The rules are changing for overseas holders of comparable UK trade mark and design registrations

Eleanor Coates

The rules are changing for overseas holders of comparable UK trade mark and design registrations

At the time the UK left the European Union, and therefore the EU Trade Mark and Design System (EU IPO), comparable UK trade mark/design registrations were created from equivalent EU registrations to ensure continuity and to allow EU TM/design owners to retain their rights in the UK.

For all other countries outside of the EU, all trade mark applications are required to have a UK address for service when filing in the UK. However, for these comparable rights, all EU TM/design owners were exempt from such rules with the UKIPO still forwarding correspondence to the contact details provided to the EUIPO originally - albeit that a response had to be filed with a UK address for service.

This has been the case since the end of 2020 however, from the 1st January 2024, these comparable representative rights will no longer be valid and instead, will bring the rights in line with existing UK rules.

What do owners of UK comparable registrations need to do?

With these changes soon to come into effect, owners of these Brexit UK comparable registrations are recommended to record an UK address for service to ensure that the papers served, be it for opposition, cancellation or other contentious matters, are received and more importantly so that deadlines are captured and promptly reported.

What could happen if a comparable UK owner does not provide a UK address for service?

If an overseas owner of a comparable registration doesn’t have the correct representation in the UK, the UKIPO can no longer serve papers overseas and will only provide a notification with a short window for a UK representative to be appointed. Their registrations could be at risk if challenged with contentious proceedings.

How can Murgitroyd help?

We can help you to identify and protect any trade marks or designs that may be at risk when this change occurs at the start of 2024. To find out more, or to speak to one of our specialist attorneys, please get in touch.

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