Following the recent Parliamentary approval and TPN no. 2/2020, published on Monday 21 December 2020, the “Address for Services” (AfS) provisions at the UK Intellectual Property Office are changing from 1 January 2021.
The AfS provisions at present require that an EEA, UK, Gibraltar or Channel Islands contact address must be provided in conjunction with any new application, opposition and many other proceedings. Following the conclusion of the Brexit transition period, the EEA will be removed from the AfS provisions, meaning that the address provided must be in the UK, Gibraltar or Channel Islands.
The key upshot of the development is that new patent, trade mark and design applications, along with oppositions and cancellations, filed after 31 December 2020 will require a UK, Gibraltar or Channel Islands representative. Notably, this will not include the “cloned” rights, mirrored from the EU trade marks and designs registers, since these are not considered new applications.
IMPLICATIONS FOR DESIGNS, TRADE MARKS AND PATENTS WITHOUT A VALID AFS
Processes which have not traditionally required a valid AfS will be unaffected by the new requirement. These include:
- renewing your trade mark, design or patent right
- surrendering your trade mark or design
- adding details of a licence agreement you have made with third parties to a trade mark or design registration
- changing your address if you are the design or trade mark holder
- correcting an error or omission in the trade mark or design register
Whilst you may renew a patent without a valid AfS, all other actions will require an AfS based in the UK, Gibraltar or Channel Islands.
In addition, third parties may challenge registered trade marks, designs and granted patents by means of revocation and/or invalidity proceedings. If your right is challenged after 31 December 2020, and your AfS is in the EEA, you will be asked to provide a valid AfS. If you do not, the proceedings may succeed (without your involvement) and you could lose your right, irrevocably.
IMPLICATIONS FOR REGISTERED DESIGNS, TRADE MARKS AND PATENTS FILED AFTER 1 JANUARY 2021
Whilst it will shortly be a requirement for non-UK brand owners to have a local representative, the benefits to having specialist advisers in that territory capable of handling both filing and prosecution, as well as litigation and licensing matters are considerable, and are only likely to increase in the new year as the UK begins to diverge from the European Union. The UK Courts have always maintained a level of judicial independence historically, and this is likely to continue post-Brexit for two key reasons:
- The UK is a common law jurisdiction, meaning that decisions produced by the judiciary constitute binding precedent in respect of the facts in issue. This means that English law is consistently evolving without the need for legislative change. Local practitioners are consequently the most familiar with the current state of the law pursuant to this dynamic judicial decision making process.
- The UK Courts are renowned for their specialist, scientifically educated IP judges, who preside over cases in the High Court and the Intellectual Property Enterprise Court. According to a meta-analysis released by the EUIPO in July 2018, the UK is the only legal system offering this degree of IP specialism in the appeal instance, as well as at first instance. As such, local representatives will help you navigate these specialist courts most effectively.
These unique features of the UK system help to explain why the UK is a preferred venue for high profile, landscape-altering litigation in the IP world. Post-Brexit, it is therefore likely that the UK Courts will show some divergence from the legislation and case law of the European Union, meaning you should prioritise having a local representative for guidance.
As recognised by the President of The Chartered Institute of Trade Mark Attorneys, “it is in the interests of IP owners with UK rights to have a qualified professional who is familiar with UK law and practice advising them”. Having a UK based representative to navigate this changing landscape will be a vital tool moving forwards, therefore, for all IP owners.
The UKIPO’s own coverage of the new provisions may be viewed here.