Comparable UK trade marks and designs: what’s changing?

Following Brexit, new EU trade mark and registered design applications ceased extending protection to the UK as a designated territory. To ensure that pre-existing, registered EU trade marks (‘EUTMs’) and registered designs still had protection in the UK, on 1 January 2021 the UK Intellectual Property Office (‘UKIPO’) created comparable UK trade marks (‘UKTMs’) and designs for EU intellectual property rights. These were, at that time, valid and registered at the EU Intellectual Property Office (‘EUIPO’). These comparable UKTMs and designs were immediately added to the UK registers and were given the same filing and registration dates as their corresponding EUTMs and designs.

As a result of the UK leaving the EU, it became a requirement that any new UK trade mark applications, filed by both national and international individuals or entities, must provide a UK address for service. This is the address whereby any office actions or notices relating to that UKTM would be issued. However, the Withdrawal Agreement between the UK and the EU temporarily exempted comparable UKTMs and designs from this requirement for the first three years.

Now that this three-year period is coming to an end, the UKIPO has recently updated their guidance on address for service. From 1 January 2024, any comparable UKTMs or designs that become subject to new contentious proceedings will be required to provide a UK address for service in order to contest and defend their protection in the UK. Examples of contentious proceedings which could be brought against these comparable UKTMs or designs include revocation, invalidation or rectification actions.

While it isn’t a mandatory requirement that a UK address for service for these UKTMs and designs is provided ahead of 1 of January 2024, it is certainly beneficial to do so. Before any response to the contentious proceedings can be filed, the UKIPO will require that the address for service is provided.

A notice requesting this will be issued by post and will give the trade mark proprietor just one month from the date of issue of that notice to provide a UK address for service. For international entities, there is a risk of correspondence being delayed, misplaced or even unreceived. During this time, the clock is very much ticking to file a response to contest the action being brought against the comparable UK mark or design, presenting a major risk of intellectual property rights being unknowingly contested and inadvertently lost if there is not a UK representative recorded as a registered address for service.

This article was co-authored by Alice Wright, Trade Mark Attorney and Grant Heywood.