New law: Trade mark and registered design owners check new IPO rules about ‘representative addresses’ following end of Brexit transition period

From the end of the Brexit transition period at 11pm on 31 December 2020, those applying for a UK registered trade mark or registered design are required to provide the UK IPO with a ‘representative address’ - such as the owner’s address, or that of an attorney or other representative – in the UK, Gibraltar, or the Channel Islands. They are no longer allowed to use an address in the European Economic Area (the EEA – the EU member states plus Iceland, Norway, and Liechtenstein).

Owners of existing UK trade marks or registered designs using an EEA address will have to change to a UK, Gibraltar or Channel Islands address in due course. There are different rules for different types of owner, which can make things complicated.

For example, there are different rules for owners of marks and designs that were originally registered in the UK, compared to owners of UK ‘comparable’ marks and ‘re-registered’ designs.

A UK ‘comparable’ trade mark is a mark that was registered automatically by the UK IPO from 1 January 2021, duplicating a pre-existing EU trade mark that would otherwise have ceased to be protected in the UK when the Brexit transition period ended.

A UK ‘re-registered’ design is a registered Community design that was registered automatically by the UK IPO from 1 January 2021, duplicating a pre-existing registered Community design that would otherwise have ceased to be protected in the UK when the Brexit transition period ended.

The UK IPO has published useful ‘Guidance: Address for service for intellectual property rights from 1 January 2021’ on the new rules.

In some instances, owners need do nothing for three years, but many owners of UK marks and designs with an EEA representative address are notifying new representative addresses in the UK, Gibraltar, or the Channel Islands now. This avoids the risk – given that there are suddenly around two million new comparable trade marks and re-registered designs on the UK IPO registers, that many people are working from home, and that the pandemic continues to disrupt business and postal services - that communications from the IPO such as renewal reminders, notices of opposition or cancellation could be missed.

For owners of at least 50 new UK comparable marks and UK re-registered designs with EEA representative addresses, there is an additional incentive to notify new UK, Gibraltar or Channel Islands addresses now. The UK IPO is offering a service which allows owners of such multiple comparable marks and re-registered designs to change their representative addresses on a bulk basis – but this is only temporary and expires on 31 March 2021.

The UK IPO has published ‘Guidance: Bulk change of address service available’ about the temporary service.

Operative date

• Now

Recommendations

• Owners of UK trade marks and registered designs, including comparable marks and re-registered designs, with EEA representative addresses should check the IPO guidance to find out when and how they can change them to UK, Gibraltar or Channel Islands addresses.
• Owners of at least 50 comparable marks and re-registered designs who do not already have a UK, Gibraltar or Channel Islands representative address should check whether they are eligible to use the temporary bulk change service and whether it is worth doing so and, if in doubt, consider taking advice.