The Government has now handed down its report, recommending a requirement for all new trade mark, design and patent applications and oppositions that are filed from 1 January 2021 to have an address for service in the United Kingdom or Channel Islands.
What is changing?
When any action is filed at the UKIPO in respect of trade marks, registered designs or patents, it is a requirement to submit a correspondence address, or an “address for service” (AfS), at the time of filing. Currently, that AfS can be located anywhere within the UK, the Channel Islands or the European Economic Area (EEA).
At the end of the Brexit withdrawal transition period (ending 31 December 2020), UK-based attorneys will no longer be able to represent their clients at the EUIPO. However, under the current rules, EU-based attorneys would be able to continue representing their clients at the UKIPO – leading to an imbalance between UK and EU intellectual property practitioners.
The Government has responded to a “call for views” from UK IP practitioners and has now recommended a change to the current AfS rules, so that for all new actions filed from 1 January 2021 an AfS within the EEA will not be accepted. It will be a requirement to provide an AfS from within the UK or Channel Islands only.
A useful summary of the changes is available from the Chartered Institute of Trade Mark Attorneys (CITMA).
What is the impact?
The Government intends for the new rules to come into force on 1 January 2020, though this is subject to parliamentary timetabling. Nevertheless, once the new rules are implemented, a UK AfS will be required for all new applications, new oppositions and other proceedings covered by AfS rules, in connection with trade marks, registered designs and patents.
There will be no requirement to have a UK AfS for maintenance action only (ie renewals) and there will be transitional periods for ongoing cases and for the comparable rights created under the terms of the EU Withdrawal Agreement.
In the long-term, the proposed amendment will have a positive impact for UK IP practitioners and for the proprietors of registered rights who can rely on qualified professionals familiar with UK law and practice to advise them on their UK rights.
How can Brabners help?
Brabners welcome the Government’s proposal. We represent clients, from individuals to multi-nationals, at the UKIPO and we are pleased that the changes will have a positive impact on our ability to continue to provide these specialist services.
We are proud to boast that our Intellectual Property Team is made up of experienced IP practitioners and includes specialist trade mark attorneys that are members of CITMA. We are able to assist any EEA-based representatives, and their clients, by acting as their UK-based representatives once the new AfS rules are implemented and we are happy to put ourselves on record at no cost.
Please get in touch with a member of our Intellectual Property Team if you would like to appoint Brabners as your UK-based representatives or to discuss how we can help.
