If you are the owner of a UK trade mark or design, it is important to ensure you have a UK address for service ("AFS") recorded on the register.
The AFS is the address through which you correspond with the UK Intellectual Property Office ("UKIPO") and is used, in particular, for the purposes of proceedings before the UKIPO. For example, where an invalidity action is brought against a UK trade mark or design, or where a trade mark is relied upon in an opposition to a trade mark application.
As part of the UK's withdrawal from the EU, the UK and EU agreed that, at the end of the Brexit transition period, existing registered EU trade marks and designs would be preserved in the UK in the form of what were called 'comparable UK rights'. For a period of three years, it was also agreed that it was not necessary to have a UK AFS for such comparable UK rights. In other words, an EEA representative could continue as the AFS.
However, from 1 January 2024, a UK AFS will be required where new contentious proceedings are brought involving these comparable UK trade marks or re-registered designs.
When contentious proceedings are brought involving such rights, the UKIPO will seek to obtain a UK AFS before serving any formal documents. Failure to provide a UK AFS will ultimately lead to any proceedings against the relevant right succeeding by default.
Why is it important to have a UK address for service recorded?
At the start of 2023, the UKIPO published a practice notice requiring a UK AFS in all contentious proceedings (i.e. invalidation, revocation, and rectification proceedings) (Tribunal Practice Notice 2/2023). We discussed this Practice Notice here.
Under the Practice Notice, if a UK trade mark (including International Registrations designating the UK) or design registration is challenged by a third party and the relevant right has a non-UK address (and no UK representative) recorded, the UKIPO will send a letter by post to the listed contact, setting them a one-month deadline to provide a UK AFS.
If a UK AFS is provided, the UKIPO will then formally issue the proceedings and set the procedural deadlines. However, in the event that a UK AFS is not provided, the UKIPO will deem the proceedings to be undefended and the action may succeed by default i.e. the relevant right will be held invalid, revoked or rectified.
As the UKIPO's UK address request is sent by post with a short response deadline, there is a real risk of a failure to respond in time, with a failure to respond potentially resulting in a loss of rights by default.
What prompted the UKIPO's change in practice?
Previously, the UKIPO had been willing to provide notification of proceedings to a non-UK address. However, the UKIPO’s Appointed Person called this approach into question in the 'Marco Polo' case, Tradeix Ltd v. New Holland Ventures Pty Ltd (Case O/681/22). As Appointed Person, Geoffrey Hobbs KC confirmed that the UKIPO had no authority to serve proceedings outside the UK, with a UK AFS being required for effective service.
When do the address for service rules come into effect?
In relation to proceedings relating to comparable UK trade marks or re-registered designs, an AFS in the EEA is permitted until 31 December 2023. However, from 1 January 2024, a UK AFS will be required in all new contentious proceedings against such rights.
For all other UK designs and trade marks (including International Registrations designating the UK), the UKIPO's requirement for a UK AFS in relation to contentious proceedings is already in effect, and has been since 25 January 2023.
Is a PO Box / 'Care of' address sufficient?
It is yet to be determined whether a UK PO Box / 'care of' address will be sufficient for the purposes of compliance with the UKIPO's Practice Notice. In the 'Alcatrazz' case (Case O/0379/23), the Appointed Person, Geoffrey Hobbs KC, appears to question whether a 'care of' address in St James Square can be a valid address for service. The Appointed Person's comments are obiter but, in our view, demonstrate that there is a strong risk that a PO Box / 'care of' address may be deemed insufficient, and a more formal UK address will be required.
Next steps
Whilst it is not essential to record a UK AFS for relevant rights until contentious proceedings arise, it is clearly beneficial to do so. To avoid the risk of a loss of rights by default, we strongly recommend recording a UK AFS for any UK trade marks or designs that do not currently have a UK AFS.
Further, whilst the UK AFS rules in contentious proceedings do not apply to comparable UK rights until 1 January 2024, we recommend arranging for a UK AFS to be recorded sooner rather than later to ensure records are in good order well advance of the changes taking effect.
Should you wish to appoint Mishcon de Reya as your UK address for service, please get in touch.