Our Beyond Brexit trade mark hub was updated on 20 October 2023. You can find all the latest advice and information here or by emailing our team of dedicated experts on BeyondBrexit@marks-clerk.com.
New rules for UK rights holders effective from 1st January 2021
What? An address for service (‘AFS’) is an address that you use to correspond with the UK Intellectual Property Office (IPO) and for the purposes of proceedings under IP legislation. It can be your address, or if you wish, you can provide the address of your attorney or representative.
What? The previous rules allowed an AFS to be within the EEA. This has now changed and subject to a few exceptions, an AFS will need to be in the UK, Channel Islands or Gibraltar (‘UK AFS’.)
When? From 1st Jan 2021.
Why? Reflects the end of the transition period and the UK’s exit from the EU and EEA. UK no longer compelled to recognise EEA right to represent.
Why? IP owners are better represented by UK-qualified attorneys.
Why? Easier for the UKIPO to deal with UK-qualified attorneys
What is covered by the change?
- New Applications – TM, Patent or Registered Design;
- New Oppositions, Revocations and Invalidity actions;
- Other substantive actions relating to IP rights;
- Appointing an AFS in relation to a granted European Patent
What is excluded?
You do not need a UK AFS to:
- Renew a registration;
- Surrender a registration;
- Correct an error;
- Change your address (if you are the owner);
- Complete ongoing proceedings that are pending at 31st December 2020;
Cloned Registrations
In addition, new comparable rights (cloned registrations) created from EUTM Registrations and re-registered designs created from Registered Community Designs will not require a UK AFS for 3 years from their creation, including where they are the subject of a challenge.
However, cloned registrations created from EU designations within a Madrid Protocol Registration will require a UK AFS where substantive action is required, including where they are the subject of a challenge.
Action Required
Review your EU and UK TM portfolio. Ensure that you have appropriate representation in place. Check with your usual M&C contact or email us today.
