In response to recent uncertainty around the need for a UK address for service (AFS) for UK trademarks and designs, the UKIPO issued a Tribunal Practice Notice on 25 January 2023. Vanessa Harrow sets out the changes and offers practical advice for affected rights holders.
Firstly, there is no need to appoint a UK address for service for every registration in your IP portfolio currently. The changes that have been introduced are summarised below and do not warrant a significant change in practice for most IP rights holders. See our detailed responses on when a UK address for service is required in our FAQs here.
Following changes introduced after Brexit, from 1 January 2021 it is necessary for all new trademark and design applications filed directly at the UKIPO by non-UK based applicants to have a UK-based AFS appointed.
If you are looking to a file a new UK application directly at the UKIPO and you are not based within the UK, you are required to engage the services of a UK AFS.
Registered UK designation invalidation, revocation and/or rectification
It will only become necessary to appoint a UK-based AFS if the UK designation of your international registration is the subject of an application for invalidation, revocation and/or rectification.
Pending UK designation refusal or opposition
It will only become necessary to appoint a UK-based AFS if the UK designation of your international application is subject to a refusal or opposition.
The UKIPO previously confirmed it was not necessary to update the AFS of an existing Comparable IP right (Brexit clone) following the UK's departure from the EU. Such rights did not therefore require a UK AFS. There are however certain exceptions, and this includes the situation where a Comparable right is challenged on the grounds of invalidity or revocation on or after 01 January 2024.
In 2022, a decision of the Appointed Person in the "Marco Polo" case caused a wave of panic that changes could be introduced requiring all UK trademark and design registrations to have a UK address for service appointed.
The case centred around a UK designation of an international trademark registration which was owned and registered by New Holland Ventures Pty Ltd, that Tradeix Ltd had filed an application for invalidation against.
The decision made it clear that the UKIPO could not serve documents outside of the UK and this triggered much speculation that it may become necessary for IP rights holders to automatically appoint a UK-based AFS on all trademark and design registrations.
However, the recent Practice Notice confirms this is not necessary currently. It continues to be advisable and good practice to engage the services of a qualified UK attorney to assist with any substantive matters involving UK rights, but for registrations which are simply sitting on the register, it is remains optional for IP holders to appoint a UK AFS.
The main takeaway from the changes is that, while there are certainly benefits to having a UK address for service for all your intellectual property matters at the UKIPO, this remains optional and it has not suddenly become compulsory for all registrations.
On the occasions where a UK AFS is required, the rights holder or the non-UK AFS (if applicable) will be notified of the need to appoint a UK AFS and will be given at least 1 month within which to satisfy this requirement.
Therefore, IP rights holders and their non-UK representatives would be best advised to ensure:
- Contact details are correct and up-to-date at both WIPO and the UKIPO to ensure any communications which are issued are received in a timely manner;
- There is a clear process for capturing and monitoring deadlines and arrangements are in place for a UK AFS to be able to act as soon as needed on a case-by-case basis; and
- You engage the services of a UK qualified representative for any substantive legal work, and do not try to navigate the nuanced law and practice of the UK legal system.
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.