Brief

Here is a summary of the document in a concise and easy-to-understand format:

Summary:

The Guidance Address for Service for Intellectual Property Rights document reviews the rules governing address for service for intellectual property rights in the UK. An address for service is a location where the Intellectual Property Office (IPO) and third parties can send correspondence and documents related to intellectual property proceedings.

Key Points:

1. An address for service must be a valid address in the UK, Gibraltar, or the Channel Islands.
2. If you file an application for a patent, trademark, or design, you must provide a UK, Gibraltar, or Channel Islands address for service.
3. If your existing address for service is an EEA address, you may not need to provide a new address for certain actions, such as renewing a patent or changing your address as the rights holder.
4. For proceedings started on or before 1 January 2021, you may keep an EEA address for service, but for proceedings started on or after 1 January 2024, a UK, Gibraltar, or Channel Islands address is required.
5. Comparable trade marks and re-registered designs that derive from international registrations that designate the EU require a UK, Gibraltar, or Channel Islands address for service for certain actions.

Conclusion:

The document provides guidance on the requirements for address for service for intellectual property rights in the UK. It highlights the importance of providing a valid address in the UK, Gibraltar, or the Channel Islands and provides specific rules for certain actions and proceedings.

Guidance

Address for service for intellectual property rights

This explains the rules governing address for service for intellectual property rights in the UK.

What is an address for service?

An address for service is an address at which you can receive correspondence from the Intellectual Property Office (IPO) or third parties regarding your application or registered right. This address will also be used to send documents related to intellectual property proceedings.

It can be any address with which you or your business is associated. For example, it can be your home or business address. If you appoint a representative, their address will then be used as the address for service for all correspondence. Whilst it is possible to provide a virtual office or a PO Box address, it still must be a valid address where notices or letters can be delivered and read by the intended recipient.

An address for service must be an address in the UK, Gibraltar or the Channel Islands. We also accept the Isle of Man as a valid address for service.

When you need a UK, Gibraltar or Channel Islands address for service

If you file an application for a patent, a trade mark or a design at the IPO, you must have an address for service in the UK, Gibraltar or the Channel Islands. If you do not provide a valid address for service, this could lead to your application being treated as withdrawn.

What if your address for service on an existing right is an EEA address?

If the address for service recorded against your existing granted patent is an EEA address, you are not required to provide a UK, Gibraltar or Channel Islands address if you wish to renew your patent or change your address as the rights holder. All other actions relating to your granted patent will require an address for service in the UK, Gibraltar or the Channel Islands.

If the address for service recorded against your existing registered trade mark or design is an EEA address, you are not required to provide a UK, Gibraltar or Channel Islands address for service for any of the following actions:

  • renewal of your registration

  • surrender of your registration

  • recordal of any licence agreement details you have made with a third party

  • changing your address as the right holder

We will ask you to provide a UK, Gibraltar or Channel Islands address only if your registered trade mark or design is involved in any invalidation, rectification, or revocation proceedings. If you fail to do so, then the proceedings against you could succeed (without your involvement) and you could lose your right. If your right is a comparable trade mark or re-registered design however, please refer to specific guidance below explaining the circumstances where a UK, Gibraltar or Channel Islands address is required.

For proceedings such as opposition, invalidation, or revocation which started before 1 January 2021, the following scenarios apply:

  • if you have an EEA address for service, this can be kept if you wish

  • if you need to change your EEA address during any ongoing proceedings, you may change it to another EEA address or an address in the UK, Gibraltar, or the Channel Islands

  • if you need to change your UK address during any ongoing proceedings, you will need to provide a replacement address in the UK, Gibraltar, or the Channel Islands

What if your address for service on a European Patent is an EEA address?

Granted European Patents which designate the UK are transferred onto the UK Register automatically. No validation is required. They are transferred with the applicant’s details in the address for service field, as the IPO must have authorisation before it can recognise any representative. A form 51 (appointment or change of agent) must be filed in this instance.

If you wish to appoint a representative, they need to have an address in the UK, Gibraltar or the Channel Islands. There may be occasions where you already have a UK address for service for your European Patent, for example, the address of a UK representative who acted for you at the European Patent Office. We still need authorisation for that representative so that we can be sure they are acting for you in the UK and update our systems accordingly.

