01 November 2023

Following the UK's exit from the EU on 31 January 2020, holders of EU trade marks (which were enforceable in the UK prior to Brexit) were automatically granted corresponding UK trade marks (a “comparable trade mark”) without the need for rights owners to take any action.

The creation of comparable marks meant that many businesses and organisations with new comparable UK trade marks were still registered with the UK Intellectual Property Office as using EU addresses for correspondence. If, for example, the UKIPO required to provide notification to the owner of the comparable mark that a challenge to that mark had been received, the UKIPO would use the EU address for notification purposes.

However,  from 1 January 2024 the UKIPO will require the holders of comparable trade marks to provide a UK address for service of such notifications if the trade mark is subject to revocation, invalidation or rectification proceedings.

While UK service addresses are not required for other purposes such as renewal of the trade mark, registration or recording of any licence of the trade mark, owners of comparable marks should still consider doing so.

Following an appeal on a contested a trade mark in what is known as the Marco Polo case, where legal proceedings (such as invalidity or cancellation actions) are initiated against rights holders who do not have a UK address for service, the UKIPO will require the rights holder to provide a UK address within a specific timeframe. Failure to do so may result in the action being considered undefended, potentially leading to the cancellation of the trade mark registration.

If the trade mark owner is unable to provide a UK address for service within the timeframe specified or if, for any reason, the request from the UKIPO to provide a UK address is not received, the consequences for the rights holder could be significant and may result in the loss of registered rights.

Owners of comparable marks should therefore carefully consider whether a UK address for service should be provided to the UK IPO in advance of 1 January 2024.

If you need assistance with this process, please feel free to get in touch with us. We're here to help.

Lynn Richmond, Partner & Accredited Specialist in Intellectual Property: lyr@bto.co.uk / 0131 222 2939

Laura Patriche, Trainee Solicitor: lpa@bto.co.uk / 0131 222 2939