What is a “Comparable Right”?

At “Brexit”, the EUIPO took steps to withdraw the representational rights of all non-EU based representatives.

On 1st January 2021, all registered EU trade marks and Community designs were “cloned” and re-registered, creating new and independent comparable UK trade mark registrations and comparable UK registered designs.

These comparable rights were automatically entered on the United Kingdom Intellectual Property Office (UKIPO) register and must now be managed separately and renewed at the appropriate dates by the owners in order to maintain them.

At the time, although over two million new records were created, the Withdrawal Agreement stipulated that the UKIPO could not mandate rights owners to record a UK address for service against each comparable right for a period of 3 years, until 1st January 2024.

What happens at 1st January 2024?

As from 1st January 2024, it will be necessary to record a UK address for service where new contentious proceedings are launched against a UK comparable trade mark or re-registered design.

Failure to provide a UK address may result in a loss of rights.

This means that it will be  mandatory to record a valid UK-based representative  as an address for service against any comparable right when that right is subject to a challenge by another party, such as for example, by means of:

• Opposition
• Invalidation
• Revocation

In addition,  a UK address for service will be required for any rectification procedure made against a UK comparable trade mark or design registration.

What happens if there is no UK address for service recorded?

On receipt of an application to invalidate, revoke or rectify any comparable trade mark (or invalidate any UK comparable design) where that trade mark or design right does not have a UK address for service, the UKIPO will notify the registered proprietor of the challenge  by post  and set them a  very short deadline to appoint a UK address for service. 

What is the deadline to appoint a UK address for service?

When an action is received against a comparable trade mark right or design that does not have a UK address for service recorded, the UKIPO will set the owner a period of  one month  to record a UK address for service – commencing from the date of the issue of the letter.

We stress that this letter will be sent by standard post and not by any recorded or tracked service. 

Why should I be concerned about this?

It goes without saying, a letter can sometimes take a long time to reach its overseas destination.

That can leave very little – or no time at all – to respond to it and appoint a UK address for service.

If no UK address for service is appointed before the deadline then the UKIPO will deem the action to be uncontested, meaning that the UK comparable right would be lost.

Is it ESSENTIAL to record a UK address for service against UK comparable rights after 1st January 2024?

No, it is not absolutely essential, but the risks are very clear.

If the right is challenged, the owner of the right may not be given sufficient notice of this and will not be able to appoint a UK address for service in time.

If that happens, the right would be deemed to be uncontested and removed from the register.

What do you advise?

Taking the above into account, it makes sense  not to take any risks  and to be proactive.

SH&P advise that a UK address for service be recorded against all comparable rights NOW –  before 1st January 2024

Once that is in place, all notifications are then sent by the UKIPO (by email) to the recorded UK address for service.

The comparable right owners then do not have to worry about rushing to record a UK address for service in order to defend their rights from the challenge of another party.

What about international trade mark and design rights?

The UKIPO have already adopted a change of practice in relation to UK designations under international trade mark registrations and to UK Hague design registrations, which came into effect on 25th January 2023.

The new UKIPO practice is summarised as follows:

 All proprietors of UK IR designations or UK Hague registrations must now have a UK address for service  in order to defend an action brought by a third party.

• Where there are trade mark invalidation, revocation, rectification and opposition proceedings, or registered design invalidation proceedings, and the UK designation or UK design does not have a UK address for service recorded, the holder will be notified by the UKIPO (via the contact details held by WIPO) and they will have 1 month to appoint an address for service in the UK.  If no UK address for service is appointed within that 1 month period, then the UK designation or design will be deemed to be withdrawn or declared invalid

• All notifications from the UKIPO with a request for a holder to record a UK address for service address are being sent by post. There is no indication in the UKIPO guidelines that such notifications will be sent by email.

Given the above, we consider it to be very important that a UK address for service is appointed to ensure that owners of these rights are promptly informed of any actions taken against them by other parties.

How can SH&P help and why use SH&P as your UK representative?

There are some great benefits to using SH&P as your preferred UK representative.

Firstly, we were first established in 1915 and our firm has vast experience in all contentious and non-contentious trade mark and design matters.
Secondly, we are able to offer you an attractive package should you wish to entrust any comparable trade mark or design rights to our care.
Thirdly, we are able to handle the integration into our records of very large trade mark (and design) portfolios with efficiency, accuracy and speed.

We would be very pleased to give you details of this on request. Please Contact Us to discuss, or you can fill out the form below.