United Kingdom - Address for Service for Comparable Rights

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Written By Tim Noel

On 1 January 2021, the United Kingdom left the European Union. On that date, the UKIPO created new UK registrations derived from registrations at the EUIPO, and International Registrations designating the European Union. These new registrations, referred to as clones or comparable rights, were created to allow such trade marks to continue to have registered protection in the United Kingdom.

Many comparable rights were entered on the Register with addresses for service which are not in the UK. This was because the representatives of the corresponding EUIPO trade marks became the addresses for service of the comparable rights in the UK. The Withdrawal Agreement, which governed the UK’s withdrawal from the EU, stipulated that it was not necessary for such trade marks to have a UK address for service for three years.

From 1 January 2024, it will be necessary to record an address for service in the UK, the Channel Islands or Gibraltar against comparable rights when they are subject to challenge by third parties. If any proceedings are filed against a registration without a suitable address for service, the UKIPO will write to the current representative, or the proprietor of the mark, to record a suitable address for service. If no response is filed, and an address for service has not been appointed within a month, the UKIPO will regard the case is undefended, which could lead to the registration in question being removed from the Register. As the IPO’s letter will be sent by regular post, in many cases there will not be enough time for an address for service to be appointed before the one month deadline expires.

Whilst an address for service in the UK, the Channel Islands or Gibraltar is not required for all matters before the UKIPO, we recommend that a suitable address for service is recorded against all comparable rights as soon as possible, to avoid the risk of such registrations being cancelled. We would be pleased to become the address for service for any comparable rights at no charge.

 
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Author: Tim Noel

Tim is a Chartered Trade Mark Attorney and manager in the Trade Marks department. He is responsible for overseeing and managing the day-to-day operations of the department, and offers free advice clinics to members of the public as well as sitting on the INTA Trademark Office Practices Committee.

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Tim Noel

Tim is a Chartered Trade Mark Attorney with over 17 years of experience supporting clients in all aspects of IP services.  He oversees and manages the department on a day-to-day basis.

Tim holds a degree in Mechanical Engineering from Bristol University and joined Lysaght in 2014 with eight years of experience in the IP industry.

Tim is responsible for prosecution work, in addition to registration and renewals in more complex jurisdictions. Tim also works on a number of contentious matters and opposition cases.  As well as his client portfolio and managerial responsibilities, Tim is a member of CITMA and volunteers for the free advice clinics to members of the public as well as sitting on the INTA Legislation and Regulation Committee.

In 2016 Tim was awarded the Postgraduate Certificate in Intellectual Property (with Merit) from Bournemouth University and became a Chartered Trade Mark Attorney in 2018.

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