Risks with retaining a non-UK address for service for a UK registered design
August 23, 2023
Recent and upcoming changes to the UKIPO’s address for service requirements could create risks and complexity for UK registered design holders with a non-UK address for service, if their registered designs are challenged. Now might be a good time to review the service addresses listed for your UK registered designs.
UK registered designs can be owned by non-UK entities, but require a UK address for service to be provided such as the address of a UK firm of patent and trade mark attorneys.
As a result of the UK’s former membership of the EU, many existing UK registered designs still retain an address for service based in the European Economic Area (EEA), which was previously allowed under the UK’s membership of the European Union (EU).
In such cases, a UK address for service will need to be appointed if a registered design with a non-UK address for service is challenged by an invalidation action.
If your registered design is challenged, and your address for service is outside the UK, the UKIPO will post a letter to your non-UK address for service giving you one month to provide a UK address for service. This applies regardless of whether your design was first filed in the UK or is a post-EU re-registered design cloned from an EU registration on Brexit day.
Similarly, if you wish to challenge a UK registered design, you must provide a UK address for service. From 1 January 2024, this requirement will also apply to re-registered designs.
A similar requirement applies for contentious trade mark proceedings.
If you receive the UKIPO’s posted letter too late, or not at all, the UKIPO may continue the proceedings without your involvement and you may lose your right.
Since the letter is posted overseas, the chance of delays is higher. Letters to larger companies may also change hands several times once they have been delivered, before they arrive with the relevant decision maker.
Even assuming that the letter will arrive promptly in most cases, this process still introduces an extra step that must be followed, with the associated delays and inconvenience.
A UK firm such as Swindell & Pearson can be appointed as the UK address for service, to address the above risk. A UK firm would be notified quickly of the invalidity application and would not need to respond to the UKIPO until the specified response deadline, typically longer than one month.
If you are concerned that your UK registered designs may be affected, please get in touch with your usual contact at Swindell & Pearson or contact Tim Gilbert, the author of this article.