An address for service (“AFS”) is required in order to correspond with the UKIPO and for the purposes of proceedings relating to IP rights in the UK. The AFS rules currently require that address to be in the UK, Channel Islands or the EEA. From 1 January 2021 these rules will change, such that the address may need to be in the UK, Channel Islands or Gibraltar. In this note, we summarise the changes to the AFS rules and the steps you will need to take to address these changes in relation to Comparable UKTMs and Re-Registered UK Designs.
The representatives for registered EUTMs and RCDs will be carried across to the newly created Comparable UKTMs and Re-Registered UK Designs on 1 January 2021. If the representative for these marks is based in the new EEA, you do not have to update the register to record a new representative with a Valid AFS for the reasons outlined above. Nevertheless we suggest that you do so because: a) it is not known whether email addresses for those EUIPO representatives will carry across to the UK register, and so the UKIPO will send postal notifications which will take some time to reach the representative in the EEA; and b) it is advisable to have a UK specialist looking after your UK rights.
For proprietors of large EUTM and RCD portfolios, the recordal of new representatives at the UKIPO could be a time consuming task using the current paper form procedure. We are liaising with the UKIPO about a new service for the bulk transfer of Comparable UKTMs and RCDs to UK representatives and will update this note when we have further information on this point.
Authored by Emily Sharkey
No Deal Brexit: 5 key changes to your EU trade marks to look out for on 1 Jan 2021
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