Contributors
On 1 January 2024, the UK Intellectual Property Office (IPO) updated their rules governing address for service (AFS) requirements for comparable UK trade mark and design registrations. Guidance on the changes can be found here. Briefly, if any contentious proceedings are lodged on or after 1 January 2024 against a comparable UK trade mark or design, appointment of a UK, Gibraltar or Channel Island address for service is required.
UK address for service
The AFS is the address used by the UK IPO, as well as third parties, to send correspondence to the proprietor. This could be the address of the owner themselves but is usually the address of a professional representative in the form of solicitor or intellectual property expert who relays the information received.
Comparable UK rights
On 31 January 2020, the United Kingdom left the European Union. At the end of the transition period on 1 January 2021, the UK IPO, as per the terms of the withdrawal agreement, cloned existing EU trade marks, registered Community designs and International registrations designating the EU, into comparable independent UK rights. This ensured protection in the UK was maintained.
You can find more information on our website about address for service requirements, trade marks and designs post Brexit.
Contentious proceedings
Contentious proceedings for the purposes of the new AFS rule for comparable UK trade marks, include invalidation, rectification or revocation actions and for comparable UK designs include invalidation actions.
In practice
If any new contentious actions are filed on or after 1 January 2024, and where no compliant AFS exists, the UK IPO will write (via Royal Mail's Signed-For service) to the contact details available to the Registrar at the time, directing a compliant AFS is appointed within one month from the date of the communication. Proprietors should be mindful of the possibilities of delays in the communication reaching them, particularly if the address used by the UK IPO is overseas, potentially not leaving much time to respond. Failure to provide an acceptable AFS, within the time allowed could mean proceedings are progressed without the involvement of the owner, leading to a potential loss of rights.
Recommendations
As well as current rules requiring an acceptable AFS is provided when applying for a UK trade mark or design, we recommend a compliant AFS is appointed for all UK comparable trade marks and designs, in addition to all UK designations of International trade mark or design registrations. We would also recommend this is a good time to update the UK register with changes to owner details (names, addresses etc.), transfers of ownership, as well as charge registers and licences, should they be required.
If you or your clients require UK representation or additional details regarding this change, please get in touch with Womble Bond Dickinson's team of IP specialists who would be happy to advise further.
This article was also authored by Alexander Shackleton, IP Formalities Manager at Womble Bond Dickinson.
