Summary of the change

Current rules state that an application for a patent, trade mark or design requires a correspondence address, known as an address for service, in the UK, EEA or Channel Islands. Similar rules apply for other proceedings before the office. From 1 January 2021, EEA addresses will not longer be accepted by the UKIPO, and only UK or Channel Islands addresses will be allowed. Renewal of existing registered rights will not require a UK address for service, and European intellectual property rights which are ‘cloned’ at the end of the Brexit transition period will have a period of three years before a UK address for service is required.

 

Background

Current Rules* state that an application for a patent, trade mark or design, and for other proceedings before the UK Intellectual Property Office, an address for service within the UK, EEA or Channel Islands must be given.

The Brexit transition period ends on 31 December 2020, at which point the UK will no longer be treated as if it is a member state of the EU. The Withdrawal Agreement has made it clear that UK trade mark attorneys will no longer have rights of representation before the European Union Intellectual Property Office**. At the end of the transition period, the current rules would create an unfair asymmetry between the UK and EU IP professionals, due to the allowance of EEA addresses being permitted before the UKIPO, but not UK addresses permitted before the EUIPO.

In July 2020, the UKIPO conducted a survey to seek the opinions of IP professionals regarding amending the address for service rules to require an address within the UK or Channel Islands, i.e. no longer allowing addresses in the rest of the EEA.

 

Results of Survey and Opinion Poll

Just over 1,000 people responded to the call for views, with 92% indicating they are ‘very supportive’ of the amendment of the rules to no longer allow EEA addresses outside the UK or Channel Islands.

The Government notes that many of the responses were the result of a campaign, this being easily identified by the number of written answers which used identical wording.

After the direct questions of how supportive the respondent would be to the change, there was an opportunity for the respondent to explain their thoughts on the proposal. Many respondents were concerned they would lose business as a result of the UK’s departure from the EU and particularly from the withdrawal of the ability to represent their clients before the EUIPO. Some respondents noted that, in their opinion, changes to the rules would be fair and level the playing field between UKIPO and EUIPO address for service rules. Other noteworthy responses included mention of higher quality prosecution by UK representatives who are more skilled in UK practice, also resulting in possibly more streamlined case handling by the UKIPO. Many respondents made reference to the United States and Germany with regards to national address for service rules.

 

Changes to the Rules

Existing references to the EEA will be removed from the address for service rules for UK trade marks, designs and patents. From 1 January 2021, subject to the appropriate legislation being passed in time, an address in the UK or Channel Islands will be required.

Of course, this does not mean that applicants based outside the UK cannot apply for IP rights or start proceedings before the UKIPO. Instead, these applicants will be allowed to do so under the condition they have a UK or Channel Islands address to which the UKIPO can send notifications and correspondence.

For renewal of existing registered rights, a UK address for service will not be required. It has also been confirmed by the UKIPO that UK registrations created automatically by cloning EU registrations at the end of the Brexit transition period will not need a UK address for service in an initial three year period following the end of the Brexit transition period.

Please contact our Brexit team at brexit@creationip.com for more information.

 

*Rules 23 and Schedule 1 of the Design Right (Proceedings before Comptroller) Rules 1989.
Rule 103 of the Patents Rules 2007;
Rule 42 of the Registered Design Rules 2006; and
Rule 11 of the Trade Mark Rules 2008

**except for actions pending at that date

This article (and any information accessed through links in this article) is provided for information and educational purposes only. This article does not constitute professional legal advice. Professional legal advice should be obtained before performing any action based on the information provided in this article. All professional legal advice will be given in accordance with Creation IP Terms of Business. Please contact us for further information.

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