Posted: 01/12/2023
As of 1 January 2024, the UK Intellectual Property Office (UKIPO) is changing its rules concerning addresses for service for certain proceedings affecting United Kingdom trade marks and designs.
This important development affects EU/EEA owners and representatives of UK comparable trade marks and re-registered designs (‘cloned rights’) who until now have been free to remain as an address for service on the UKIPO register. From 1 January 2024 this will no longer be possible for certain new proceedings affecting cloned rights, where an address for service in the UK, Gibraltar or the Channel Islands will be required. Such proceedings include invalidation, rectification and revocation actions affecting cloned rights (commenced on or after 1 January 2024). The new requirement also applies to applications to voluntarily change an address for service.
Should a UK representative not be recorded, and an invalidations/cancellation action be issued, the UKIPO will send its notification via post using the owner or representative contact details on record, and will set a one-month deadline (from the date of the notification) to appoint a UK representative. If no response to the UKIPO notification is filed within the requisite timeframe, the proceedings are likely to be deemed undefended (and therefore successful), resulting in the loss of the cloned right(s) in question.
In light of these potential pitfalls, it is strongly recommended to appoint a UK representative prior to 1 January 2024, if you have not already done so.
Should you require any assistance in this regard, please do not hesitate to contact the team at Trademarks@penningtonslaw.com.
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