What is the current position?

When the UK left the EU on 1 January 2021, the EU Trade Mark and Registered Community Designs registers were “cloned” so as to create UK comparable trade marks and re-registered designs, and thereby ensure the continuation of the owners’ rights in the UK. Since then, it has been acceptable for UK comparable trade marks and re-registered designs to have an address for service anywhere in the EEA, meaning that EU representatives have been permitted to act before the UKIPO in respect of UK comparable trade marks and re-registered designs.

What is changing from 1 January 2024?

The United Kingdom Intellectual Property Office (UKIPO) will require a UK address for service where new contentious proceedings are launched on or after 1 January 2024 against a UK comparable trade mark or re-registered design (including such rights derived from an International Registration designating the EU). Such contentious proceedings include:

• Revocations, e.g. for non-use
• Invalidations (cancellations)
• Rectifications

What does this change mean in practice?

The change places challenged UK comparable trade mark and re-registered designs into the position which already applies (following a change in practice earlier this year) to challenged International Registrations which designate the UK. Following that change of practice, the permitted period for the mandatory appointment of a UK address for service has been reduced from two months to one month.

When new contentious proceedings are launched against a UK comparable trade mark or re-registered design for which there is not already a UK address for service on record, the UKIPO will send a notification of the need to appoint a UK address for service by post (not email) to the (non-UK) contact details available to the UKIPO. Where a non-UK representative is recorded, the notification will be sent to them, rather than directly to the registered proprietor. If a UK address for service is not recorded during that one-month period, the trade mark or registered design may be revoked, declared invalid or rectified, resulting in a loss of rights.

Do I have to record a UK address for service if my UK comparable trade mark or re-registered design is not subject to contentious proceedings?

UK comparable trade marks or re-registered designs which are not the subject of contentious proceedings will remain registered after 1 January 2024, and it is not compulsory to record a UK address for service against such registrations. However, it is advisable.

What is Dehns’ recommendation?

To avoid a potential loss of rights in the event of any contentious proceedings, and to avoid the rush, Dehns recommends that a UK address for service (where none exists) be recorded as soon as possible before 1 January 2024 against all:

• UK comparable trade marks (deriving from EU Trade Marks)
• UK re-registered designs (deriving from Registered Community Designs)
• UK Designations of International trade marks and designs

If you wish Dehns to record itself as UK Address for Service in respect of any of the above UK rights, please contact your usual Dehns Attorney or send an email to mail@dehns.com for further assistance.

The UKIPO’s official notice in respect of this change can be found here.