Lost in the mail: address for service at UK IPO post-Brexit

From January 1, 2021, an address for service (AFS) in the UK, Gibraltar or Channel Islands has been required to file trademark and design applications at the UK Intellectual Property Office (UKIPO). Prior to this date, an address in the European Economic Area (EEA) was also acceptable for filing such applications, but the end of the Brexit transitional period on December 31, 2020, brought about a change in practice.

For cloned rights that were created from European Union Trade Mark Registrations (EUTMRs), an AFS outside of the UK was not immediately required. At present, under the Withdrawal Agreement, EEA based representatives on the record for clone rights can remain on the UK register and even continue to represent the applicant in contentious proceedings.

However, this is set to change on January 1, 2024, three years from the end of the Brexit transitional period. From this fast-approaching date, the UKIPO will require a UK, Gibraltar or Channel Islands AFS (UK AFS) where new contentious proceedings are initiated. While many non-UK based UK trademark holders or their attorneys have appointed a UK AFS for their UK trademark rights already, there remains a significant number without.

UK designations of International Registrations

Many of these rights are UK designations of International Registrations (IRs). Recent data from analytics firm Clarivate shows that there are over 150,000 UK designations of IRs on the UK register owned by non-UK holders that do not have a UK AFS. Of these there are over 25,000 owned by US registrants, over 20,000 owned by German registrants and over 10,000 each owned by Chinese, French and Swiss registrants.

Even after the 2024 date mentioned above, should such UK designations make it through examination and publication at the UKIPO without issue, there will be no mandatory requirement to have a UK AFS. However, there has been a recent change in UKIPO practice which may encourage the holders of such rights and their attorneys to appoint a UK agent and obtain a UK AFS as soon as possible.

Marco Polo

On January 25 this year, the UKIPO issued a Tribunal Practice Notice (TPN) which followed the decision of the Appointed Person in the “Marco Polo” case, Tradeix v New Holland Ventures (BL O/681/22). In this case, the Appointed Person held that sending documents to non-UK addresses may not constitute valid service of those documents.