On 1 January 2024, the UKIPO changed its rules surrounding the requirement of an address for service in the UK, in particular, for comparable trade marks and designs (clones). We reported on the changes back in September 2023 here.
In brief, from 1 January 2024, it has been advisable for all active UK trade mark and design registrations to have a UK address for service in order to avoid issues with the receipt of official correspondence, potentially resulting in the loss of rights. The end of 2023 saw a huge rush of firms in the European Economic Area (EEA) seeking to appoint UK attorneys as address for service against these rights.
A recent LinkedIn post, as seen here, from Robert Reading (Director, Government and Content Strategy, IP Group at Clarivate) highlighted that as of mid-February 2024, there were still nearly 500,000 active trade mark registrations on file at the UKIPO without a UK address for service. A quarter of these have an address in Germany recorded, with agents in Spain and France accounting for a further quarter. Following a recent call from our offices to the UKIPO, it was clarified that if there is an EEA address for service recorded against a comparable trade mark or design, the UKIPO will still write directly to the EEA address for service, rather than writing directly to the owner of the trade mark, the latter of which was the initial understanding of many UK firms. When writing to the EEA address for service, for example to report the filing of a cancellation action, the UKIPO will ask for a UK address for service to be appointed, in order to allow a response to the cancellation action to be filed. Notwithstanding this, it is still advisable to appoint a UK address for service, so that in the event of correspondence such as a cancellation action, it is received by email and in a timely way by a UK firm, rather than by post by an EEA firm, which can get lost and also causes unnecessary delay.
For further information or advice please contact your usual Barker Brettell trade mark attorney.
“It is advisable for all active UK trade mark and design registrations to have a UK address for service in order to avoid issues with the receipt of official correspondence, potentially resulting in the loss of rights”
