UK IPO updates address for service guidance

6th Sep 2023

Ahead of the upcoming changes to address for service rules for comparable trade marks and re-registered designs, the UK IPO has published updated guidance on the requirements.

Intellectual Property Office
© Shutterstock/ William Barton

The changes come into effect at the start of 2024 and will bring comparable rights, created to ensure post-Brexit continuation of protection in the UK for EU trade marks and registered Community designs, in line with existing UK rights.

From 1st January 2024, all new proceedings and requests to change an address on comparable rights will require an address for service that is in the UK, Gibraltar, or Channel Islands.

Proceedings include any invalidation, rectification, or revocation launched on or after 1st January 2024, provided the right was not derived from an international registration (which already requires a UK, Gibraltar, or Channel Islands address in these circumstances).

How we got here

As of 1st January 2021, only a UK, Gibraltar or Channel Islands address was allowed on new proceedings before the UK Intellectual Property Office (UK IPO).

This did not initially apply to the one million EU trade marks and Community designs that were recreated on the UK registers with the same filing and priority dates as the original EU rights.

However, as part of the Withdrawal Agreement between the EU and the UK, ‘cloned’ EU trade marks and re-registered Community designs were not “required to have a correspondence address in the United Kingdom in the 3 years following the end of the transition period” (Article 55.2 of the Withdrawal Agreement).

Now this period is about to be completed the UK IPO will require a UK, Gibraltar or Channel Islands address for service.

Click here to read the UK IPO guidance in full

Virtual offices

In an additional update, the UK IPO has provided a clarifying line on virtual offices and PO Box addresses.

The updated guidance states: "Whilst it is possible to provide a virtual office or a PO Box address, it still must be a valid address where notices or letters can be delivered and read by the intended recipient."