UK trade mark rights: Changes coming for foreign owners

UK trade mark rights: Changes coming for foreign owners

Foreign owners’ UK trade mark rights may be in jeopardy because the Intellectual Property Office does not have an address for service in the UK on file for them. Agents representing overseas owners should appoint local IP lawyers to ensure that proceedings relating to their clients’ trade marks come to their attention in good time to respond.

When you apply direct to the Intellectual Property Office in the UK to register a trade mark, you have to give an address in the UK. For overseas applicants, that will be the address of an agent (usually a solicitor or trade mark attorney) here. But if you have an International Registration that extends to the UK, or a 'corresponding' UK trade mark (cloned from an EU trade mark when the UK left the EU), there has never been a requirement for an address in the UK. The IPO knows where the applicant or its agent can be contacted, but in another country.

The IPO can require an address for service to be provided, but in a recently-reported case it had not done so and it served invalidation papers on the only address it had – the office of the proprietor’s accountants, in Australia. Unfortunately, this office was closed because of lockdown requirements, so the proceedings did not come to the attention of the proprietor and, in default of a defence the registration was cancelled. The IPO’s practice of sending papers by post exacerbates the situation and it is not unknown for letters to arrive in Australia after the date set for a reply.

Intellectual Property Partner Lindsay Gledhill commented:

The IPO’s practice is going to change, but not until December 2023 when it will require an address for service in the UK for the majority of office actions. This will affect not only some 146,000 IRs designating the UK, but also many thousands of corresponding trade marks. It is possible that the IPO will also require representatives to be qualified, so appointing a firm of lawyers or trade mark attorneys in the UK may become mandatory at that point.

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