Understanding the updated UKIPO guidance
As of 1 January 2024, the UK Intellectual Property Office (UKIPO) has implemented updated rules regarding the Address for Service of EU-derived comparable trade marks and re-registered designs.
Comparable trade marks and re-registered designs pertain to rights automatically established post-Brexit, ensuring the ongoing protection of these former EU rights in the UK. The new rules require that holders of these rights must provide an address in the UK, Gibraltar, or the Channel Islands if a right is involved in contentious proceedings such as opposition, invalidity, or revocation.
Failure to provide a UK address by right holders, when proceedings commence after 1 January 2024, the UKIPO will notify the holder in writing of the requirement. The holder will be requested to provide a UK address within one month. If no address is provided within this timeframe, the proceedings may conclude without the involvement of the right holder.
Therefore, it is important for right holders to review their portfolio of comparable trade marks and re-registered designs to ensure a UK address is provided before any future contentious proceedings. This proactive approach mitigates the risk of delayed notification and/or the inability to defend the right in the UK.
For further discussion on any points raised in this blog, please contact Lindsey Wrenn or Sarah Molloy from our Intellectual Property team.