On 1 January 2024, new rules will come into effect concerning the UK IP Address for Service. With recent updates to regulations for IP professionals and the supremacy of CJEU case law in the United Kingdom, Luke Portnow explains what's changing and what it means for IP rights holders and trademark professionals operating in the UK.
While regulatory arrangements can be quite a dry subject matter for discussion, attention should be paid to these changes in the United Kingdom. The regulatory changes aim to only enhance the benefits of working with UK regulated professionals. This update should be well noted by our clients and any relevant UK intellectual property rights holders. For our updated terms of business, please contact your Novagraaf attorney.
The regulatory changes have required adaption of client account rules, significant changes to internal policies and processes, enhanced conflict checks, and amendment of client terms of business and letters of engagement. In a few cases, very long-standing clients are even required to sign new engagement letters.
UK IP Address for Service
The Intellectual Property Regulation Board (IPReg) is the regulatory body of Patent Attorneys & Trade Mark Attorneys in the United Kingdom. One of IPReg's revisions of the UK's regulatory arrangements relates to the UK IP Address for Service.
As of 1 January 2024, all new UK Intellectual Property Office (UKIPO) proceedings and requests for registration changes on comparable rights will require an address for service that is in the UK, Gibraltar, or Channel Islands.
Prior to this (since 1 January 2021) a UK, Gibraltar or Channel Islands address was only required on new proceedings before the UKIPO. Therefore, this did not initially apply to the one million UK Comparable Rights created from existing EU trademark and Community design registrations.
This has led to the UKIPO seeing many foreign-based representatives filing recordals and handling oppositions without knowledge of the local system.
In July 2023, the UK Minister for AI and Intellectual Property responded to The Chartered Institute of Trade Mark Attorneys' (CITMA) report on 'Unregulated representatives in the UK Intellectual Property system', confirming he had instructed the UKIPO to further investigate the issues raised by the report. A key finding of this report was that 'UK IP system consumers are facing higher costs, delays and disruption to business as a result of the presence of unregulated representatives.'
The updated regulations aim to solve these issues and provide enhanced protections for IP rights holders, to ensure a top-class regulated service.
Additionally, the UKIPO has confirmed that virtual offices and PO Boxes will only be valid if they can physically accept notices and letters. This change will help to prevent representatives using sham UK addresses for service.
Regulatory arrangements
IPReg's new regulatory arrangements for IP professionals entered into force in July 2023 with a new Core Regulatory Framework and Standard Operating Procedure.
This included a new IPReg Code of Conduct, new CPD requirements, client account rule changes, changes to authorisation and admission to the professional register, and updates to the disciplinary system (including enhanced oversight of the actions, duties and propriety of its regulated professionals).
These changes have required UK firms with IPReg regulated attorneys to update their rules on client accounts, wording of their terms of business and letters of engagement, and in some cases obligated to request signature of new letters of engagement from longstanding clients.
New Year 2024
The next calendar year will herald not only the new UK IP Address for Service rules (coinciding with and supported by the changes at IPReg for regulated professionals) but also the end to supremacy of EU (CJEU) case law in the United Kingdom.
We are yet to find out if further legal changes proposed by CITMA will be implemented. In its report, CITMA proposed a change to the law so that representatives would need not only a qualifying Address for Service but also either need to be a member of a regulated UK body (CITMA, CIPA, the Law Society, the list being non-exhaustive) or be a UK-based employee representative of the company or group of companies that holds the UK trademark or registered design in question.
2024 should make for an interesting period of developments in UK case law and representative requirements. The above-mentioned regulatory changes can only enhance the benefits of working with UK regulated professionals.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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