The UKIPO has been asked to look into potential address for service breaches concerning trademark actions, Managing IP can reveal.
Attorney firms as well as the Chartered Institute of Trade Mark Attorneys (CITMA) say they are aware that some representatives may not be acting “within the spirit” of AFS rules. CITMA says it has raised its concerns with the UKIPO.
Richard Goddard, CITMA president, said: “We are keen to see this addressed and are looking at possible solutions that could be implemented by the UKIPO that would make for a better environment for users of the UK’s IP system.”
Data published by IP analytics firm Clarivate this week revealed that four of the top 12 representatives at the UKIPO in 2021 were from China.
AFS determines who is authorised to act in trademark proceedings.
At the EUIPO, parties need a European Economic Area (EEA) AFS. This meant UK practitioners lost their rights from January 1 2021.
For the UKIPO, the rules previously stated that the address must be in the EEA, UK or Channel Islands.
However, in December 2020 the UKIPO, after lobbying by both CITMA and practitioners, revealed that as of January 2021 only a UK AFS would be valid for UKIPO proceedings. Even if an EU firm has a UK office, any work relating to UK IP rights must be carried out by a UK-based practitioner.
At the time of the announcement, sources predicted that the UKIPO was likely to take a tough line on firms that opened a UK base solely for the purposes of taking on work at the UKIPO.
One said the AFS would have to cover a “real office with qualified lawyers working in it” and that firms would not be able to get around the rules by opening “brass-plate” or “post office box” addresses in the UK.
However, it appears a predicted requirement for a physical office or workforce has not yet materialised or been enforced.
Managing IP understands one of the top representatives for 2021 has its AFS as a PO box in Manchester.
Assessing the list of top representatives in 2021, one source at a major attorney firm tells Managing IP: “It’s hard to know if some of these are ‘real’ firms or just post-boxes.”
A spokesperson for the UKIPO said it carries out checks to confirm that an address given meets the requirements set out in UK law.
“The rules do not require a particular type of address, only that it is located in the UK, Channel Islands or Gibraltar. Our customers and their representatives have used PO boxes or other similar arrangements to file applications for a number of years, and there is no restriction in UK law to using PO boxes or other similar arrangements to file applications.”
The UKIPO added that where it receives indications that an incorrect address may have been used, it will take the appropriate action. “We have recently launched a new initiative to allow us to take action earlier where there are attempts to circumvent the address for service requirements,” the spokesperson said.
