Georgie Collins Explains The Key Points For The Sector

Leading intellectual property lawyer, Georgie Collins, has welcomed the Government’s announcement that mark a significant change to the address for service (AfS) requirements for UK IP rights.

Following an extensive consultation carried out by the UK IPO, the Government has announced that with effect from 1st January 2021, the AfS rules will remove reference to EEA, meaning that only an address in the UK, Gibraltar or Channel Islands will be allowed for new proceedings before the UK Intellectual Property Office.   These new changes to the law are set out in the Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020 (SI 2020/1317).

Key points to takeaway:

• Any new UK applications for patents, trade marks and designs (including any new UK applications which claim priority from existing EU applications and are filed in the 9 months from 1 January 2021) will require an AfS in the UK, Gibraltar or Channel Islands.
• Any proceedings before the UKIPO for requests to start contentious proceedings, including oppositions, revocations and invalidity actions after 1 January 2021, will require an AfS in the UK, Gibraltar or Channel Islands. 
• The new AfS rules will not apply to pending applications or proceedings or the renewal of existing registered or granted rights as at 1 January 2021.  However, if an opposition or other contentious proceedings are filed in relation to a pending application or registration after 1 January 2021 an AfS in the UK, Gibraltar or Channel Islands will be required.
• The new AfS rules will not apply to the 2million plus trade marks and designs that will be cloned from EUTM’s and EURD’s as of 1 January 2021.  However, from 1 January 2024, the UK IPO will require a AfS in the UK, Gibraltar or Channel Islands. 

Expert Opinion

“This is a very welcome development and I’m delighted that the voices and opinions of the UK IP advisory community has been listened to and acted upon. These changes will help create more of a level playing field for UK IP practitioners in a post Brexit World.” Georgie Collins - Partner

Visit gov.uk for more information on the legislation and further guidance.

Georgie Collins will be one of the experts to appear in Irwin Mitchell's next Brexit webinar on 13 January - register for our Brexit webinar.