An address for service is an address that you use to correspond with the UK Intellectual Property Office (IPO) and also for the purposes of proceedings under IP legislation. It can be your address, or if you wish, you can provide the address of your attorney or representative.

The transition period relating to the UK’s exit from the EU ends on the 31 December 2020. During this time, if you file a patent, trade mark or design application you must provide an address in the UK (which for these purposes includes the Isle of Man), Channel Islands or the European Economic Area (EEA). If an application does not contain an address in these areas then we cannot process the case until you provide us with one.

Subject to legislative implementation, on 1 January 2021 the UK IPO’s rules on address for service will change. From 1 January 2021 you will need an address in the UK, Gibraltar or the Channel Islands before we consider your application. This means we will no longer accept addresses in the EEA. The changes will also affect other procedures relating to existing rights which are set out below.

You will not need to change your address for service if you already own a registered trade mark, design or patent, except in the scenarios below.

We are not changing the way we process any of our forms or changing any procedures. The change requires you to provide us with a UK, Gibraltar or Channel Islands address for service where we would have previously accepted an address in the EEA. We will continue to accept the Isle of Man as a valid address for service.

Actions on or after 1 January 2021

New applications

From 1 January 2021, if you file an application for a patent, a trade mark or a design at the UK IPO you must have an address for service in the UK, Gibraltar or the Channel Islands.

This also applies to applications for trade marks and designs which have been filed claiming an EUIPO filing date as set out in Article 59 of the Withdrawal Agreement between the UK and EU.

You can find further information on GOV.UK about claiming the filing date of a:

• pending EU trade mark application
• pending registered Community design application
• deferred registered Community design

Challenging and defending rights

Registered trade marks, designs and granted patents may be challenged by means of revocation and/or invalidity proceedings. If your right is challenged, on or after 1 January 2021, and your address for service is outside the UK, we will ask you to provide an address in the UK, Gibraltar or the Channel Islands to engage in those proceedings. If you fail to do this then the proceedings against you could succeed (without your involvement) and you could lose your right.

Pending trade mark applications may be challenged once they have been published by means of opposition proceedings. If your application is challenged on or after 1 January 2021, you will need to provide us with an address for service in the UK, Gibraltar or the Channel Islands.

If you wish to challenge a trade mark at application stage via opposition proceedings, you must provide an address for service in the UK, Gibraltar or the Channel Islands, unless your challenge is based on a ‘comparable right’.

If you wish to challenge a registered trade mark or design, you must provide an address for service in the UK, Gibraltar or Channel Islands, unless your challenge is based on a ‘comparable right’.

If you wish to challenge a granted patent, you must provide an address for service in the UK, Gibraltar or Channel Islands.

European Patents

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 only, as the UK IPO must have authorisation (Appointment or change or agent – Form 51) before it can recognise any representative. This is current practice and will not change.

From 1 January 2021 if you wish to appoint a representative, they will 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 will 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.

Post registration actions

If your right is a registered trade mark or registered design, you will not need to file a new UK, Gibraltar or Channel Islands address if you wish to update the register.

This is in line with current processes which do not require a valid address for service. These include:

• renewing your registration
• surrendering it
• adding details of a licence agreement you have made with third parties
• changing your address if you are the rights holder
• correcting an error or omission in the register

If your right is a granted patent, you will not need to file a UK, Gibraltar or Channel Islands address if you wish to renew it. This is in line with the current renewal arrangements which do not require a valid address for service. For all other actions relating to your granted patent you will need an address in the UK, Gibraltar or the Channel Islands.

A UK, Gibraltar or Channel Islands address will be required for all registered or granted rights if you are changing the nature of your right. For example, if you want to divide a trade mark. The same applies if it is subject to challenge, as mentioned above.

Actions started before 1 January 2021

We will not require a UK address for service in the following scenarios:

New applications

If you filed an application before the 1 January 2021 you can retain your EEA address. However, if a proceeding is initiated against your right on or after 1 January 2021, we will require a UK, Gibraltar or Channel Islands address for service.

Proceedings that were ongoing before 1 January 2021

If you have an EEA address for service and were involved in proceedings started before, and are still ongoing on, 1 January 2021 you will not need to change your address for service to the UK, Gibraltar or the Channel Islands to conclude them. This includes proceedings such as:

• oppositions
• invalidations, or
• revocations

If you need to change your EEA address during any ongoing proceedings, you may change it to another EEA address or 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.

Comparable trade marks and re-registered designs

We are creating over 2 million UK rights based on EU rights (‘comparable trade marks’ and ‘re-registered designs’). If you become the holder of such rights, the Withdrawal Agreement between the EU and UK means that the UK IPO cannot require you to provide a UK address for service for these rights during the period of three years following 1 January 2021. If you own a comparable right or re-registered design and wish to change your address for service during that period, you can change it to another EEA address or the UK, Gibraltar or the Channel Islands.

The Withdrawal Agreement means we will not require a UK, Gibraltar or Channel Islands address for service in any new contentious proceedings relating to these comparable rights, even if those proceedings were started on or after 1 January 2021. These proceedings include:

• opposition
• invalidation or
• rectification

From 1 January 2024 the UK IPO will require a UK, Gibraltar or Channel Islands address for service where new contentious proceedings are launched.

This three-year retention of an EEA address does not cover comparable trade marks created from international trade marks.

It also does not apply to re-registered designs created from international designs designating the EU.

If you own one of these rights then a UK, Gibraltar or Channel Islands address for service will be required if any of the proceedings above are initiated.

Further guidance on UK and EU transition is available on GOV.UK:

1. EU trade mark protection and comparable UK trade marks from 1 January 2021.
2. Changes to EU and international designs and trade mark protection from 1 January 2021.

Requests for Ex-Parte Hearings, extensions of time and divisions relating to IP applications filed before 1 January 2021

We would consider the following requests to be part of the ongoing application process:

• a hearing
• an extension of time, or
• a request to divide an application

Therefore, even if the request itself is made on or after 1 January 2021, you will not need to file a UK, Gibraltar or Channel Islands address provided the request relates to an ongoing application that was filed before 1 January 2021.

If you make a request after 1 January 2021 to divide an application which you filed before 1 January 2021, the new divisional application will be able to retain the same address for service as the original application.

If your trade mark application was opposed before 1 January 2021, and as a result you file a request to divide your trade mark application on or after 1 January 2021, you can retain your EEA address for service.

Deferred designs

If you filed a design before 1 January 2021, and defer publication until 1 January 2021 or after, it can keep its existing address. The UK IPO will not require a UK, Gibraltar or Channel Islands address for publication.

Miscellaneous information

Online applications – ‘save for later’ feature

Our online services allow you to save your progress so you can complete an application at a later date. If you start an application before 1 January 2021 you will be able to select an address for service in the EEA. If you save the application and submit it on or after 1 January 2021, we will ask you to provide a UK, Gibraltar or Channel Islands address for service before we process your application further.

Forms

We will update our paper forms to reflect the change from EEA to UK, Gibraltar and Channel Islands.