Address for service for intellectual property rights from 1 January 2021

Guide

Last updated 11 March 2021

An address for service is an address that you use to correspond with the UK Intellectual Property Office (IPO) and also for the purposes of proceedings under IP legislation. It can be your address, or if you wish, you can provide the address of your attorney or representative.

The IPO's rules on address for service have changed. From 1 January 2021, you will need an address in the UK, Gibraltar or the Channel Islands before the IPO consider your application. This means the IPO will no longer accept addresses in the EEA. The changes will also affect other procedures relating to existing rights which are set out below.

You will not need to change your address for service if you already own a registered trade mark, design or granted patent where:

  • the right is on the register, and has no actions or proceedings related to it, or
  • you wish to renew it

You will not need to change your address for service if you own a registered right created from registered EU trade marks or registered EU designs for three years from 1 January. After that period you will need to change your address for service only if your right is subject to proceedings. See section on 'comparable rights and re-registered designs' below.

You may need to change your address for service if you already own a registered trade mark, design or patent in the scenarios given below.

The IPO is not changing the way they process any of their forms or changing any procedures. The change requires you to provide the IPO with a UK, Gibraltar or Channel Islands address for service where they would have previously accepted an address in the EEA. The IPO will continue to accept the Isle of Man as a valid address for service.

Actions on or after 1 January 2021

New applications
If you file an application for a patent, a trade mark or a design at the IPO you must have an address for service in the UK, Gibraltar or the Channel Islands.

This also applies to applications for trade marks and designs which have been filed claiming an EU IPO filing date as set out in Article 59 of the Withdrawal Agreement between the UK and EU.

In relation to applications for international trade marks and designs which designate the EU, and which are subsequently applied for in the UK, you must also have an address for service in the UK, Gibraltar or the Channel Islands.

You can find further information on intellectual property after 1 January 2021 in relation to claiming the filing date of a:

  • pending EU trade mark application
  • pending registered Community design application
  • deferred registered Community design

Challenging and defending rights
Registered trade marks, designs and granted patents may be challenged by means of revocation and/or invalidity proceedings. If your right is challenged, after 1 January 2021, and your address for service is outside the UK, the IPO will ask you to provide an address in the UK, Gibraltar or the Channel Islands to engage in those proceedings. If you fail to do this then the proceedings against you could succeed (without your involvement) and you could lose your right.

Pending trade mark applications may be challenged once they have been published by means of opposition proceedings. If your application is challenged after 1 January 2021, you will need to provide the IPO with an address for service in the UK, Gibraltar or the Channel Islands.

If you wish to challenge a trade mark at application stage via opposition proceedings, you must provide an address for service in the UK, Gibraltar or the Channel Islands, unless your challenge is based on a 'comparable right' (see below).

If you wish to challenge a registered trade mark or design, you must provide an address for service in the UK, Gibraltar or Channel Islands, unless your challenge is based on a 'comparable right' (see below).

If you wish to challenge a granted patent, you must provide an address for service in the UK, Gibraltar or Channel Islands.

European Patents
Granted European Patents which designate the UK are transferred onto the UK Register automatically. No validation is required. hey are transferred with the applicant’s details in the address for service field, as the IPO must have authorisation (Appointment or change or agent - Form 51) before it can recognise any representative. This is in line with their previous practice.

If you wish to appoint a representative, they will need to have an address in the UK, Gibraltar or the Channel Islands. There may be occasions where you already have a UK address for service for your European Patent, for example, the address of a UK representative who acted for you at the European Patent Office. The IPO will still need authorisation for that representative so that they can be sure they are acting for you in the UK, and update their systems accordingly.

Post registration actions
If your right is a registered trade mark or registered design, you will not need to file a new UK, Gibraltar or Channel Islands address if you wish to update the register.

This is in line with current processes which do not require a valid address for service. These include:

  • renewing your registration
  • surrendering it
  • adding details of a licence agreement you have made with third parties
  • changing your address if you are the rights holder
  • correcting an error or omission in the register

If your right is a granted patent, you will not need to file a UK, Gibraltar or Channel Islands address if you wish to renew it. This is in line with the current renewal arrangements which do not require a valid address for service. For all other actions relating to your granted patent you will need an address in the UK, Gibraltar or the Channel Islands.

