Author: Nicola Rochon
The UK Government made an important announcement on 19 November that is a major change to its service rules where a UK address is required for service. It will have a significant impact on representatives based in the European Economic Area (EEA) that currently represent their clients before the UK Intellectual Property Office (UK IPO).
UK IPO service rules
It is the Government's intention that, from 1 January 2021, all new applications or requests to start contentious proceedings before the UK IPO will only be accepted if they have an address for service in the UK or Channel Islands. This is a change to the current requirements that allow an address for service in the EEA. This will apply to all registered intellectual property rights, meaning that patents, trade marks and registered designs will all be effected.
The change in address for service requirements means that a number of intellectual property rights holders may now need to find additional or alternative representative to represent them directly before the UK IPO. However, the Government has confirmed that a UK address for service will not be required for the renewal of registered or granted rights and the rules will include transitional provisions for ongoing cases at the UK IPO.
The Government has not yet confirmed how this will affect the automatic comparable UK registered rights that will be granted to the owners of EU intellectual property rights at the end of the transition period. It is, however, presumed that any application for a comparable right (that is not automatically granted) will require a UK address for service.
If you are the owner of a UK intellectual property registration and do not currently have a representative based in the UK, or alternatively if you yourself are a representative and now need to look into the possibility of working with a UK based firm to represent your client directly before the UK IPO, please do not hesitate to contact our Trade Mark team to discuss how we can help.
