Change of practice on UKIPO Address for Service – do you need to take action?

Starting from the beginning of 2024, significant changes are on the horizon, aligning comparable rights to UK standards.

In order to ensure that EU trade mark and Community design holders were not disadvantaged following the Brexit transition, on 1 January 2021, the UK IPO created a huge number of cloned EU trade mark registrations and re-registered Community Designs on the UK registers, commonly referred to as “comparable rights”. 

Effective January 1, 2024, all new proceedings and requests for address changes concerning comparable rights necessitate a UK, Gibraltar, or Channel Islands address for service. This change applies to proceedings such as invalidation, rectification, or revocation initiated on or after January 1, 2024, unless the right originates from an international registration, which already mandates a UK, Gibraltar, or Channel Islands address in such circumstances.

The journey to this point began on January 1, 2021, when only addresses within the UK, Gibraltar, or Channel Islands were permitted for new proceedings before the UK Intellectual Property Office (UK IPO). Initially, this rule did not encompass the one million comparable EU trade marks and Community designs replicated on the UK registers.

However, in line with the Withdrawal Agreement between the EU and the UK, comparable rights were granted a 3-year grace period exempting them from the obligation to have a correspondence address in the United Kingdom.

this three year grace period comes to an end on 1 January 2024, and thereafter the UK IPO will require a UK, Gibraltar, or Channel Islands address for service for new proceedings to ensure compliance.

For comprehensive information, you can access the complete UK IPO guidance by clicking here.

In an additional update, the UK IPO has clarified their stance on virtual offices and PO Box addresses. While the use of virtual offices or PO Box addresses is permissible, it's crucial that these addresses are a valid address where notices or letters can be reliably delivered and read by the intended recipient.