When the United Kingdom left the European Union, the UKIPO created equivalent rights on the UK trade mark and design registers for EU registered trade marks and registered designs. From 2024, in certain circumstances, you will now need to appoint a UK address for service for these equivalent marks.
As you will be aware, when the United Kingdom left the European Union, EU registered trade marks and EU registered designs no longer provided protection in the United Kingdom. In response to this the UK Intellectual Property Office automatically created equivalent UK national registered rights being clones of the EU registered trade marks and registered designs and entered these onto the UKIPO’s trade mark register and the UK designs register. These rights are called “comparable trademarks” and “re-registered designs”. There are approximately 2 million of these UK rights in force, based on EU rights.
When those rights were created, according to the EU Withdrawal Agreement the UK office could not require that the address for service recorded for those rights was in the United Kingdom, but rather allowed addresses for service within the European Economic Area (EEA).
The address for service is the correspondence address recorded on the official register and to which the UK Intellectual Property Office will communicate with UK registered trade mark or UK registered design owner for the purpose of renewal fee reminders, notifications of third party rights, revocations, cancellations or any other communications on the trade mark or design.
On January 01, 2024, the three year transitional period on retaining an EEA address for service ends, and in certain circumstances you will now need to appoint a UK address for service.
UK comparable trade marks
According to the agreement, the UK IPO cannot require owners of UK comparable trade marks to provide a UK address for service for a period of three years following January 01, 2021. During this period, an address for service in the European economic area (EEA) can be retained.
From January 01, 2024 the UK IPO will require a UK address for service where any new contentious proceedings are commenced on a UK comparable trade mark. These include oppositions, invalidations, or rectifications of the mark.
UK re-registered designs
From January 01, 2024, the UK IPO will require a UK address for service where new contentious proceedings are launched in relation to a UK re-registered design.
UK comparable trademarks and UK re-registered designs derived from international registrations
The above retention of an EEA address for service does not apply to UK trade marks or UK registered designs derived from an international registered trade mark or international registered design.
Where a UK comparable trade mark or a UK re-registered design derived from an international trade mark or design registration, you should appoint a UK address for service.
Post registration actions which do not require a UK address for service – UK trademarks and UK registered designs:
- renewing your trade mark or design registration
- surrendering your trade mark or design registration
- adding details of a licence agreement which has been made with third parties
- changing your address if you are the owner of the trade mark or design
- correcting an error or omission in the UK register.
For all other actions relating to your granted patents, you will need a UK address for service.
Post registration actions which do not require a UK address for service – UK patents only
- Payment of a renewal fee;
- Changing your address as the rights holder
For all other actions relating to your granted UK patent, you need a UK address for service.
Appointment as UK address for service
To ensure your clients have a UK-based address for service for their UK registrations, we recommend Franks & Co are appointed as your UK-based address for service for you clients’ UK registered trade marks and registered designs.
Franks & Co will provide this service free of charge to ensure you can easily provide your clients with UK-based representation for their UK registrations.
To secure your clients’ UK trade mark and design registrations, please instruct the undersigned at franksco@franksco.com before the official deadline of December 31, 2023.
Services provided
- We will appoint ourselves as your UK address for service for your UK registered trade marks, registered designs and patents;
- We will forward communications from the UK Intellectual Property Office;
- We will enter the case details into our maintenance fee reminders system and send reminders at the appropriate time, unless you inform us that you will be using a renewals fee agency, or inform us that you are attending to payments yourself;
- It will still be possible for you to pay annual, five year or 10 year maintenance fees directly at the UK Intellectual Property Office.
Information needed
- A list of UK registered trademark numbers /application numbers /patent numbers
- A list of UK registered design numbers / application numbers
- A list of UK patent numbers /application numbers
- Whether you require representation as address for service without responsibility for payment of official maintenance fees and sending official maintenance fee reminders; or
- Whether you require representation as address for service with responsibility for sending official maintenance fee reminders and for payment of official maintenance fees.
For more information, or to appoint us as your UK address for service, contact:
luke.franks@franksco.com
franksco@franksco.com
Article Published October 6th, 2023
