzee & Dr Iain McCrindle
At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!