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Changes to representation rules before intellectual property offices

From 1 January 2021, there will be some changes to professional representation rules before intellectual property offices.

Intellectual property practitioners should be aware of the following:

Changes in EU trade mark and design cases

England and Wales solicitors acting as professional representatives will only be able to continue to represent clients in trade mark and design proceedings before the EU Intellectual Property Office (EUIPO) that are ongoing as of 31 December 2020. 

This right only covers proceedings pending before the EUIPO, including an appeal to the EUIPO’s Boards of Appeal.  It does not cover new onward appeals to the General Court or the Court of Justice of the EU. 

This right only covers acting as a professional representative, not as an employee representative (for example, in-house counsel).

For example, if an EUIPO Board of Appeal decision is issued on 20 December 2020, and an action for annulment is brought after 1 January 2021 challenging that decision, the England and Wales solicitor acting before the EUIPO Board of Appeal will not have entitlement to represent in the proceedings before the General Court.

England and Wales solicitors currently representing or assisting a party in proceedings before the General Court or Court of Justice of the European Union as of 31 December 2020, including by way of requests for preliminary rulings, may continue to represent or assist that party.

This applies to all stages of proceedings before the court, including an appeal to the Court of Justice and proceedings before the General Court if the case is referred back to it. 

Address for service rule change at UK Intellectual Property Office

The UK Intellectual Property Office (UKIPO) has announced changes to its address for service rules.

From 1 January 2021, all new proceeding brought before it will require a UK, Gibraltar or Channel Islands address.

Exceptions to this include ongoing proceedings and the ‘cloned’ rights arising from EU trade marks and registered community designs.

For more information, see the UKIPO’s business guidance.

The UKIPO is making more streamlined processes available for bulk changes of address for more than 50 comparable trade marks or designs. You can get further details from bulkafs@ipo.gov.uk.

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