New Rules At The UK Intellectual Property Office

Attention registered trade mark and design owners and applicants: the rules governing address for service and representation at the UK Intellectual Property Office (“UK IPO”) and the EU Intellectual Property Office (“EU IPO”) have changed following the end of the transition period on the 31 December 2020.

Changes To UK IPO Service And Representation Rules

In the UK, an address for service is an address used to correspond with the UK IPO in respect of trade mark and design applications and renewals and also for the purposes of representation proceedings (such as oppositions, revocations and invalidations) before UK IPO.

The post-Brexit transition period ended on 31 December 2020. From 1 January 2021, if an application to register a trade mark or design is filed at the UK IPO, the applicant must have an address for service in the UK, Gibraltar or Channel Islands. This means the UK IPO no longer accepts addresses from representatives based in the EEA.

Registered trade marks and designs may be challenged by means of revocation or invalidation proceedings. If such right is challenged on or after 1 January 2021, and the address for service is outside the UK, the UK IPO will ask the right owner to provide a service address in the UK. If the right owner does not do so, the proceedings against them could succeed without their involvement and their Intellectual Property rights could be restricted or removed as a result. Pending trade mark applications may also be challenged once published by means of opposition proceedings. If this occurs on or after 1 January 2021, the UK IPO will also need to be provided with an address for service in the UK.

Under the terms of the Withdrawal Agreement, there is no requirement for a UK address for service in relation to the comparable (“clone”) trade marks and registered designs which will be registered in the UK IPO following the end of the Brexit transition period to mirror the original EU-registered trade marks and EU-registered designs and ensure they are protected in the UK. However, this will only apply for a period of three years following the end of the transition period. From 1 January 2024, new proceedings launched in connection with these rights will also require a UK address of service.

Changes To EU IPO Service And Representation Rules

Representatives based in the UK will continue to be able to act for their clients in respect of ongoing proceedings at the EUIPO, however they are no longer permitted to act in new proceedings before the EU IPO from 1 January 2021 (though a representative in the EEA is not required for the mere filing of requests to renew an EU trade mark or design).

Going forward, in order to represent parties before the EUIPO, a legal representative must be: (i) qualified in one of the EEA Member States; (ii) established or have a place of business within the EEA and; (ii) entitled to act as a representative in trade mark or design matters in the Member State of the EEA in which they are qualified.

Where representation is mandatory and an applicant for a new EU trade mark or design right is based in the UK and has not appointed a professional representative within the EEA, the EUIPO will invite the applicant to appoint an EEA representative; where the applicant fails to do so, the application will be refused.

Similarly, where an opponent or cancellation applicant is based in the UK, the EU IPO will invite them to appoint a representative from within the EEA and if they fail to do so, their opposition or cancellation will be inadmissible. This also applies to owners of EU-registered trade marks and designs based in the UK that become the subject of opposition or cancellation proceedings.

Consequently, from 1 January 2021, UK-based parties need to appoint UK-based representatives in respect of their UK-registered trade marks and designs (or applications) and EEA-based representatives in respect of their EU-registered trade marks and designs (or applications).

How Can We Help?

We will be delighted to represent you before the UK IPO in respect of your UK-registered trade marks and designs, in terms of new applications and renewals and also in contentious proceedings. If you are seeking a UK-based representative or if you have any questions in respect of the UK IPO or EU IPO rules applicable post-Brexit transition period, please do not hesitate to get in contact with Gosia Evans or Chris Cameron from our Intellectual Property Team.

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