The end of the Brexit transition period marks the change in address for service rules. We are keen to ensure owners of EU trade marks whose marks are cloned to create comparable UK trade marks or who file new UK marks following Brexit continue to be represented in the UK.
The new rules
From 1 January 2021 only representatives with a UK, Gibraltar, or Channel Islands address will be able to correspond with the UK Intellectual Property Office (UK IPO).
The change applies to all new trade mark and design applications made at the UKIPO from 1 January 2021. The only exceptions are the renewal of registered or granted rights and in respect of existing UK marks or designs, any ongoing proceedings started before 1 January 2021.
The EEA Retention Period
You will need to provide a UK, Gibraltar, or Channel Islands address before 1 January 2024 for any new contentious proceedings relating to any comparable UK trade mark created as a result of Brexit. Contentious proceedings include opposition, invalidation, or rectification.
This three -year retention of an EEA address does not cover comparable trade marks created from international trade marks or re-registered designs created from international designs designating the EU.
How can we help?
You will need a UK, Gibraltar, or Channel Islands address for service from 1 January 2021 in the following circumstances:
- you wish to make a UK trade mark or design, application;
- you wish to challenge a trade mark at application stage via opposition proceedings;
- you are defending a registered trade mark or design, which is challenged by means of revocation or invalidity proceedings or both; and
- you are involved in any UKIPO proceedings initiated after 1 January 2021 regardless of when the application was filed.
Our dedicated, experienced, and efficient IP team will be happy to assist you in respect of any concerns you have regarding Brexit, the changes to service rules, and their impact on your EU applications or proceedings so far as the UK is concerned.