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Background
26 January 2023

International trade mark and design registrations – change to UKIPO handling procedure

On 25 January 2023 the UKIPO announced that it was changing its procedures relating to the handling of UK designations of International Registrations with immediate effect.

Pending Applications and Opposition Proceedings

When a UK Designation of an International Registration is opposed, the UKIPO will send a notice to WIPO setting a deadline of two months for the filing of a Defence and Counterstatement. Notice will also be sent to the WIPO representative, or the holder if there is no WIPO representative. The holder or WIPO representative may file a Defence and Counterstatement without appointing a UK address for service but in order to defend the Opposition further the holder will require a UK address for service.  If the Defence and Counterstatement does not comply with the UK rules it may be rejected, leading to potential refusal of the application.

Protected rights subject to Invalidation, Revocation or Rectification Actions

Where any of the above are filed by a third party, notice will be sent by the UKIPO to the holder or their WIPO representative setting a deadline of one month for the appointment of a UK address for service.  If no UK address for service is provided, the third party action will be considered undefended. The consequence of this is that the UK designation is likely to be partially or fully cancelled or the register rectified. If a UK address for service is provided within the one month period set, further directions will be issued for the filing of a defence and counterstatement.

What does this mean for International Registration rights holders? 

In the case of both International Trade Marks and Designs designating the UK, it is strongly recommended that a UK address for service should be appointed at an early stage in the proceedings, and in any case by publication of the application. Failure to do so may result in a loss of UK rights of International Designations of the UK in the event the right is challenged.

What Action do I need to take?

We would be happy to assist in acting as the Address for Service in the UK for International designations. For more information, please contact your usual Attorney who will be pleased to assist or e-mail us at mail@vennershipley.co.uk.

See more information here.