The UKIPO Updates its Policies to Tackle Ineffective Addresses for Service

The UK Intellectual Property Office (UKIPO) has released an update this month in relation to the issue of trade mark applicants and owners providing a valid address for service. Particularly following Brexit there has been concerns about would-be trade mark owners filing applications with false or ineffective addresses for service and as a result the UKIPO is now taking a more proactive approach using their powers under Rule 11 of the Trade Mark Rules 2008.

An address for service (AFS) is important so that trade mark applicants and owners can receive correspondence from the UKIPO and from third parties regarding their rights. It can also be used as an address for service in relation to intellectual property proceedings. It must be a valid address in the UK, Gibraltar, Channel Islands or Isle of Man where letters and notices can be delivered and read by the intended recipient.

If a trade mark application is filed without an effective AFS within the United Kingdom, Gibraltar or the Channel Islands, the UKIPO will now be treating the application as withdrawn. If the UKIPO receives further information that indicates that an applicant knowingly provided false or misleading information in an attempt to circumvent Rule 11, this could now lead to a refusal of the application under section 3(6) of the Trade Marks Act 1994, being a refusal on the grounds of bad faith.

The UKIPO has now put a dedicated team in place to deal with complaints and enquiries relating to an AFS, as well as providing training to their examination teams.

If any agents or representatives registering marks on behalf of trade mark applicants at the UKIPO are found guilty of misconduct, the UKIPO has the ability to remove their right to act as a UKIPO representative.

Further guidance from the UKIPO explaining what makes an effective AFS can be found here.

By Simon Casinader and Millie Pierce