UK IPO takes more proactive approach to enforcing Address for Service

16th May 2024

The UK IPO is using its powers to treat applications as withdrawn if an effective address for service is not provided, and has set out its powers to ban unregulated agents for misconduct.

Intellectual Property Office IPO

In a letter to CITMA in April 2024 the UK IPO set out its approach. This followed a number of constructive meetings between CITMA representatives and the UK IPO.

“If it has transpired that an application to register a trade mark does not have an effective AFS within the UK, Gibraltar or the Channel Islands, the IPO has been treating such applications as withdrawn.

"If the IPO has further evidence that an applicant has provided untrue or misleading information in respect of their application to knowingly circumvent Rule 11, then this could lead to the application being ultimately refused on the grounds of section 3(6) of the Trade Marks Act 1994.”

The UK IPO had previously updated its guidance to clarify that an address for service “needs to be effective so that correspondence can be delivered successfully, read by and acted upon by the intended recipient.”

A dedicated AFS team has been established within the trade mark examining group to intervene on AFS issues before examination progresses.

CITMA members with concerns about an applicant or representative having an ineffective AFS should email evidence to [email protected].

Unregulated agents

The UK IPO has updated its guidance and processes for banning unregulated representatives found guilty of serious professional misconduct. This power can be used where the misconduct is such that a regulator would remove them from its register if they were regulated.

Changes include clarifying on the UK IPO website the key differences between regulated and unregulated representatives, how to complain about an unregulated representative, and promoting the benefits of using regulated professionals.

The UK IPO has also updated its internal complaints process to quickly identify and investigate any allegations of representative misconduct. It states that it will robustly take action, including potentially using address for service violations as evidence of misconduct.

CITMA members are encouraged to familiarise themselves with the updated UK IPO guidance. Protecting consumers and dealing with those who violate rules around trade mark representation remains a key priority for the IPO.