Brexit: UK government announces important change to trade mark address for service rules

Brexit: UK government announces important change to trade mark address for service rules

Skys trade marks cut down, but SkyKick infringes anyway

The UK government has announced that with effect from 1 January 2021, and subject to legislative implementation, a UK address for service will be required for all new trade mark applications and requests to start contentious trade mark proceedings before the UK Intellectual Property Office.

This announcement marks a significant change of policy, as the current rules permit an address for service to be anywhere within the EEA. As well as applying to registered trade marks, the new rules will also apply to UK patents and registered designs.

In line with the Withdrawal Agreement these changes will not apply to new “comparable rights” (i.e. the UK part of existing registered EU Trade Marks and designs that are to be adopted onto the UK IPO’s register when the implementation period ends on 31 December 2020) for three years. However, any rights holders or their representatives based outside the UK will need to have a UK address for service for all new applications and proceedings. It would also be prudent to ensure that the address for service for existing registrations are updated in good time.

If you or your clients require a UK address for service, or assistance with any other aspect of UK trade mark law, please do not hesitate to contact us.

Further details about the other implications of Brexit on IP in the UK are available in our Brexit guide here.

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