BREXIT: Changes to Service Address rules for UK Intellectual Property Office
UK Trade Mark Holders required to have a UK registered service address.
From 1st January 2021, UK Trade Mark Holders are required to have a UK registered service address. EU registered addresses are no longer allowed.
Your Address for Service (AfS) at UK Intellectual Property Office (UKIPO) is the address the UKIPO is the addressed registered for the representative/owner of the registered trademark (TM) or other intellectual property right (IPR). It is used for communication, legal notice and service in respect of a proprietor’s TM/ IPR. It is usually either the rights holder’s address or, more commonly, the address of the rights holder’s legal representative.
It is crucial that the AfS is correct and up to date. If not, then the rights holder runs the risk of falling foul of registration rules or being liable to proceedings without knowing.
Before BREXIT the AfS could be any address within the EU/ European Economic Area (EEA), but not anymore.
Following a government review in 2020, 92 per cent of respondents were in favour of changing the rules to exclude AfS based outside of the UK/ Channel Islands. This response was likely in part to the fact that the EUIPO have done the same for EUTMs.
ACTION TO TAKE
Rights holders must have a valid UK based AfS at the UKIPO.
Having a valid AfS, as well as ensuring all other administrative housekeeping in relation to IP rights is up to date, will be particularly important given the vast numbers of cloned UK rights that some rights holders will automatically inherit and must manage after 1 January 2021.
Having a UK AfS is a must, and appointing a UK representative from the outset will ensure the efficient and joined up management of your UK IP portfolios, and will ensure that rights holders have local counsel with UK expertise already appointed in the event of contentious proceedings arising.
Professional Address for Service Representatives
Ai Law provides a professional address for service representative at UK IPO through our Beyond Legal Service.
Our fees for acting £250 plus VAT per annum. For further details see here.
We also offer professional counsel and advice on UKIPO matters and trademark matters. Check our Trademark Application Service Here.
To contact us, please get in touch in the side bar or by clicking here to speak to a member of our team today.
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How does the change take effect after 1 January 2021?
The new AfS rules will apply to all new actions started before the UKIPO from 1 January 2021, including:
- new applications to register a UK trade mark or design, including those based on earlier pending EU trade marks or design applications;
- revocation and/or invalidity proceedings – if a trade mark or design is challenged and the registered AfS is outside the United Kingdom, the UKIPO will request a new valid AfS; failure to provide an updated AfS could result in the proceedings succeeding in default and a loss of the registered right;
- opposition proceedings – if a pending trade mark application is opposed on or after 1 January 2021, a valid UK AfS will be required for the proceedings;
- challenges to IP rights – if a party intends to challenge another party’s IP right by way of opposition, revocation, invalidity or other such proceedings, it must provide a UK AfS, the only exception being if the challenge is based solely on a comparable right cloned from an existing EU right (as explained further below); and
- changing the nature of registered rights – if a party intends to change the nature of a registered right (eg, by dividing a trade mark), a UK AfS will be required.
The UKIPO will not require an updated AfS for some ongoing actions and automatically created comparable rights, to allow continuity of representation for a transitional period, but best practice says to put one in place.
What will happen to EUTMs after 1 January 2021?
For all registered EUTMs, the UK IPO will create comparable UK trade marks, which will be recorded on the UK register.
These comparable UK rights will retain the filing dates recorded against the corresponding EUTM and will also inherit any priority and/or seniority dates. They will be fully independent UK trade marks which can be challenged, assigned, licensed or renewed, separately from the original EUTM.
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