Following the end of the Brexit transition period, the UK Intellectual Property Office (UKIPO) has announced changes from 1 January
2021. Intellectual property owners are required to provide a UK or Channel Islands address for new patent and trademark applications.
What will change for the EU trade mark owners or applicants?
If you are the proprietor of an EU trade mark and/or the design right that has been registered before the transition period (31 December 2020), you will be granted a cloned or comparable UK registration for the same design with the same scope of protection. That means you will then have two registered rights, one for the UK and the other for the EU, and you can continue using an address that is in the EEA until the end of 2023. The creation of the same right in the UK will be done automatically and for free.
If your EU trade mark application is still pending as of 31 December 2020, the rights will not be cloned. The application will proceed as usual, but it will not cover the UK. An identical application done until 31 October 2020 (9 months from 1 January 2021) for the UK rights will be back-dated to the filing date of your EU trade mark application. Filing a new identical application as in the EU within the designated period will ensure the protection in the UK.
What will change for the UK companies that have an EU trade mark registration?
UK companies who have an EU trade mark should trade at least in one of the 27 EU member states to maintain the registration. If you haven’t yet started trading in any of the EU member states, you should consider starting the trade in at least one of them which will maintain an EU registration protection. Trading in the UK will no longer count as evidence of trading in the EU to maintain the trade mark protection.
What is an address for service?
An address for service is the address used to correspond with the UK Intellectual Property Office (IPO) and for proceedings under intellectual property legislation. That can be the applicant’s address or the address of their representative, such as an attorney. If you apply for a UK trade mark after 1 January 2021 or you have a pending application at that time, the IPO will not send letters to the EU addresses anymore and you will have to start using a mail forwarding service.
How can we help?
You can use our registered office address in London as the address for service. Any correspondence from the UKIPO will be scanned on the same day and made available in our secure client portal. Learn more about the legal address service with mail forwarding or contact us for more information.