Address for Service after the Brexit Implementation Period

Document No: PUB 20N/20 Posted: 01 February 2021

An important topic coming out of the impending end of the Brexit implementation period (also known as the transition period) is addresses for service for IP rights. As many but not all readers will be aware, an address for service is the contact and address to which legal notices under the rights should be sent. As things stand, a UK address for service is permitted for EU rights and any address in the European Economic Area (“EEA”) is permitted as the address for service for UK rights. It has been clear for some time that UK addresses for service will not be allowed for European Union trade marks after the end of the implementation period but, as things stand, EEA addresses will be allowed for UK trade marks.

Clearly, there is a disparity in these approaches. In July the UK Intellectual Property Office (UK IPO) launched a consultation on proposed changes to the address for service rules in the UK to remove the reference to the EEA, meaning that only UK or Channel Island addresses for service would be accepted for UK registered rights. This would apply to new applications for patents, trade marks and designs and also to requests for hearings. It would also apply to requests to start potentially contentious proceedings. It would not apply to actions which are lodged with the UKIPO before the end of the implementation period.

Recognising that businesses use and pay for the systems under which rights are registered, the IP Federation concluded that it is unreasonable for a rights owner in the UK to be required to appoint a UK address for service. Many businesses including IP Federation members have non-UK, EEA-based representatives and would like to have the option of them continuing to be the address for service on UK records. The localised provisions proposed by the UK Government do not benefit UK businesses which operate across Europe. Rather, they increase overheads for these businesses.

The IP Federation responded to the UK IPO’s consultation expressing its position and pressed for an impact assessment to be undertaken before the changes are made.

Thomas Hannah, Trade Mark Committee Chair