A UK, Gibraltar or Channel Islands address will be required for all registered or granted rights if you are changing the nature of your right. For example, if you want to divide a trade mark. The same applies if it is subject to challenge, as mentioned above.

Actions started before 1 January 2021

The IPO will not require a UK address for service in the following scenarios:

New applications
If you filed an application before the 1 January 2021 you can retain your EEA address. However, if a proceeding is initiated against your right on or after 1 January 2021, the IPO will require a UK, Gibraltar or Channel Islands address for service.

Proceedings that were ongoing before 1 January 2021
If you have an EEA address for service and were involved in proceedings started before, and are still ongoing on, 1 January 2021 you will not need to change your address for service to the UK, Gibraltar or the Channel Islands to conclude them. This includes proceedings such as:

  • oppositions
  • invalidations, or
  • revocations

If you need to change your EEA address during any ongoing proceedings, you may change it to another EEA address or the UK, Gibraltar or the Channel Islands.

If you need to change your UK address during any ongoing proceedings, you will need to provide a replacement address in the UK, Gibraltar or the Channel Islands.

Comparable trade marks and re-registered designs
The IPO have created over 2 million UK rights based on EU rights ('comparable trade marks' and 're-registered designs'). If you become the holder of such rights, the Withdrawal Agreement between the EU and UK means that the IPO cannot require you to provide a UK address for service for these rights during the period of three years following 1 January 2021. If you own a comparable right or re-registered design and wish to change your address for service during that period, you can change it to another EEA address or the UK, Gibraltar or the Channel Islands.

The Withdrawal Agreement means the IPO will not require a UK, Gibraltar or Channel Islands address for service in any new contentious proceedings relating to these comparable rights, even if those proceedings were started on or after 1 January 2021. These proceedings include:

  • opposition
  • invalidation or
  • rectification

From 1 January 2024, the UK IPO will require a UK, Gibraltar or Channel Islands address for service where new contentious proceedings are launched.

Bulk change of address service

The IPO has introduced a new temporary service to process high volume requests to update the representative address for newly created comparable trade marks and re-registered designs.

The service will be available until 30 September 2021. It can be used to update at least 50 cases where you wish to apply a single UK address for service for:

  • some, or all, of the comparable trade marks or re-registered designs that currently have another representative's EEA address for service, OR
  • some, but not all, of the comparable trade marks or re-registered designs that you currently represent at an EEA address

Find further information on the bulk change of address service.

Representatives seeking to change to a UK address for less than 50 comparable trade marks and re-registered designs, should email the existing standard filing form TM33 or DF1A with a list of cases to be updated to forms@ipo.gov.uk.

International registrations derived from comparable trade marks and re-registered designs

This three-year retention of an EEA address does not cover comparable trade marks created from international trade marks.

It also does not apply to re-registered designs created from international designs designating the EU.

If you own one of these rights then a UK, Gibraltar or Channel Islands address for service will be required if any of the proceedings above are initiated.

Further guidance on UK and EU transition is available:

Requests for Ex-Parte Hearings, extensions of time and divisions relating to IP applications filed before 1 January 2021
The IPO would consider the following requests to be part of the ongoing application process:

  • a hearing
  • an extension of time, or
  • a request to divide an application

Therefore, even if the request itself is made after 1 January 2021, you will not need to file a UK, Gibraltar or Channel Islands address provided the request relates to an ongoing application that was filed before 1 January 2021.

If you make a request after 1 January 2021 to divide an application which you filed before 1 January 2021, the new divisional application will be able to retain the same address for service as the original application.

If your trade mark application was opposed before 1 January 2021, and as a result you file a request to divide your trade mark application after 1 January 2021, you can retain your EEA address for service.

Deferred designs
If you filed a design before 1 January 2021, and defer publication until 1 January 2021 or after, it can keep its existing address. The IPO will not require a UK, Gibraltar or Channel Islands address for publication.

Miscellaneous information

Online applications - 'save for later' feature
The IPO online services allow you to save your progress so you can complete an application at a later date. If you started an application before 1 January 2021 you will be able to select an address for service in the EEA.

If you saved the application and submitted it after 1 January 2021, the IPO will ask you to provide a UK, Gibraltar or Channel Islands address for service before they process your application further.

Forms
The IPO will update their paper forms to reflect the change from EEA to UK, Gibraltar and Channel Islands.


First published 23 November 2020