There are two main scenarios in which UK pending or registered design and trade mark rights held by non-UK applicants or proprietors might not have a UK address for service (“AFS”) or representative. They are:
- UK rights filed and secured through the Madrid Protocol (trade marks) or Hague Convention (registered designs); and
- Registered trade mark and design rights “cloned” onto the UK Registers from equivalent EU-wide rights, following Brexit.
Following an August 2022 invalidation appeal decision that dealt with aspects of the UK’s AFS regime, the UKIPO Tribunal has issued new AFS guidance on when a UK AFS is required, and how this requirement will be communicated. The guidance took effect immediately.
The new rules apply to all UK rights helf by foreign applicants and proprietors that become subject to inter partes proceedings challenging their validity. The rules apply whether the challenge comes before registration (i.e. opposition to a UK trade mark application designated under the Madrid Protocol) or after registration (invalidation of registered designs and trade marks, revocation of trade marks on the basis of non-use, or rectification of the Trade Marks Register).
Where previously the UKIPO Tribunal had conveyed a copy of the proceedings challenging the right to the non-UK based applicant, proprietor or representative, as well as setting the relevant deadline to note an intention to defend the proceedings, under the new guidance, the Tribunal will now first send a letter requiring the applicant or proprietor to appoint a UK AFS within one month of the date of the letter.
Not only is one month a short space of time within which to require action, but the new rules also make clear that the Tribunal will send out this letter by post.
Failure to appoint a UK AFS within this time limit means that the opposition, invalidation or revocation proceedings will be treated as undefended, and pursuant to the UK’s adversarial procedural system, the opponent or applicant for invalidation or revocation will then be entitled to a default judgment without the underlying merits of their case being considered. This scenario may result in needless loss of rights for clients.
We recommend that foreign associates therefore allow us to record ourselves pre-emptively as AFS against your clients’ pending and registered UK designs and trade marks to avoid an inadvertent loss of rights. We are happy to undertake this recordal at no charge. Other charges that may arise on the particular case (such as a fee on registration, or renewal fees if these are due imminently) can be quoted at the time of your instruction.