What you need to know
From 1 January 2024, the UK Intellectual Property Office (IPO) is changing rules concerning Address for Service for United Kingdom trade marks and designs. Here is what rights holders and their overseas representatives need to do.
When the IPO created UK comparable registrations derived from EU trade marks and Community Registered Designs, it allowed a grace period for existing EU-based representatives to remain as Address for Service on the UK register. From next year, some new actions involving these registrations will require a UK Address for Service. In particular, any owner of a comparable registration must specify an Address for Service in the UK, Gibraltar or the Channel Islands if the trade mark or re-registered design is subject to any invalidation, revocation or rectification action that is initiated on or after 1 January 2024. When an owner chooses to change their Address for Service voluntarily, that new address must also be in the UK, Gibraltar or the Channel Islands.
The IPO already requires a UK Address for Service for any new UK filings.
Risks for owners
If an invalidation or revocation action is filed against a UK right without a UK Address for Service, the IPO will post a letter to the owner setting them a one month deadline for providing a UK Address for Service and confirming their intention to defend the proceedings. Failure to respond may be treated as not defending the action, resulting in a loss of rights. We therefore recommend that rights holders take proactive measures now and appoint a UK Address for Service.
How Kilburn & Strode can help
We would be delighted to take over representation of your UK trade marks or designs. We would not charge for this on the basis that Kilburn & Strode would be responsible for maintenance and renewal of the right. We have a dedicated on-boarder to assist with the smooth transfer of data.
Please contact tm@kilburnstrode.com or your usual Kilburn & Strode advisor for assistance.