Welcome to our FAQs about when appointing a UK address for service (AFS) for UK trademarks and designs is required. The requirement for a UK AFS depends on the case in question. Please read the detailed responses below. If you require further advice that isn't covered below, please contact one of our UK trademark attorneys.
Do I need to appoint a UK AFS for future UK applications filed directly at the UKIPO?
Following changes introduced after Brexit, from 1 January 2021 it is necessary for all new trademark and design applications filed directly at the UKIPO to have a UK-based AFS appointed where the applicant address is a non-UK address. See here for more details about the changes resulting from Brexit.
If you are looking to a file a new UK application directly at the UKIPO and you are not based within the UK, it is necessary to engage the services of a UK AFS.
Do I need to appoint a UK AFS if I have filed UK designations via WIPO which are already registered at the UKIPO?
It will only become necessary to appoint a UK-based address for service if the UK designation is the subject of an application for invalidation, revocation and/or rectification.
In the event such an application is filed, where the challenged designation does not have one already, the UKIPO will issue a preliminary letter stating that the registered holder must, within a period of 1 month, appoint a valid UK-based AFS and confirm its intention to defend the matter.
The letter will be posted by signed-for post to the registered holder's address or, where available, the address of the WIPO representative.
Where the registered holder complies with the requirement and appoints a valid UK-based AFS, the UKIPO will subsequently serve the papers on the UK AFS in the normal manner. Where a notice of defence and counterstatement is still required, the UKIPO will set a deadline of 2 months from the date of this service for filing such a defence. The deadline therefore runs from the date of service on the UK AFS and not from the initial notice to the registered holder.
Where the registered holder fails to respond at all, the UKIPO will treat the matter as if no defence is filed, in due course declaring the registration invalid or revoked.
If the registered holder confirms their intention to file a defence but does not appoint a UK address for service before the initial 1-month deadline, the UKIPO will issue a second letter requesting a valid UK AFS to be appointed within a further 1-month period.
If the registered holder has not updated their contact details at WIPO, they will fail to receive official notice of important information affecting their rights.
Do I need to appoint a UK AFS if I have filed UK designations via WIPO which are pending at the UKIPO, or when I file new UK designations via WIPO in the future?
It will only become necessary to appoint a UK-based AFS if the UK designation is subject to a refusal or opposition. The UKIPO will communicate these to WIPO.
In the event of a provisional refusal (which will be communicated to the applicant by way of WIPO), a UK AFS is only needed if it is the applicant's intention to respond to the refusal. Where no refusal is issued or the applicant does not intend to respond to the refusal, no UK AFS is required.
In the event of an opposition, the UKIPO will communicate this to WIPO and the International Bureau will then serve the notice to the applicant / applicant's representative and this service will trigger the 2-month deadline to file a notice of defence and counterstatement.
At the same time as sending the communication to WIPO, the UKIPO will also send a letter to the applicant or, where available, the WIPO representative, duplicating the information contained in the WIPO communication. This communication does not act as service and does not trigger any deadlines – the deadline runs from the WIPO notice. The letter will however confirm that a UK AFS is required.
Within the initial 2-month period, the applicant need only submit a notice of defence and counterstatement, and the appointment of a UK AFS can either be filed alongside this notice of defence or it can be done at a later date. Where these requests are not filed simultaneously, following receipt of the notice of defence and counterstatement, the UKIPO will issue a direction requiring a UK AFS to be appointed within 1 month. Failure to do so will result in the application being treated as withdrawn. The direction will be sent to the postal and email address(es) held in the WIPO data.
Moreover, regardless of whether a UK AFS is appointed, it should be kept in mind that failure to file a notice of defence and counterstatement before the initial 2-month deadline will result in the application being treated as abandoned for the goods/services which have been opposed.
Do I need to appoint a UK AFS if I have UK registrations resulting from the automatic cloning of EU registrations and EU designations following Brexit?
The UKIPO previously confirmed it is not necessary to update the address for service of an existing Comparable right (Brexit clone) following the UK's departure from the EU. Such rights did not therefore need a UK address for service. There are however certain exceptions, and this includes the situation where a Comparable right is challenged on the grounds of invalidity or revocation.
A UK registration originating from the automatic cloning of an EU designation of an international registration would need to have a UK AFS appointed in the event of challenge. Where the UK clone does not have a valid UK AFS, the UKIPO will issue a preliminary letter stating that the registered holder must, within a period of 1 month, provide a valid UK-based AFS and confirmation of its intention to defend the matter. The subsequent process will then be the same as the scenario above.
The process is different for UK registrations originating from rights initially registered directly at the EUIPO. For these registrations, it remains the case that if an attack is launched at the UKIPO (prior to 1 January 2024), the registered holder can rely on a non-UK AFS, providing that AFS is based within the EEA. However, from 1 January 2024 a UK AFS will be required, and the same process will be followed as discussed above, i.e. a preliminary letter will be issued stating that the registered holder must appoint a UK AFS within 1 month and confirm its intention to defend the matter.
If I work for an EU-based law firm handling the global portfolio of various IP holders, including UK rights, and those UK rights include registrations (national and designations) where my firm is listed as the AFS, do I need to appoint a new UK AFS for all registrations?
No. A UK address for service may be required for certain actions (e.g. recording a change of name) but this can be appointed at the time the action is needed. Moreover, if a registration is attacked, the UKIPO will notify you and give at least a period of 1 month for a UK AFS to be appointed. Otherwise, there is no need to change the AFS details at the UKIPO. You should however ensure your details are kept up-to-date at the UKIPO so that communications reach you in a timely manner.
If I work for a US company and we generally seek IP protection in the UK via the international system, do I need to start appointing a UK AFS at the point of filing new international applications?
No. A UK AFS is only required in the event of a refusal, opposition or post-registration challenge. Where a UK AFS is needed, you will be notified and given at least 1 month to appoint a UK AFS.
If I work for an EU-based business managing our IP portfolio in-house and I would like to file a new UK application directly at the UKIPO, can I do this myself?
No. Following Brexit, it is necessary to file the new application with a UK AFS if the applicant is based outside of the EU. You will therefore need to engage the services of a UK representative.
If I work for an EU-based law firm handling the global portfolio of various IP holders, including UK rights, and I am recorded as the AFS on a number of registrations at the UKIPO and WIPO, if my contact details have recently changed, do I need to inform the UKIPO and WIPO?
Yes. If your details are not kept up-to-date and one of the registrations under your management is attacked, you will not receive the notice setting the deadline for you to appoint a UK address for service. The UKIPO will however have satisfied the requirement to notify you of the need for a UK AFS by sending the correspondence to the address on record, and your failure to respond will likely result in the revocation or invalidation of the registration.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.