From 1 January 2024, the UK Intellectual Property Office (“UK IPO”) is changing the Address for Service (“AFS”) rules for UK comparable trade marks and re-registered designs.
An AFS is the address to which the UK IPO or third parties will send correspondence regarding a trade mark or design right, including for contentious proceedings. It can be the right holder's home or business address, or more commonly the right holder's recorded representative's address (such as Burges Salmon).
UK comparable trade marks and re-registered designs are rights that were created by the UK IPO as a result of Brexit to ensure continued protection in the UK for earlier registered EU trade mark and design rights. Until the end of this year there has been a grace period to allow existing EU or EEA based right holders or representatives to remain as AFS for these rights on the UK IPO register. This is now changing.
If a comparable trade mark or re-registered design is involved in any invalidation, revocation or rectification proceedings launched on or after 1 January 2024, the UK IPO will require an AFS in the UK, Gibraltar or the Channel Islands.
Further, if a right holder wishes to voluntarily change the AFS recorded against a comparable trade mark or re-registered design on or after 1 January 2024, the UK IPO will require the new AFS to be in the UK, Gibraltar or the Channel Islands.
Updated UK AFS rules are already in place for any new UK trade mark and design filings, and for any comparable trade marks or re-registered designs derived from international registrations. The above changes bring the AFS rules for all types of registered trade mark and design rights in line and make it clear that a UK-based AFS is now a mandatory requirement (with limited exceptions for pre-existing ongoing proceedings).
If a new contentious action is filed against a UK comparable trade mark or re-registered design right without a valid UK AFS from 1 January 2024, the UK IPO will post a letter to the right holder or their currently recorded non-UK representative (at the address listed for the right on the UK IPO register) setting a deadline of 1 month to provide a UK AFS and confirm their intention to defend the proceedings. If the right holder fails to respond, the proceedings could succeed without their involvement or defence and the right could ultimately be lost.
To safeguard rights, we recommend that right holders proactively review their UK comparable trade mark and re-registered design rights and appoint a valid UK Address for Service before the rules change.
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.