The Correct Address? – Brexit Piece

December 21, 2020, By

With Brexit fast approaching, it is definitely a good time to make sure you are up to date with the rules and regulations regarding your IP. It is paramount for right holders (having registered trade marks and designs in the UK and EU) to ensure that their valuable IP rights remain well protected in the UK.

The UK Government recently published a guidance piece on address for service. These rules govern the address required to correspond with the UK Intellectual Property Office (“UKIPO”), and for the purpose of IP proceedings.

Currently, any applicant looking to file a UK trade mark or design application can provide an address in Europe or more specifically the EEA. However, from 1 January 2021, applicants will need to provide an address in the UK, Gibraltar or the Channel Islands – an address in the EEA will no longer be accepted.

If an application was filed prior to 1 January 2021 then an EEA address can be retained. Moving forward, this will have to change to a UK, Gibraltar or Channel Islands address if the application is challenged on or after 1 January 2021.

Exception

It is still worth remembering that owners of European Trade Mark Registrations (“EUTMs”) and European Designs Registrations (“RCDs”) will automatically receive a UK trade mark/design registration (from the 1 January 2021) comparable to their EUTM/RCD Registration and they can continue to use an address in the EEA for these registered rights until the end of 2023.

Owners of these registrations can also continue to use an EEA address for opposition proceedings based on their UK comparable trade mark registration or for invalidity/revocation/opposition proceedings based on a UK comparable trade mark or a re-registered design.

BREXIT Future

Coming into 2021, applicants must be aware that new applications of UK trade marks and designs (filed from 1 January 2021); all applications for UK comparable trade marks and designs based on EUTM and RCD Applications pending on 1 January 2021 and all UK trade marks or re-registered designs resulting from International Registrations or International Designs designating the EU, will require a UK address of service. This will also be required for opposition proceedings relating to UK comparable trade mark applications and for other IP proceedings such as revocation/invalidity proceedings.

Owners of trade marks and designs should be vigilant and ensure that they are prepared and use the correct address for service in the UK so that UKIPO correspondence reaches them.

If you have any issues with trade mark or any other aspects intellectual property  that you want to discuss or you want to have a more proactive approach to your IP, we at Briffa advises on all aspects of intellectual property law and practice and offers free 30-minute consultations to all new clients. If you would like to book a call or a meeting with one of our specialist IP lawyers, please contact [email protected] or 020 7288 6003.

Written by Hasnath Ahmed, Solicitor

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