UKIPO’s Address for Service Rule Change Coming into Force on 1 January 2021

By Joanna Deas, Partner

The UK Intellectual Property Office (UKIPO) yesterday announced a significant change to its address for service rules. From 1 January 2021 IP owners will be required to supply a UK address for new patent and trademark applications in addition to any new contentious proceedings.  It is hoped that the new legislation will help establish a more of a level playing field for the UK when it becomes an independent nation.

Earlier this year, the UKIPO opened a consultation which proposed to remove references to ‘EEA’ in a move directly impacted by Brexit.  The overwhelming consensus was that 95% of those who participated in the survey where in favour of such a rule change.  The 5% who were not in favour tended to be based outside the UK or worked for larger multinational companies with in-house IP experts.

Notably, this change will not affect the Brexit-created cloned UK design and trademark registrations which result from existing EU design and trademark registrations.  These will be protected for at least three years under the Brexit withdrawal Agreement.  However, at the end of this period, a UK address for service must be recorded.

More detailed business guidance will be published shortly.  The government response can be found here https://www.gov.uk/government/consultations/address-for-service-rules-changes-call-for-views.