Date: 6 February 2023
Up until now, it has been usual practice for many overseas attorneys to remain as representative in respect of their client’s UK designations of their International Registrations and quite possibly other trade mark and design registrations before the UK IPO. Should correspondence need to be served by the Office in respect of these proceedings, these documents have historically been sent to a non-UK address, often the address noted on the WIPO database or to the holder directly.
However, following a change in practice in the UK, and with immediate effect, the Office will now seek to obtain a UK address for service (AFS) before any formal serving of documents in inter partes trade mark invalidation, revocation, rectification and opposition proceedings, and registered design invalidation proceedings. The only exception is where the UK trade mark is derived from an EUTM created at the end of the transition period. In this instance, for proceedings launched prior to 1 Jan 2024, service will be effected via the EU AFS.
Should any proceedings be issued in respect of your clients' UK rights that do not have a current UK AFS, this change in practice will come into effect. It is quite possible that any notification from the Office will not reach your client and your client could end up losing their rights. Even if notification reaches you, it is possible that the time limit of one month set for providing a UK AFS will have passed, meaning that your client could lose their rights.
Although it is not a requirement to appoint a UK AFS from the outset, by doing so, you and your clients will avoid the uncertainty of correspondence being sent from the Office and not being received, or being received out of time. Maucher Jenkins will ensure that all correspondence reaches you in a timely manner, enabling you and your client sufficient time to decide how to proceed rather than receiving notifications at the last moment.
It is advisable to ensure ALL of your client’s UK rights, including UK designations of IRs have a valid UK AFS.
We understand that costs are of concern to many companies given the current economic climate, and we are therefore pleased to confirm that we can take over representation of all of your client’s UK applications and registrations at no cost to the client. Should this be of interest we can provide a schedule of all relevant marks. This offer is open to all of your clients until the end of February 2023.
All we require in order to proceed is your written confirmation to do so, together with a list of those marks to which your instructions relate. If you are unsure which UK marks this will relate to then please let us know and we can provide a full schedule for your review.