Insights 27.04.2021

Brexit and IP: A question of representation

At the end of 2020, the UK government announced a change to the rules of representation before the UK IPO. New trademark, design and patent applications, and contentious actions at the UK IPO now require a 'UK address for service' to be appointed, as Vanessa Harrow and Kate McNamara explain.

Under the old (pre-Brexit) rules, actions before the UK's IP Office (UK IPO) could have an address for service in the European Economic Area (EEA) appointed, meaning a correspondence address within any of the other 30 countries of the EEA could have been used. However, following a call for views on this issue, in which 92% of respondents were in favour of the change, the UK government has formally confirmed that the reference to the EEA has been removed. The legal means to change the requirements for address services before the UKIPO has already been passed by parliament and the change came into effect on 1 January 2021.

What is an address for service?

The UKIPO guidance states that an address for service is: “an address that you use to correspond with the UK IPO and also for the purposes of proceedings under IP legislation. It can be your address, or if you wish, you can provide the address of your attorney or representative”.

What does this mean for trademarks and designs?

Following Brexit, any new UK trademark and design applications and/or contentious actions before the UK IPO requires a 'UK address for service' to be appointed, which is an address for service in either the UK (which for these purposes includes the Isle of Man), Gibraltar or the Channel Islands.

A UK address for service is also needed for all registered or granted rights where a request is made to change the nature of the right, e.g. a request to divide a trademark.

Moreover, if a pending UK trademark application is challenged, even where the application was filed prior to 1 January 2021, it is necessary to appoint a UK address for service to defend the opposition proceedings (if the applicant is based outside the UK).

Similarly, if a registered trademark or design is challenged and the registered owner is based outside the UK, appointing a UK address for service to defend the cancellation action is a requirement.

It is also important to note that the new rules apply to any applications for UK trademarks and designs which have been filed claiming priority from an EU right that is pending at the end of the Brexit transition period. There is only a nine-month period from the end of the transition period to file this type of conversion application, and under the new rules, it is necessary for any such application to be filed with a UK address for service.

Please speak to us today about representation before the UK IPO

Does it apply to cloned UK trademarks and designs?

EU trademark and design registrations that were automatically cloned on to the UK register do not require a UK address for service for the first three years after the end of the Brexit transition period.

Similarly, if the cloned UK rights (except those originating from an international right) are challenged during this three-year period, the registered owner is not required to appoint a UK address for service within the three-year period.

Conversely, if a cloned UK right originating from an international registration is challenged, it is necessary to appoint a UK address for service to defend the proceedings, even when this is commenced within the three-year period following the end of the transition period.

Are there exceptions?

There are several exceptions to the new rules to consider.

Firstly, the UK IPO has confirmed it is not, for the most part, necessary to update the address for service for existing registered IP rights. In addition, for these existing rights, a UK address for service is not needed to update the register when proceeding with the following actions:

  • renewing a registration,
  • surrendering a registration,
  • adding details of a licence agreement made with third parties,
  • requests by the rights holder to change the registered address; or
  • correcting an error or omission in the register.

What does the change mean for patents?

Any new patent application or challenge to a granted patent filed at the UK IPO requires a UK address for service to be appointed. In addition, if a granted UK patent is challenged and the registered owner is based outside the UK, it is necessary to appoint a UK address for service in order to be involved in the proceedings and defend the patent.

The UK IPO has confirmed that a UK address for service is not needed to renew a granted patent. However, for all other actions relating to a granted or registered patent, including a request to change the nature of the right, an address in the UK (which includes the Isle of Man), Gibraltar or the Channel Islands is required.

Does it apply to European patents?

Granted European patents which designate the UK will continue to be transferred automatically onto the UK register with no validation required. Although, transfer is with reference to the applicant’s details only, as the UK IPO requires authorisation (by the filing of a Form 51 ‘Appointment or change of agent’) before it can recognise any representative. This has not changed. However, under the new rules, any representative appointed will need to have an address in the UK (which includes the Isle of Man), Gibraltar or the Channel Islands.

What are the benefits of a UK address for service?

While there are still some exceptions to the requirement for a UK address for service, there are clear benefits to having a UK address for service for all your UK intellectual property matters at the UK IPO. Not only will this mean your UK adviser will receive all official correspondence on your behalf (including the UK IPOs citation reports), but it means you will have a local expert immediately at hand if any substantial matters should arise. Working with a trusted partner also ensures all your UK trademark, patent and design matters are managed by a team of experts with extensive experience of UK law and practice, ensuring timely and pragmatic action can be taken where needed.

To find out more about the impact on your UK and EU rights as a result of Brexit, including advice on how to manage renewals, contentious proceedings, customs notices and supplementary protection certificates, please read the detailed Brexit and IP FAQs prepared by Novagraaf, a NovumIP company.

If you are interested in learning about how NovumIP and its companies could assist you with your UK trademark, patent and design matters, please contact us today.

Vanessa Harrow is Managing Director, Trademarks and a Chartered Trademark Attorney at Novagraaf in the UK and Kate McNamara is a Patent Attorney at Novagraaf in the UK.

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