Representation, Address for Service, Signatures, Recording Changes and Model International Forms

1. Representation, Address for Service, Signatures, Recording Changes and Model International Forms Mark Studley UKIPO

2. Topics • Representation and address for service requirements in the UK/EU. • Signatures – Are they a legal requirement? • Recordal of changes – How they are dealt with and issues that may arise. • Model international forms – Our approach, taking account of Singapore Treaty requirements.

3. Representation & Address for Service • There is no requirement for a representative to be legally qualified in order to file an application or act before the UK office in any dispute. • We do require the applicant, or their representative, to provide an address for service (AFS), which must be within the UK, the European Economic Area (EEA) or the Channel Islands. • This is done to ensure that there is no difficulty getting hold of someone, e.g. where time constraints may affect the outcome of the case.

4. Representation & Address for Service • In this respect we differ from the European system where, with the exception of filing the application, all disputes must be dealt with by either a qualified lawyer, or a paralegal with either qualifications officially recognised by a Member State office or 5 years evidential experience before a Member State office. • Our approach enables private individuals and small companies to obtain registration rights without the added expense of employing a representative.

5. Representation & Address for Service • However, there are potential pitfalls for unrepresented applicants when complex issues arise and applicants can then appoint a trade mark agent, lawyer, solicitor or another organisation to act for them. • Change or appointment of agent requires no fee (Form TM33).

6. Representation - Safeguards • In order to safeguard applicants from using unqualified representatives unknowingly, Section 84 of the Trade Marks Act (1994) prevents anyone who is not qualified from referring to themselves as a registered trade mark agent. • Also, under Section 88 of the Trade Marks Act, the Registrar may refuse to deal with any agent, e.g. due to misconduct. • These safeguards help ensure a minimum level of service from their representative.

7. Address for Service • An AFS must be provided by either: • An applicant for registration. • A person opposing a registration. • An applicant for revocation, invalidity or rectification. • The proprietor of the registered mark in opposition proceedings.

8. Signatures • No formal requirement in the Act or Rules for a signature on an application form. • However, must sign the statement of bona fide intention to use (or tick box on e-form). • The statement reads as follows: The trade mark is being used by the applicant, or with his or her consent, in relation to the goods and services stated, or there is a bona fide intention that it will be so used.

9. Signatures • There are times when a signature will be required to support evidence documents, e.g. Witness Statements, ownership transactions, etc. • In these circumstances the signature will act as confirmation that a transaction has taken place or, in the case of evidence, be accompanied by a statement of truth.

10. Recordal of Changes • All register maintenance functions are completed by the Register Administration Team. • They process all requests for changes of name, and/or address and transfers of ownership by assignment. • E.g. change of name requires no fee (Form TM21).

11. Recordal of Changes • When requests are received, they are examined by the team and only allowed when it is clear that the request is legitimate. • Changes made under the Trade Marks Act 1994 have meant that all the forms contain all relevant information required for the given transaction to take place. This has lessened the opportunity to make false applications.

12. Recordal of Changes • However, there are some circumstances where potentially fraudulent changes are requested, e.g. where family members or business partners fall out. • Staff need to be vigilant to ensure this does not happen but are not liable where it does. Remedies in law are available where fraudulent acts are made and any procedural errors made by us can be corrected by the Registrar.

13. Assignments Evidence/Signature? • Form TM16 (£50 = 638 UAH) • Needs to be signed by the assignor and assignee or their representatives. • Alternatively a TM16 with a copy of the assignment deed or other clear evidence showing the transaction details.

14. Common problems with assignments • Details of current/new proprietor incomplete. • Trade Mark number missing. • Confirmation of sale missing. • Date of transaction missing. • Signatures absent. • Names/addresses of previous owner/s differ from Register.

15. Other transactions • Mergers – TM17 • Full surrenders – TM22 • Partial surrenders – TM23 • Rectifications – TM26(R) • Licences - Form TM50/51 (£50 = 638 UAH) • Security Agreements - Form TM24 (£50 = 638 UAH)

16. Model International Forms • The UK Office has not adopted the use of any of the model international forms annexed to the Singapore Treaty. • However, in line with the Singapore Treaty, all our forms meet the standard requirements needed for the various transactions to take place.

17. Model International Forms • E.g. Section 32(2) of the Trade Marks Act requires that a trade mark application must contain the following: • A request for registration of a trade mark. • The name and address of the applicant. • A statement of the goods or services in relation to which it is sought to register the trade mark. • A representation of the trade mark.

18. UK Forms • All our forms are available at: http://www.ipo.gov.uk/pro-types/pro-tm/pro-t-formsfees.htm