Brexit: UK Trade Marks and Designs – do you have the right Address for Service (AfS)?

United KingdomScotland

The Brexit transition period is due to end in less than six weeks on 31 December 2020 making it paramount for IP right holders to ensure that their valuable IP rights remain well protected in the UK. The UK Government on Monday published guidance on the eagerly awaited topic of Address for Services (AfS) Rules at the UKIPO. These rules govern the address required to correspond with the UK Intellectual Property Office (“UKIPO”), and for the purpose of IP proceedings.

The Rule

Currently, any applicant for a UK trade mark or design application can provide an address in the European Economic Area (“EEA”). From 1 January 2021, applicants will need to provide an address in the UK, Gibraltar or the Channel Islands - an address in the EEA will no longer be accepted. If an application was filed prior to 1 January 2021 then an EEA address can be retained. But this will have to change to a UK, Gibraltar or Channel Islands address if the application is challenged on or after 1 January 2021.

Exception

In line with the Withdrawal Agreement between the UK and the EU, there will be an exception for owners of European Trade Mark Registrations (“EUTMs”) and European Designs Registrations (“RCDs”). On 1 January 2021, owners of EUTMs and RCDs will automatically receive a UK trade mark/design registration comparable to their EUTM/RCD Registration and they can continue to use an address in the EEA for these registered rights until the end of 2023.

Owners of these comparable /re-registered registrations can also continue to use an EEA address for opposition proceedings based on their UK comparable trade mark registration or for invalidity/revocation proceedings based on a UK comparable trade mark or a re-registered design.

There is also an exception for UK opposition, revocation and invalidity proceedings pending on 1 January 2021 and for which an EEA address has been used. These proceedings can be concluded without changing the EEA address.

But there is no exception for:

  • new applications of UK trade marks and designs (filed from 1 January 2021);
  • all applications for UK comparable trade marks and designs based on EUTM and RCD Applications pending on 1 January 2021;
  • all UK comparable trade marks or re-registered designs resulting from International Registrations or International Designs designating the EU (whether pending or granted as at 1 January 2021).

Also, an AfS in the UK, Gibraltar or the Channel Islands will be required for opposition proceedings relating to UK comparable trade mark applications and for other IP proceedings such as revocation/invalidity proceedings.

The end of the transition period is drawing ever closer – it would be prudent for owners of trade marks and designs to ensure that they are prepared and use the correct address for service in the UK so that UKIPO correspondence reaches them.