The rules requiring brand owners to provide an ‘address for service’ are changing with effect from 1 January 2024.

An ‘address for service’ is the address provided to the UKIPO by a brand owner to enable the UKIPO and any third parties to correspond with them. An address for service can be an owner’s address or the address of a representative.

From the start of 2024, holders of ‘comparable’ trade marks and ‘re-registered’ designs which are clones of equivalent EU rights will, in some circumstances, have to provide an address for service in the UK, Channels Islands or Gibraltar (a UK address for service).

Prior to Brexit, holders of UK trade marks and designs were required to provide an address for service within the EEA.

Following the end of Brexit transition period, the rules requiring brand owners to provide an address for service changed. From 1 January 2021 onwards, holders of UK trade marks and designs have been obliged to provide a UK address in the following circumstances:

• When a new UK trade mark or design application is filed
• When responding to an absolute grounds objection
• If new opposition, revocation, invalidity or rectification proceedings are instigated against the relevant UK trade mark or design

It is not necessary to provide an address in the UK in the following circumstances:

• When a UK trade mark or design is renewed
• When a UK trade mark or design is surrendered
• When recording a licence against the relevant UK trade mark or design
• When the address of the holder of the UK trade mark or design is changed
• For the purposes of completing any opposition, revocation, invalidity or rectification proceedings which were pending against a trade mark or design with an EEA address for service as at 31 December 2020 (unless the holder chooses to do so)

Due to the terms of the Withdrawal Agreement, the rules set out above did not apply to ‘comparable’ trade marks or ‘re-registered’ designs which were created automatically at the end of the Brexit transition period.

The UKIPO has announced that, as of 1 January 2024, it will require a UK address for service for ‘comparable’ trade marks and ‘re-registered’ designs in the following circumstances:

• When changing an existing address for service
• If new revocation, invalidity or rectification proceedings are instigated against the relevant comparable trade mark or re-registered design

It is not necessary to provide an address for service in the UK in the following circumstances:

• When a comparable trade mark or re-registered design is renewed
• When a comparable trade mark or re-registered design is surrendered
• When recording a licence against a comparable trade mark or re-registered design
• When the address of the holder of the comparable trade mark or re-registered design is changed

For the purposes of completing any revocation, invalidity or rectification proceedings which were pending against a comparable trade mark or re-registered design with an EEA address for service as at 31 December 2023 (unless the holder chooses to do so).

The new address for service rules have applied to international trade marks and designs which designate the UK since 1 January 2021, subject to the modifications necessary to take account of WIPO’s role in the application process.

There was no equivalent exception for comparable international trade marks and designs created from trade marks and designs which designated the EU; the new address for service rules have also applied to those trade marks and designs since 1 January 2021.

Where a trade mark or design which does not already have a UK address for service is challenged in revocation, invalidity or rectification proceedings before the UKIPO, and no UK address for service is provided upon request, the relevant trade mark or design may be unilaterally declared invalid, revoked or rectified.

Upon receipt of an application for invalidity, revocation or rectification, the UKIPO will take steps to contact the relevant holder or representative by post using the address details they have on file. The UKIPO will ask the holder or representative to confirm whether it intends to defend the action and if so, to provide a UK address for service, usually within a one-month period. As this communication is sent by post, this does not allow much time for the holder or representative to respond.

Whilst it is not necessary in all circumstances to provide a UK address for service, doing so is the safest way to ensure that brand owners are notified promptly of any attacks on their registered trade marks and designs, failing which the relevant rights may be lost.

If you would like any guidance on the UK address for service rules, please contact a member of Wiggin’s IP team.