Designs & Copyright, Trade Marks
Posted on 10/2/2023

UK Intellectual Property Office Tribunal – Change of practice

Proceedings against trade marks and registered designs without a valid UK address for service.

The UK Intellectual Property Office Tribunal (the Tribunal) has issued a notice setting out a change in practice regarding the service of documents in trade mark proceedings (i.e., invalidation, revocation, rectification, and opposition proceedings) and registered design invalidation proceedings.

Until now, documents have been served on applicants and proprietors of contested trade mark and design rights via delivery to non-UK addresses where these are registered, which has constituted effective service for the purposes of setting deadlines in proceedings.

This practice is being discontinued with immediate effect.

From now on, the Tribunal will seek to obtain a UK address for service before any formal documents are served.

This will most likely affect trade mark and design rights that have been applied for/registered via international routes – Madrid Protocol and Hague Agreement (i.e., international registrations that have been filed by overseas applicants/representatives and which designate the UK for protection).

The new practice will only apply to Tribunal proceedings. Practice in connection with examination of UK designations from international registrations will remain the same, i.e., the UKIPO will only require a UK address for service if objections are raised.

The New Procedure

For invalidation, revocation, and rectification actions against any UK right (i.e., national or a designation from an international registration) and oppositions to directly filed national UK trade mark applications, service is effected by the UKIPO Tribunal. Therefore, where the right holder has a non-UK address for service recorded, the UKIPO will post a letter to the non-UK address asking the right holder to confirm its intention to defend the action and to provide a valid UK address for service within a period of one month from the date of the communication.

This communication will also set out any consequences of non-compliance (e.g., that the registration will be declared invalid, revoked or rectified).

A different approach will be taken for oppositions against published UK designations of international trade mark registrations, since service for this type of action is effected by the International Bureau (WIPO). In this scenario, on receipt of the notice of opposition, the UKIPO will issue a ‘notice of provisional refusal based on an opposition’ to WIPO. WIPO will then transmit the notice to the holder of the international registration. This will constitute effective service of the opposition and will therefore activate the two-month period for filing a defence.

The UKIPO Tribunal will also issue a letter to the right holder using the (non-UK) address details provided by WIPO. This will confirm to the holder that a defence and counterstatement is required on or before the expiry of the activated two-month period and that a valid UK address for service will be required in order to defend the opposition beyond initial submission of a defence and counterstatement.

If the holder fails to provide a UK address for service when the initial defence is filed, then the practice that applies to invalidations, revocations and rectifications described above will apply, i.e., a letter will be issued to the non-UK address requiring a valid UK address for service to be recorded be within a period of one month. This letter will specify that failure to comply will result in the application (i.e., the UK designation) being treated as withdrawn.

Where an invalidation or revocation action is against a comparable trade mark derived from an EUTM created at the end of the Brexit transition period, and such proceedings are launched at any time prior to 1 January 2024, these new practices will not apply. Instead, service will continue to be effected via the EU address for service as provided in the data inherited by the UKIPO from the original EUTM.

Recommended Action

We recommend that all national UK trade mark and design applications and registrations have a valid UK address for service recorded.

For UK designations to international trade mark and design registrations we recommend that a UK address for service is recorded, at least after grant of protection in the UK.

This will avoid the UKIPO having to seek a UK address for service in the event that rights are challenged and so reduce the risk that the UKIPO communication sent to an address outside the UK is not delivered or is delayed resulting in the loss of important rights.

Wilson Gunn are experts in all aspects of trade mark and design management and maintenance.

We are the UK address for service for thousands of trade mark and design applications and registrations and are well placed to take care of your or your clients’ intellectual property assets and accept service of any documents issued in connection with those assets.

If you would like to register Wilson Gunn as the address for service for your or your clients’ trade mark or design rights or would like our assistance in managing your or your clients’ intellectual property portfolio, please get in touch by clicking here.

Wilson Gunn