IP Information & News

Brexit — upcoming changes to trade marks, designs and address for service rules

Here’s a quick guide to the headline changes to IP rights from 1 January 2021, when the transition period relating to the UK’s exit from the European Union ends. For more detail about Brexit and answers to FAQs, see our dedicated Brexit webpage. We’ve also gone into depth about the upcoming changes to unregistered design rights.

Address for service requirements

From 1 January 2021, you’ll need a UK address for service for new patent, trade mark and design applications before the UK Intellectual Property Office. This requirement will also apply to new procedures that relate to existing IP rights.

What this means for you

  • This is a requirement when applying for a UK trade mark, design or patent. You will not be able to apply for IP rights in the UK without a UK address for service.
  • The same requirement applies to new contentious proceedings and hearings. You will not be able to oppose, challenge or defend IP rights in the UK without a UK address for service.
  • A UK address for service is also advisable for all existing IP rights in the UK to ensure any communications are received promptly.
  • Addresses in the European Economic Area will no longer be accepted.

Changes to trade marks and designs

From 1 January 2021, EU Trade Marks and Registered Community Designs (RCDs) will no longer be valid in the UK.

Pending EU applications

Pending EU trade mark and RCD applications will not be automatically replaced by comparable UK rights. This refers to any EU trade mark applications that are currently unpublished. New corresponding UK applications must be filed within nine months from 1 January 2021 in order to retain the EU filing date. It may be advisable to file UK applications corresponding to pending EU trade marks or pending RCDs now if they are unlikely to be registered by 31 December.

Registered EU rights

Existing EU trade mark registrations and RCDs will be immediately and automatically replaced by comparable, independent UK rights, which will have to be renewed separately. While this process should be straightforward, there may be complexities around issues such as licences or security interests.

International registrations

Protected EU designations of international trade marks and protected international (EU) designs will be immediately and automatically replaced by comparable UK rights, which will be recorded on the UK registers. These new UK rights must be challenged, assigned, licensed and renewed separately from the original international registration.

The automatic creation of UK rights will not apply to EU designations of international trade marks or international designs which have not been protected by the EUIPO at 1 January 2021. Applicants may claim the earlier date of the international trade mark or international design if they apply for a UK equivalent within nine months from 1 January 2021.

Get in touch

If you need guidance around IP rights and Brexit, get in touch with us at brexit@udl.co.uk or contact your usual representative. For more information, our dedicated Brexit webpage features a list of FAQs and we’ve taken a deep dive into the changes to unregistered design rights. Look out for further updates on our LinkedIn page.

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