We would like to bring to your attention that as of January 1, 2024, new rules regarding the address for receiving trademark notifications before the United Kingdom Intellectual Property Office (UKIPO) came into force and may have a significant impact on your trademark portfolio.
A service address is an address at which you receive postal correspondence from UKIPO or third parties regarding your UK registered trademark or proceedings relating to it. Under the new provision, if there is no UK address to notify and new contentious proceedings are commenced, the UKIPO will not notify you and this could result in the cancellation of trademarks in the UK.
A service address located in the United Kingdom, the Channel Islands or Gibraltar is now required to defend invalidity and revocation actions for non-use, and continue beyond the defense stage in opposition proceedings. If you do not have an address with these specifications and a third party requests to cancel or revoke your trademark, the UKIPO will send you a letter setting a period of one month for you to designate a United Kingdom address. However, you must nominate a UK address with the submission of the defense or within one month of submitting it to continue with the opposition proceedings. If the right holder does not respond, the process could prosper without his participation or defense and, ultimately, the right could be lost.
To safeguard rights, we recommend that rights holders proactively review their comparable UK trademarks and re-registered design rights and designate a valid UK notification address before the rules change.
If you wish, we can arrange for the representation of these UK brands at the UKIPO. We would notify the UKIPO and add the brands to our database. If your clients later wanted help with renewals or oppositions in the UK, we could provide the costs.
If you require additional information or would like VAHG to review the particular implications for your company, please contact the partner responsible for your matters or one of the attorneys listed below:
| Fernando Hernández Gómez | Partner
+52 (33) 38171731 Ext. 225 | fhernandez@vahg.mx |
Mariana González Sánchez | Partner
+52 (33) 38171731 Ext. 222 | mgonzalez@vahg.mx |
**The release of this document does not constitute legal, accounting or professional advice of any kind, nor does it intend to be applicable to particular cases. This document only refers to applicable laws in Mexico.