By Carin Burchell, ECTA International Trade Committee, Re Markability Limited (UK)

The UKIPO has updated its guidance on the address for service (AfS) requirements for comparable trade marks (‘clones’ of EU trade marks) and re-registered designs (‘clones’ of EU registered designs), in light of the upcoming changes when the 3-year grace period ends on 31 December 2023.

The guidance confirms that, from 1 January 2024, the IPO will require a UK AfS for comparable rights involved in any new invalidation, rectification, or revocation proceedings. This means an address in the UK, Gibraltar or the Channel Islands.

These changes do not affect new applicants for UK rights, since they already require a UK address for service.

With regard to an address for service in the EEA which is recorded against an existing registered trade mark or design, there is no requirement to provide a UK, Gibraltar or Channel Islands address for service for any of the following actions:

• renewal of registration
• surrender of registration
• recordal of any licence agreement details made with a third party
• changing address of the right holder

The UKIPO will ask for a UK, Gibraltar or Channel Islands address to be provided only if a UK registered trade mark or design is involved in any proceedings for:

• invalidation
• rectification
• revocation

In such cases, failure to provide a UK, Gibraltar or Channel Islands address would mean that proceedings could succeed (without the involvement of the rights owner) and the right could be, unknowingly, lost.

However, if the right is a comparable trade mark or re-registered design (or ‘clone’ of an EU registered trade mark or design), please refer to specific guidance below explaining the circumstances where a UK, Gibraltar or Channel Islands address is required.

For ongoing proceedings such as opposition, invalidation, or revocation which started before 1 January 2021, the following scenarios apply:

• if an EEA address for service is being used, this can be kept
• if an EEA address needs to be changed during any ongoing proceedings, it may be changed to another EEA address or an address in the UK, Gibraltar, or the Channel Islands
• if a UK address needs to be changed during any ongoing proceedings, it may be changed to another address in the UK, Gibraltar, or the Channel Islands.

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