1. What is an UK comparable trade mark and re-registered design?

On 01 January 2021, the UKIPO created a comparable (cloned) UK trade mark and re-registered design for every registered EU right. These have the same legal status as if you had applied for and registered them under UK law. They are fully independent rights that can be challenged, assigned, licensed or renewed separately from the original EU trade mark and registered Community design.

Over two million UK rights were created based on EU rights. However, the Withdrawal Agreement between the UK and EU meant that the UKIPO could not necessitate a UK address for service for three years, until 01 January 2024.

2. In what circumstances will a UK address for service be required?

From 01 January 2024, the UKIPO (in accordance with Tribunal Practice Notice 2/2023) will require a UK address for service where new contentious proceedings are launched against a UK comparable trade mark or re-registered design. These proceedings include:

• revocations
• invalidations
• rectifications

Upon receipt of an application to invalidate, revoke or rectify a comparable trade mark or invalidate a re-registered design without a UK address for service, the UKIPO will direct the registered proprietor by post to appoint a UK address for service.

3. What is the effect of not providing a UK address for service?

Failure to provide a UK address for service may be construed as the registered proprietor not contesting the action and so may result in the registration being declared invalid, revoked or rectified.

In other words, failure to respond could be fatal for those trade mark and design rights.

4. What is the deadline to record a UK address for service?

Where the UKIPO directs a holder to file an address for service, the holder will only have one month beginning with the date of the direction to do so. The request will be sent by post, which may leave little or no time to respond.

5. Who will be sent the direction to file a UK address for service?

The notification will be posted to contact details available to the UKIPO at that time. Where representative details are available, they will be used in preference to the registered proprietor’s address.

6. Will anything automatically happen to a comparable trade mark or re-registered design that has no UK address for service on 01 January 2024?

UK comparable trade marks and re-registered designs with no UK address for service will remain registered after 01 January 2024. Whilst it is not mandated to appoint a UK address for service until contentious proceedings arise, it is certainly beneficial.

7. What is our recommendation?

To avoid any potential loss of rights, D Young & Co LLP strongly recommends listing our firm as address for services against any comparable UK trade marks and re-registered designs that do not currently have a UK address for service as soon as possible, and, in any event, prior to 01 January 2024. We ask that any instructions are sent to us sooner rather than later to ensure that these are dealt with well in advance of the changes taking effect.