Change to the UKIPO Address for Service rules from 1 January 2021 - Mishcon de Reya LLP

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The UK Intellectual Property Office (the "UKIPO") has recently published guidance on the Address for Service (AfS) rules, following a consultation on this topic. Whilst there is no requirement to have a professional representative in matters before the UKIPO, the AfS rules relate to the address that is required to correspond with the UKIPO, and with the other side in a dispute before the UKIPO. Currently any applicant for a trade mark, design or patent application, or a party involved in UKIPO proceedings, can provide an address in the EEA as their address for service at the UKIPO.

Following the end of the Brexit transition period on 31 December 2020, the following AfS rules will apply. Given the end of the transition period is approaching, it is important that brand owners review their records, in particular to avoid any correspondence being missed and rights being lost

New applications for patents, trade marks and designs

An address in the UK, Gibraltar or Channel Islands (a "UK AfS") will now be required for all new applications filed from 1 January 2021. This includes applications filed at the UKIPO that correspond to a pending EUTM or RCD application as at the end of the transition period, filed during the 9 month window following 1 January 2021.

Applications that are pending at the UKIPO on 1 January 2021 will not need a UK AfS.

Challenging and defending rights

Whilst an existing trade mark, design or patent registration does not require a UK AfS, if this right faces a challenge at the UKIPO through revocation or invalidity proceedings after 1 January 2021, the proprietor will be required to provide a UK AfS, if it does not already have one. Failure to do so could mean the right is lost.

Similarly, if an earlier rights holder wishes to oppose a mark or seek to challenge the validity of a registered UK right, it must also provide a UK AfS, unless the earlier right relied on is a comparable UK right (see below).

Contentious proceedings (oppositions, invalidity actions or revocation actions) which are pending on 1 January 2021 at the UKIPO and for which an EEA address AfS is already in place, can be concluded without the need for a UK AfS.

Comparable Trademarks and Designs

As a result of the Withdrawal Agreement between the UK and EU, from 1 January 2021, the owners of existing EUTM trade mark and design registrations will automatically receive comparable UK rights. The owners of these rights can retain an EEA AfS for 3 years. A UK AfS is also not required for contentious proceedings relating to these comparable rights, even if the proceedings start after 1 January 2021. However, a UK AfS will be required where contentious proceedings involving those comparable rights start from 1 January 2024 onwards.

The three year retention of an EEA address does not cover comparable trade marks or re-registered designs created from International Registrations or International Designs designating the EU. If these comparable rights face contentious proceedings at any point after 1 January 2021, then a UK AfS is required.

Granted European Patents that designate the UK are transferred onto the UK register automatically, without validation required, and with the applicant's details only. From 1 January 2021, if the applicant wants to appoint a representative, they will need to have a UK AfS.

It will not be necessary to have a UK AfS for certain actions such as renewing a trade mark, design or patent registration. Further, for trade marks and designs, certain other actions will not require an AfS.