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BREXIT - UK takes back control of its IPO

On 19 November 2020, the UKIPO published the government response to the outcome of a call for views on the question of the Address for Service rules at the UKIPO and whether the current position, which allows an address for service of matters handled at the UKIPO to be anywhere with the European Economic Area.  That consultation ran from 28 July to 14 August 2020 and the response can be seen here. 

The responses received were overwhelmingly in favour of removing reference to the EEA for a number of reasons, including:

  • On 1 January 2021, UK addresses for service at the EUIPO will no longer be accepted, and removing the EEA from the address for service requirements in the UK rules would simply be reciprocal
  • Requiring a UK address for service would bring the UK into line with other national IP offices including Germany and the US, both of whom require an address for service in their country
  • As the UK forges its own pathway apart from the European Union, its laws are likely to diverge from the present harmonised position, and knowledge of these changes requires UK based professional representation

The outcome of the response is that legislation will be passed in the UK parliament before 1 January 2021 to remove the EEA from the relevant parts of the rules relating to address for service.

In plain English?

From 1 January 2021, any new patents, trade marks or designs matters at the UKIPO will have to be filed with a UK address for service.  This will not apply to comparable rights created from EU Trade mark Registrations or ongoing matters, which are covered by the withdrawal agreement allowing a three year period before address for service rules can be altered.  It seems likely, however, that the address for service rules will in due course be extended to those rights after the three year period has passed.  The address for services rule changes will not apply to renewals.