26 Jan UKIPO Representation changes to UK Comparable TMs & RDs
The rules on representation of UK trade marks and designs changed on 1 January 2021, following the UK’s exit from the EU. Accordingly, foreign owners of UK trade mark and design applications as well as other new proceedings before the UK IPO (Intellectual Property Office) must provide an ‘address for service’ in the UK, Gibraltar or the Channel Islands, typically by appointing a UK IPO representative.
Previously, foreign owners of UK trade marks or designs only needed to provide an address for service within the European Economic Area (‘EEA’). Despite the recent rule changes on representation, comparable UK trade mark and design registrations that were ‘cloned’ from EU registrations at the EU IPO as a consequence of Brexit may still retain an EEA address or representative unless new proceedings are initiated against the comparable registration.
Indeed, many of the foreign-owned comparable UK trade mark and design registrations are represented by intellectual property firms based in the EEA. This is because the details of the recorded representative on the EU IPO Register were automatically copied across to the UK Register as part of the cloning process. These comparable UK registrations can retain any EEA representation until 31 December 2023, after which time foreign owners of comparable UK registrations will only need to have a UK Address for Service (UK AFS) or appoint a UK representative if the comparable UK registration is subject to new contentious proceedings such as opposition, revocation or invalidity proceedings.
However, it is possible that some of the foreign-owned comparable UK registrations do not have any representative in place at all. This could be the case where a business ‘self-filed’ an EU trade mark application and did not have an EEA-based representative. In such cases, the resulting comparable UK right will have no representative, meaning that official correspondence, including notifications about later-filed trade mark applications and renewal reminders, will therefore be sent by the UK IPO directly to the owner.
Where the recorded representative at the UK IPO is not based in the UK, or there is no representative on the Register, there can be considerable delays between an official notice being sent out and it being received by the foreign rights owner. This could be particularly problematic where the UK IPO notifies the earlier foreign trade mark owner of a new third-party trade mark application that has been published that the foreign owner may wish to oppose for being too similar to the foreign trade mark owner’s brand or logo. In many cases, these notifications are sent out by standard mail, which may take some time to arrive. When the notice is eventually received, the foreign trade mark owner may have less time to take action before the opposition deadline expires.
While there is no explicit requirement to do so, it would be prudent for a UK representative to be appointed for foreign-owned comparable UK trade mark or design registrations to allow for the forwarding and timely receipt of official notifications issued by the UK IPO. More importantly, from the 1st of January 2024, all contentious proceedings relating to these UK comparable rights will require a local UK AFS.
Should you wish to appoint Elys IP as your UK address for service, please contact the author Yvonne Onomor at yvonne.onomor@elys-ip.com and we would be delighted to assist.
