Client email address now required for International Trade Mark Applications

Quick read

As of 1 February 2021, there is a new requirement for applicants filing international trade marks to indicate their email address on the application form. This is an important new requirement – if it is not adhered to, there is potential for the application to be deemed abandoned.

Key points

Applicants must provide an email address, even if represented. The email address must be different to the email address of the representative (and should not be an address set up by the representative on the applicant's behalf). This means that if Taylor Wessing is the representative for an international trade mark application, a separate client email address will still be required.
Failure to indicate an email address for the applicant, or recording one that is the same as the representative's, can have a serious impact on the trade mark application. It will show as an irregularity that needs to be rectified in a two-month time period. If it is not rectified, the application will be deemed abandoned.
Preferably, applicants should avoid providing a general, catch-all email address (such as a customer service email address) which receives numerous emails. It will be difficult to spot an important legal email if such an address is used. We recommend setting up a new email address purely for communications concerning International trade marks. Practically, this email address should only need monitoring periodically, as most communications will be sent to the representative.
There is scope for scam invoices and notifications to be sent to the email address designated by the applicant. Any requests for payments will always be sent to the representative – not the applicant – for the mark. If in doubt, we will be able to advise whether a communication is genuine.
Note that the same requirement applies to new holders/transferees of International marks. Where the email address of the new holder (transferee) has not been provided in the request for recordal of the change in ownership and this is not remedied within a specified time limit, the change in ownership will not be recorded.