Out-Law News 1 min. read
IP rights holders urged to ensure UK address ahead of year-end deadline
06 Nov 2023, 3:19 pm
Businesses that hold the UK rights for trade marks or registered designs split out from equivalent EU rights at the end of the Brexit transition period have been urged to ensure they have a UK address at which they can be contacted.
From 1 January 2024, the UK’s Intellectual Property Office (UKIPO) will require holders of so-called comparable trade marks and re-registered designs to be contactable via an address in the UK, Gibraltar or the Channel Islands for service of correspondence relating to contentious proceedings raised in respect of those rights.
Intellectual property law and brand protection expert Désirée Fields of Pinsent Masons said that the UKIPO will serve proceedings on rights holders by sending them copies of the related documents, so they know the proceedings have been launched and the nature of the challenge being made. She said rights holders without a UK address could miss notifications about the launch of legal action in respect of their rights and, subsequently, even lose their rights altogether. This is because businesses are treated as not contesting proceedings raised in respect of their rights if they do not reply to the UKIPO’s correspondence within one month, meaning the rights could later be revoked without the rights holder having had an opportunity to make representations in the case.
Fields said: “While it might appear that providing an UK address for service is a minor administrative point, the importance of updating the UK trade marks and designs registers cannot be underestimated. There is a real risk that valuable intellectual property rights could be lost by inadvertently missing correspondence from the UKIPO. This is particularly pertinent in the context of potential contentious proceedings."
Gill Dennis, also of Pinsent Masons, added: “Owners of comparable trade marks or re-registered designs not based in the UK should consider whether to provide a UK address for service now to proactively avoid the risks that could arise if their rights are challenged before the UKIPO. The address can be that of a legal representative, including Pinsent Masons.”
The address for service requirements do not apply to UK designations of internationally registered trade marks and designs, for which separate service requirements apply.
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