One of the effects of Brexit was that the UK introduced a requirement for a UK based representative for all UK national trade marks, patents and designs and international registrations designating the UK in January 2021. However, there was a grace period for comparable trade marks or re-registered designs deriving from an EU national trade mark or international registration designating the EU.
The UKIPO has issued guidance though confirming that the grace period will end on 1 January 2024 and from then:
- Any right holder who owns comparable trade marks or re-registered designs will be required to provide a UK, Gibraltar or Channel Islands address for service in the event that the right become subject to contentious proceedings. Such proceedings include invalidation, rectification, or revocation actions; and
- Any right holder who wishes to record a change of address for any comparable trade mark or re-registered design will be required to provide a UK, Gibraltar or Channel Islands address unless their legal representative already holds such an address.
Any contentious proceedings or change of address recordals initiated or actioned before 31 December 2023 are not subject to the above obligations. However right holders may still wish to record a UK legal representative for all UK IP rights due to the various benefits and potential pitfalls, such as the following:
- For all international registrations and by virtue all comparable trade marks and re-registered designs deriving from an international registration designating the EU, in the event contentious proceedings are initiated, the holder or representative will be contacted (via the contact details held by WIPO). They will then have only one month to appoint an address for service in the UK;
- Notifications from the UKIPO relating to the contentious proceedings for comparable trade marks or re-registered designs with no UK address for service will be sent by Royal Mail’s Signed-For service only. Therefore, it is important that a UK address for service is appointed to ensure that owners are promptly informed of any actions involving their UK rights. If there are delays in receiving the mail from the UKIPO there may be little or no time for the owner to take action; and
- Having a UK legal representative for all UK IP rights is also preferable in order to ensure you have the most accurate and applicable strategy advice when it comes to the UK IP systems and processes.