As a result of ongoing discussions with the Chartered Institute of Trade Mark Attorneys (CITMA) on the subject of Address for Service (AFS), the UKIPO has announced that it is taking proactive steps to enforce AFS requirements and managing unregulated representatives. As previously advised in our article here, to take certain actions before the UKIPO, such as filing a UK application or an opposition, there must be an effective AFS in the UK, Gibraltar or the Channel Islands.
As per the UKIPO’s guidance here, if it transpires that an application to register a trade mark does not have an effective AFS within the UK, Gibraltar or the Channel Islands, the UKIPO has been treating such applications as withdrawn. This could pose serious issues for applicants seeking protection in the UK.
UKIPO guidance on what constitutes an effective address for service can be seen here, but effectively it must be a valid address where notices or letters can be successfully delivered, read by, and acted upon by the intended recipient. The UKIPO has been making significant numbers of checks to ensure compliance with the requirements around AFS, and if CITMA members have evidence to suggest that an applicant that they are trying to engage with has an ineffective AFS, then they are encouraged to report this to the UKIPO, who now have a dedicated team in place to investigate. Details and evidence should be sent to AFS@ipo.gov.uk.
Managing unregulated agents
The UKIPO has also updated its guidance on the differences between unregulated and regulated representatives as per the link here, explaining that regulated attorneys must pass examinations to become qualified, be insured, carry out training each year, and follow a code of conduct. The UKIPO has confirmed that if an unregulated agent is found guilty of misconduct, it has the power to stop them from acting as a representative before them and they will be removed from the register.
For further information on this topic, please do not hesitate to contact your usual Barker Brettell attorney or a member of our trade mark team.
“If an application to register a trade mark does not have an effective AFS within the UK, Gibraltar or the Channel Islands, the UKIPO has been treating such applications as withdrawn”
