Burges Salmon LLP - UK
Getting an address for service (AfS) right is crucial as it is the address that the UK Intellectual Property Office (UKIPO) will use for correspondence in relation to IP rights and IP-related contentious proceedings. It can be the rights holder’s address or, more commonly, the address of the rights holder’s legal representative.
At present, an AfS before the UKIPO may be in the United Kingdom (including the Isle of Man), the Channel Islands or the European Economic Area (EEA).
Earlier this year, the UK government held a call for views and consultation in relation to proposed amendments to the AfS rules after the end of the Brexit transition period. An overwhelming 92% of respondents were in favour of changing the rules to exclude AfSs in the EEA, a key factor being the reciprocal rule changes being made by the EUIPO.
The government is now amending the AfS requirements. The new rules stipulate that from 1 January 2021, any AfS must be in the United Kingdom, Gibraltar or the Channel Islands (collectively referred to as the United Kingdom below). The UKIPO will cease to accept AfSs that are in the EEA. However, this rule is subject to certain transitional exceptions.
How does this affect new actions started on or 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 trademark or design, including those based on earlier pending EU trademarks or design applications;
- revocation and/or invalidity proceedings – if a trademark 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 trademark 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 trademark), a UK AfS will be required.
How does this affect ongoing actions started before 1 January 2021?
The UKIPO will not require an updated AfS for the following ongoing actions and automatically created comparable rights, to allow continuity of representation for a transitional period:
- Pending applications – an EEA AfS will be accepted for trademark and design applications filed before 1 January 2021. This also applies where publication of a design application has been deferred, or to other actions that are still considered part of the application process (eg, requests for extensions of time). However, a valid UK AfS under the new rules will be required if any proceedings are brought against the application after 1 January 2021.
- Ongoing proceedings – where there are ongoing proceedings (eg, opposition, revocation or invalidation actions) and an EEA AfS was recorded for these before 1 January 2021, this will remain valid until the proceedings are concluded.
- Owners of comparable trademarks and re-registered designs created automatically from existing EU rights at the end of the Brexit transition period need not provide a UK AfS under the new rules for a period of up to three years following 1 January 2021. This also applies to contentious proceedings issued in relation to these rights from 1 January 2021. The transitional period does not apply to comparable trademarks or re-registered designs created from international trademarks or designs designating the European Union.
It is imperative that rights holders ensure that they have a valid AfS at the UKIPO. The UKIPO will use this address to notify rights holders or their recorded representatives of major actions affecting their IP rights. In some cases, failure to provide a valid AfS or having an incorrect AfS and missing a notification from the UKIPO could result in the loss of important IP rights.
While the changes will not require any immediate action for those who have only registered rights, it is nevertheless important for all rights holders to take stock of the new requirements, particularly when applying to register new rights or challenging any third-party rights.
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. Appointing a UK representative from the outset will ensure the efficient and joined up management of UK IP portfolios, and will ensure that rights holders have local counsel with UK expertise already appointed in the event of contentious proceedings arising.