Don’t Miss The Mark: Complying with New Address for Service Rules for UK Trade Marks

We would like to bring to your attention that there are new “address for service” rules coming into effect on 1 January 2024 at the UK Intellectual Property Office (UKIPO) which may have an impact on your trade mark portfolio.

What is an address for service?

An address for service (AFS) is an address at which you receive postal correspondence from the UKIPO or third parties about your UK trade mark or proceedings related to it.

What has changed? 

AFS rules have changed at the UKIPO, as to how notifications regarding trade mark proceedings are issued. A UK, Channel Islands, or Gibraltar address for service (UK AFS) is now needed to defend invalidity and non-use revocation actions, and continue past the defence stage in opposition proceedings.

If you don’t have a UK AFS and a third party applies to cancel or revoke your trade mark, the UKIPO will send you a letter setting a one-month deadline for you to appoint a UK AFS. The UKIPO sends these letters to non-UK AFS representative addresses if available, or to owners directly if there is no appointed representative, via post. 

The position is slightly different with respect to oppositions against UK designations of International Registrations. If a third party opposes your trade mark application, and you don’t have a UK AFS appointed, the UKIPO will notify you in the same manner as for cancellation or revocation actions, and you will be invited to file your defence within two months. However, you must appoint a UK AFS along with, or within one month of, filing the defence to continue further with the opposition proceedings.

What brought about the change?

The Marco Polo case (O/681/22) led to a finding by Geoffrey Hobbs KC that the UKIPO is not entitled to serve contentious proceedings outside the UK. 

Which rights does it affect?

As of late January 2023, this change of practice is already applicable to all registered UK trade marks (including UK designations of International Registrations and comparable rights derived from EU designations of International Registrations at Brexit) which do not have a UK AFS, and which are subject to contentious proceedings. 

The one exception is comparable UK trade marks which were derived from EU trade marks at Brexit. However, from 1 January 2024, pursuant to the Withdrawal Agreement, these rights will also require a UK AFS.

What if my trade mark is already involved in trademark opposition, invalidity, or revocation proceedings and does not have a UK AFS?

If the proceedings started before 1 January 2021, and the trade mark has a European Economic Area (EEA) address, you can keep this address as your AFS. If you wish to change it to another EEA AFS or a UK AFS, you can do so. If you change to a UK AFS, and wish to change it again, it must be to another UK AFS.

All new proceedings from 1 January 2024 onwards will require a UK AFS.

What should I do now? 

It is widely accepted as best practice to appoint a UK AFS for all of your registered UK trade marks (including UK designations of International Registrations and comparable rights derived from EU designations of International Registrations). 

With the date of 1 January 2024 rapidly approaching for the same process to come into effect in respect of comparable UK registered rights derived from EU trade mark registrations, we suggest that you appoint a UK AFS as soon as possible. 

Due to unforeseen obstacles resulting from postal delays, remote working, and industrial action, there is a risk that letters to non-UK AFS addresses may not be received with sufficient time to respond to the UKIPO. This could lead to rights being lost or deemed undefended.

Morrison Foerster’s London office can assist in reviewing your UK trade marks to assess which do not have a UK AFS. We can then appoint our office as UK AFS at no charge. Please let your trade mark attorney know if this is of interest to you.