Brexit - Changes to Address for Service Rules in the UK from 1 January 2021

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.

Changes to the AFS Rules

  • New UK design and trade mark applications filed on or after 1 Jan 2021 will require an AFS in the UK, Channel Islands or Gibraltar (a “Valid AFS”). This includes applications which are filed on the basis of a pending EUTM application.
  • A Valid AFS will not be required for Comparable UKTMs or Re-Registered UK Designs (see our earlier blog here) until 1 January 2024, even in relation to contentious actions started in relation to these rights on/after 1 Jan 2021. Note that the position is different for these rights that are created from International Registrations, as discussed below.
  • Proprietors of existing registered or pending UK designs and trade marks and Comparable UKTMs and Re-Registered UK Designs created from International Registrations (an “Existing Right”) which have an AFS in the EEA will only need to change the AFS to a Valid AFS in the following circumstances:
    • If an opposition/revocation/invalidity action is filed against the Existing Right on/after 1 Jan 2021. If the AFS is not updated to a Valid AFS, then the UKIPO will treat the action as being undefended.
    • If they wish to change the nature of the Existing Right (e.g. limit the goods/services or divide the registration).
  • Parties involved in proceedings started on/before 1 Jan 2021 in relation to an Existing Right with an EEA AFS do not need to change the AFS to a Valid AFS.
  • A Valid AFS will not be required for performing the following acts in relation to an Existing Right on/after 1 Jan 2021:
    • renewing the registration;
    • surrendering it;
    • recording a licence;
    • changing the address;
    • correcting an error or omission in the register.
  • A Valid AFS will be required for anyone initiating an action against a UK trade mark or design on/after 1 Jan 2021.

Steps to take in relation to Comparable UKTMs and Re-Registered 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

 

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