A new practice rule at the UKIPO requires a UK-based address for service to be put in place for UK designations of International Trade Mark & Design Registrations.
At present, there is no strict requirement for a UK address for service to be in place for all direct national Applications/Registrations, but there is a strong push towards this being insisted upon. The intention behind the practice change is to bring the UK into line with the EUIPO approach and accords with the end of the extended post Brexit transition period, due to end on 31 December 2023. Up until recently, the UKIPO was attempting to serve papers in contentious proceedings to overseas owners by post, but it has become evident that procedural deadlines could be missed, without these having come to the attention of the owner or their overseas representative. As a consequence, and following the recent decision of the Appointed Person (AP) in Tradeix Ltd v New Holland Ventures Pty Ltd BL (O/681/22) (Marco Polo Case), the UKIPO will now require a local address in the UK before any formal serving of documents in contentious proceedings relating to UK designations of International Trade Mark or Design registrations. Failure to provide a UK address for service may result in a challenged registration being cancelled or an opposed Trade Mark or Design being treated as withdrawn, as the procedural papers may not be served in time.
- Previously, the UKIPO would send papers in contentious proceedings to the proprietor at the foreign address, and they would get two months to defend;
- Now the UKIPO will notify the foreign address and give them one month to appoint a UK Address for Service, after which the papers will be “served” and then the appointed UK representative receives the two month deadline to defend.
To avoid an issue, it is recommended that a genuine UK address for service be put in place as a routine formality, and in any event, prior to any proceedings being contemplated or defended.
To eliminate unnecessary risk, we strongly recommend that you take steps to appoint a UK representative for your client’s UK designations of International Trade Mark and Design Registrations, and take the same action for direct national UK Trade Mark and Design Registrations. This will avoid the complex reporting process set out above, that could result in rights being lost just through non-compliance or missed deadlines. Albright IP will be pleased to step in as UK representatives for your clients’ Trade Mark and Design rights. For more information, please contact our Trade Mark team firstname.lastname@example.org or our Design team email@example.com The new practice rule may seem complex, but the mechanics behind it will hopefully become more straightforward once it has been in place for a while, especially if most UK designations have a UK representative in place before any proceedings arise. Hence, a proactive and timely action to appoint a UK representative now is to be recommended.
New approach for invalidation, revocation on the grounds of non-use, revocation on grounds other than non-use, and rectification:
Where a UK designation is challenged without a valid UK address for service in place, the UKIPO will issue a preliminary letter directing the proprietor to provide valid service address within a period of one month from the date of the letter alongside their intention to oppose the application for invalidation, revocation or rectification. Failure to do so will result in the UKIPO treating the UK designation as undefended. A letter will be issued notifying the proprietor of the UKIPO’s intent to treat the challenge as undefended and possibly to declare the right invalid or revoked. This letter will be sent to the non-UK address currently on file and will give them a 14-day period in which to reply. Failure to respond will result in the UKIPO issuing a decision on the undefended challenge. If the UK designation is declared invalid, revoked or rectified, WIPO shall be informed accordingly.
New approach for oppositions against published International Registration with a designation in the UK:
For Oppositions against pending UK designations, a ‘notice of provisional refusal based on an opposition’ will continue to be sent to WIPO, who will then relay the information to the applicant using the non-UK address for service. WIPO’s actions will continue to constitute as effective service of the opposition. At this stage, the UKIPO will then send a letter to the applicant duplicating the information relayed by WIPO, namely that the two month period to initiate a defence has been activated and to confirm that a valid UK address for service is required. Where an applicant submits a counterstatement and a valid UK address for service, the proceedings will continue in accordance with the standard practices. If only the counterstatement is filed (and no appointment request), the UKIPO will issue another letter to the address held by WIPO requesting a valid UK address for service to be in place within one month of receipt of the letter. In cases where the applicant fails to be attentive by providing a valid UK address for service, the UKIPO will issue WIPO with a final notice of refusal. The Opposition will be treated as if no counterstatement was supplied. It is however important to note that this consequence will only apply to the goods and/or services against which the opposition was directed.