August 2023 RIGHT HOLDERS SHOULD ACT NOW
When the UK left the European Union, the UKIPO granted comparable UK rights for all existing EU trade mark and design registrations. No UK address for service was required for a period of 3 years from the date of the UK’s departure from the EU. However, the end of this 3-year period is approaching and rights holders are strongly advised to appoint a UK address for service by 1 January 2024.
When the UK left the European Union, the UKIPO granted comparable UK rights for all existing EU trade mark and design registrations. Such comparable UK rights were granted automatically with no action from the proprietor required. This was an invaluable solution for owners of EU trade mark and design registrations to provide continued protection in the UK, despite the UK’s departure from the EU. As part of the UK’s Brexit deal, it was agreed that holders of the comparable rights would not require a UK address for service for 3 years from the UK’s departure date.
The end of this 3-year period is on the horizon meaning that as of 1 January 2024 owners of UK trade mark or design registrations based on corresponding EU trade marks or designs that were registered prior to 1 January 2021 will need to appoint an address for service in the UK for new proceedings.
Although the appointment of a UK address for service is not a mandatory requirement for maintaining comparable trade mark and design registrations (for example, a UK address for service is not required to renew these registrations), there are serious risks associated with not appointing a UK address for service.
Following the Marco Polo Decision [O/681/22], the current practice of the UK Intellectual Property Office (UKIPO) when new proceedings (e.g. invalidity/cancellation proceedings) are initiated against a registration without a UK address for service is to invite the owner to appoint a UK representative within a specified period. If no UK representative is appointed within this period, the invalidity/cancellation action will be deemed undefended and the registration will be cancelled.
Such invitations to appoint a UK representative are sent to the recorded owner by post. However, there are of course a number of circumstances where, despite this, the invitation from the UKIPO may not be received by the owner, including:
- The invitation being sent to the old owner of the registration (where a transfer of ownership has occurred, which has not been recorded at the UKIPO)
- The invitation being discarded as irrelevant or not properly acted on by the recipient (this may particularly be the case when the recipient, i.e. recorded registration-holder, does not understand English)
- The invitation being lost in the post or delivered after the deadline for appointing a UK representative
In these circumstances, if the invitation issued by the UKIPO is not received or correctly dealt with by the recipient, then there is a fatal consequence of the registration being lost.
To protect against these risks, it is therefore highly recommended to appoint a UK representative for comparable trade marks and design registration derived from corresponding EU registrations before the date of 1 January 2024.
If you are the owner or non-UK representative for any comparable trade marks and designs, which do not currently have an address for service appointed in the UK, then please feel free to get in touch with us to discuss how we can appoint ourselves as UK address for service on your behalf.