What is changing from 1 January 2024 for comparable trade marks and re-registered designs?

If you wish to change the address for service recorded against a comparable trade mark or re-registered design (provided the right was not derived from an international registration) on or after 1 January 2024, the IPO will require a new address in the UK, Gibraltar or the Channel Islands.

The IPO will also require a UK, Gibraltar or Channel Islands address for service for all comparable trade marks or re-registered designs involved in any invalidation, rectification, or revocation proceedings launched on or after 1 January 2024, provided the right was not derived from an international registration (which already requires a UK, Gibraltar, or Channel Islands address in these circumstances).

For proceedings started on or before 31 December 2023, there is no obligation to provide a UK, Gibraltar or Channel Islands address for service on existing registered comparable rights not derived from an international registration. However, you can change an EEA address for service to a UK, Gibraltar or Channel Islands address if you so wish.

Comparable trade marks and re-registered designs which derive from international registrations that designate the EU

If you choose to change your existing address for service recorded against a comparable mark or re-registered design derived from an international registration, the new address will need to be in the UK, Gibraltar or the Channel Islands.

If you own a comparable trade mark or re-registered design derived from an international registration, we will ask you to provide a UK, Gibraltar or Channel Islands address if your registered right is involved in any invalidation, rectification, or revocation proceedings. If you fail to do so, then the proceedings against you could succeed (without your involvement) and you could lose your right.

Further guidance on UK and EU transition is available on GOV.UK via the following notices available here (EU trade mark protection and comparable UK trade marks from 1 January 2021) and here (Changes to EU and international designs and trade mark protection from 1 January 2021).

Published 23 November 2020
Last updated 1 September 2023 + show all updates

  1. Revised Address for Service guidance for patents, trade marks and designs at the Intellectual Property Office.

  2. First published.

Contents

Highlights content goes here...

Summary: Guidance on Address for Service for Intellectual Property Rights

Date: November 23, 2020 | Last updated: September 1, 2023

The Intellectual Property Office (IPO) and Government Digital Service published guidance on the rules governing addresses for service for intellectual property rights in the UK. This guidance outlines the requirements for providing an address for service and the consequences of not doing so.

What is an address for service?

An address for service is an address at which the IPO or third parties can receive correspondence regarding an application or registered intellectual property right. This address must be a valid address in the UK, Gibraltar, or the Channel Islands.

When do I need a UK, Gibraltar, or Channel Islands address for service?

A UK, Gibraltar, or Channel Islands address for service is required when:

Filing an application for a patent, trade mark, or design at the IPO
Renewing a patent or changing the address as the rights holder (with an EEA address for service recorded against an existing granted patent)
Renewal of a registered trade mark or design or recordal of a licence agreement (with an EEA address for service recorded against an existing registered trade mark or design)
Involved in invalidation, rectification, or revocation proceedings (with a comparable trade mark or re-registered design)

What if my address for service on an existing right is an EEA address?

If the address for service recorded against an existing granted patent is an EEA address, there is no requirement to provide a UK, Gibraltar, or Channel Islands address for service for certain actions, such as renewal, change of address, or recordal of licence agreement details. However, if the right is involved in invalidation, rectification, or revocation proceedings, the IPO will ask for a UK, Gibraltar, or Channel Islands address.

What if my address for service on a European Patent is an EEA address?

Granted European Patents designating the UK are transferred onto the UK Register automatically, without validation. A change of address for service may require a UK, Gibraltar, or Channel Islands address.

Changes from 1 January 2024 for comparable trade marks and re-registered designs

From 1 January 2024, the IPO will require a new UK, Gibraltar, or Channel Islands address for service for comparable trade marks or re-registered designs (unless derived from an international registration). Similarly, all comparable trade marks or re-registered designs involved in invalidation, rectification, or revocation proceedings will require a UK, Gibraltar, or Channel Islands address for service.

Conclusion

It is essential to ensure that you provide a valid address for service when filing an intellectual property application or managing an existing right. Failure to do so may lead to delays or even loss of rights. This guidance provides clarity on the requirements for providing an address for service in the UK, Gibraltar, or the Channel Islands.

Intellectual Property Office

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