February 14, 2024: To our clients having EU trademarks applied for/registered before Brexit

EU trademarks, existing on December 31, 2020, each received comparable trademarks valid in the United Kingdom at the time of Brexit. The United Kingdom acted similarly with the EU trademark applications pending on December 31, 2020.

The use of UK trademarks should now be taken into consideration. Anyone has the possibility to claim revocation of an older trademark for lack of genuine use. The holder of an older trademark right may also apply for a trademark registration to be invalidated based on his or her older trademark right.

The UK IP Office is changing its policy as of January 1, 2024, and will require registered trademark rights, subject to revocation and invalidity applications, to have a UK address for service purposes. If an address for service has not been provided, the UK IP Office will send, in the event of an application for revocation or invalidation, by registered mail, a request to the trademark holder to designate the address. The request shall have a time limit of one month for indicating the address for service. In view of the recent problems with the delivery of mail, this deadline is so short that we cannot exclude the risk of loss of rights.

The UK law firm that we use in trademark matters will register themselves as an address for service without costs. Although they do not charge for registering the address for service, it is advisable to be prepared for the costs of all measures taken by the local representative (e.g., receiving and processing notifications from the UK Intellectual Property Office). Please contact us if you wish them to be registered as your representative in the UK.