Brexit & Trademarks/Designs: UK Representatives for comparable IP rights as of 1 January 2024?

27 November 2023

The UK Trademark Office (UKIPO) has clarified which changes will apply to UK duplicates of European Union trademarks and Community Designs created as a result of Brexit from 1 January 2024. From this date, if the rights holder’s address changes, it is mandatory to provide an address of the UK, Gibraltar, or the Channel Islands. This can be either the address of the rights holder himself or that of a representative, for example a law firm.

Further to this it is necessary to have an UK address or a representative from the UK, Gibraltar or the Channel Islands in the event contentious proceedings are initiated against a comparable UK registration. This applies, for example, to invalidation or revocation proceedings brought against such Trademarks or Designs before the Trademark Office. The UKIPO will continue to forward information about the initiated proceedings to designated EU addresses beyond 1 January 2024. However, due to the delivery of this notice by post, the applicable short deadlines, and the subsequent mandatory naming of a UK addresses it is recommended to comply with these obligations now.

As a result, it is not mandatory for comparable UK registrations to name an UK address or an UK representative as of 1 January 2024. To avoid legal disadvantages, it may still be useful take the appropriate steps if not implemented already.

Further information on the topic of Brexit & Trademarks/Designs can be found here. The UKIPO notice is available here.