The UK Intellectual Property Office (IPO) has recently issued updated guidance on the use of an address for service (AfS) for intellectual property rights in the UK. We look at how the rules will apply to UK trade marks.
What is an AFS?
An AfS is an address at which you can receive correspondence from the IPO or third parties regarding your trade mark application or registered right. The updated guidance is important because if a valid AfS is not provided to the UK IPO, this could lead to an application for a trade mark being withdrawn and/or proceedings brought against you being successful.
What does the guidance mean?
- When filing a trade mark application with the IPO, you must have an AfS in the UK, Gibraltar or the Channel Islands. The UK IPO will, however, also accept the Isle of Man as a valid AfS.
- Effective 1 January 2024, the IPO will require a new AfS in the
UK, Gibraltar or the Channel Islands:
- if you wish to change the AfS recorded against a comparable trade mark provided the right was not derived from an international registration; and
- for invalidation, rectification, or revocation proceedings involving a comparable trade mark commenced on or after 1 January 2024, provided the right was not derived from an international registration (which already requires a UK, Gibraltar, or Channel Islands address in such circumstances).
- For proceedings started on or before 31 December 2023, unless you wish to, there is no obligation to provide a UK, Gibraltar or Channel Islands AfS for existing registered comparable rights that are not derived from an international registration.
- If you decide to change an existing AfS for a comparable mark derived from an international registration that designates the EU, the new address will need to be in the UK, Gibraltar or the Channel Islands.
- If you have a comparable trade mark derived from an international registration that designates the EU, a UK, Gibraltar or Channel Islands AfS will be required if the registered right is involved in invalidation, rectification, or revocation proceedings.
- Processes which do not require a valid AfS will not be affected.
If you require to change your address for service for any UK trade mark rights to a UK address, please get in touch with our Intellectual Property team.
This article was co-written by Helen McBrierty, Trainee Solicitor.
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.