Following the UK's separation from the EU Trade Mark and Design System (EU IPO) on 31 December 2020, a transition period has been in place allowing attorneys based in the European Union to continue to act as professional representatives for duplicated UK registrations. The transitional period of three years comes to an end on 31 December 2023.
From 1 January 2024, a UK address for service (AFS) will be required for all dealings with trade marks and designs, except renewals. The UKIPO will continue to serve documents on non-UK addresses, but this will be done by international post and there are strict deadlines for responding to cancellation applications. If no response is filed to such an action, the registration will be automatically cancelled, even if the attack is groundless. Further, no changes to the address of a non-UK AFS will be recorded.
The end of the transition period brings comparable trade mark registrations based on EU registrations in line with practice on comparable registrations created from EU designations of International Registration, which are stand-alone registrations unconnected with the International Registration from which they were created.
Disturbingly, there are still more than 200,000 UK – cloned registrations without UK-based representation.
By acting now, UK trade mark registrations will be safe-guarded from potential pitfalls that might arise in the absence of adept UK-based representation.
What action do I need to take?
We are happy to assist in acting as the Address for Service in the UK for these duplicated UK registrations. There is no charge for us to take over representation, on the basis we will be handling the renewals in due course.
The same applies to any Plant Variety Rights following the UK's separation from the Community Plant Variety Office (CPVO) and from 1 January 2024, the Controller of Plant Variety Rights in the UK may ask for a UK address for service (AFS). This requirement can be satisfied by appointing a UK based agent. Renewal fees are not payable for these duplicated UK registrations. Click here for more information.
For more information on address for service requirements in the UK, see the following article.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.