A Buyer’s Guide to UK Address for Service for Trademarks and Designs
Introduction
In recent time, there have been some important changes made by the UK Intellectual Property Office (UKIPO) on the requirements for a UK Address for Service (UK AFS). In particular, three important dates from January 2021, 2023 and 2024:
- Jan 2021 – Brexit – all new trademark and design applications to the UKIPO must have a UK AFS. Previously, an address in the European Economic Area (EEA) had been accepted.
- Jan 2023 – New Guidance from UKIPO – following the Marco Polo case, the UKIPO announced it would now seek to obtain a UK AFS from the trademark and design owner for certain proceedings where it did not have one on record. For further information read our UK AFS blog update.
- Jan 2024 – End of Brexit Transition –there is an exception which means that a comparable trademark and a re-registered design derived from a European Union Trade Mark (EUTM) and Registered Community Design (RCD) can continue to use an address in the EEA as its service address. However, from 1 January 2024, the UKIPO will require a UK AFS for certain proceedings.
Elemental offer a UK Address for Service.
For further information visit our service page.
What is a UK Address for Service, in relation to trademarks and designs?
The UK Intellectual Property Office (UKIPO) defines an “address for service” as:
“an address that you use to correspond with the UK Intellectual Property Office (IPO) and also for the purposes of proceedings under IP legislation. It can be your address, or if you wish, you can provide the address of your attorney or representative”.
However, the UK AFS must be an address in the UK (including Isle of Man), Gibraltar or the Channel Islands.
Why do I need a UK Address for Service?
You may need a UK address for service if you currently do not have a valid UK AFS address and you wish to:
- File a new trademark and design application to the UKIPO
- Participate in contentious proceedings.
- From January 2024 the EEA service address for comparable trade marks and re-registered designs derived from a European Union Trade Mark (EUTM) and Registered Community Design (RCD) can no longer be used for any contentious proceedings.
For more details on recent changes to contentious proceedings, read our UK IPO blog update.
Do I only need a UK address for Service once something goes wrong?
No, although the current UKIPO guidance is that a UK AFS is only needed when the trademark/design becomes subject to certain proceedings (or for new trademark/design applications to the UK IPO), it is advisable that one is set one up in advance of any issues. This is because it may not be prudent to heavily rely on the UK and international postal system for timely notice of proceedings given that the UKIPO only provides one month “from the date of the letter” for the holder of a registration to provide a UK AFS.
At the time of writing, the Royal Mail advises they aim to deliver letters to Europe within 5 working days and worldwide within 7 working days. Adding in various factors including recent industrial action and the move to remote working, by the time the UKIPO letter is actually received, there may little time (if any) of the original one month period remaining.
How do I appoint a UK Address for Service?
A UK Address for Service is appointed using UK IPO form TM33 (or TM33P for opponents and cancellation applicants).
Your address provider, such as Elemental, can complete the form on your behalf.
How much does a UK Address for Service cost?
Further information on our UK address for service fees can be found here.
What should I consider when choosing a UK Address for Service?
When appointing a UK Address for Service, you should consider the following:
- Does the provider have experience of handling legal documents?
- Do you require a provider that can represent you in proceedings immediately OR are you happy to handle the matter yourself for the time being and only appoint one at a later date if certain proceedings materialise.
- Can the provider give remote access to correspondence to multiple parties?
Why should I consider Elemental’s UK AFS?
Elemental has been providing registered address services and process agent address services to many clients from all over the world. Our address service has been in place for 80+ years and remains an important part of the corporate services we offer law firms, advisors and their clients.
- We have considerable experience handling service proceedings.
- Our address services is monitored daily.
- We can upload important information to a digital mailroom to give access to you, your team and representatives.
- We are independent and impartial and able to work with your existing representatives.
For further details visit our product page for UK Address for Service.
The guide is not intended to be legal advice and should not be relied upon as such. If you are in any doubt as to your legal obligations you should obtain independent legal advice.
