As a result of Brexit, EU Trade Marks and Community Design registrations no longer cover the UK. So that owners did not lose the rights that had previously existed in the UK, the UK Intellectual Property Office (UKIPO) cloned all EU Trade Marks and Community Design registrations creating “comparable” local UK registrations, commonly known as cloned rights. These new comparable UK rights were created from Registrations filed directly with the European Union Intellectual Property Office (EUIPO) or via EU designations of International Registrations.
From 1 January 2024 the UKIPO will change its practice regarding its communication to owners of comparable rights.
Where an action for invalidity, revocation or rectification is brought against a comparable right, a UK address for service will now be needed.
If no UK address for service is entered the UKIPO will send a letter to the owner, using the standard postal service’s signed for service, setting a one-month deadline to record a UK address for service. If no reply is received the UKIPO will consider the matter as uncontested, and the registration will be lost. Where the owner is an overseas party, the letter may take some time to reach them leaving very little time to appoint an address for service. In the worst cases the letter could arrive after the one-month deadline, or not at all, leaving the owner no recourse to defend its right.
Free Service
We provide a free service whereby we will record ourselves now as the address for service against any registrations you require. We will then inform you immediately should an action be brought. This avoids the potential problem of the owner not receiving the notification or having to rush to record an address for service within the one-month deadline. We can also provide our advice on the strength of the case. Please contact our team for more information.
