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16 September 2022

Return to Sender? UKIPO told to review their procedures on service of documents

Appointed Person Geoffrey Hobbs KC issued a decision in Tradeix v New Holland ordering the UKIPO to reconsider its practice on service of documents for UK designations of International Trade Mark Registrations.

It appears the UKIPO has been serving post-registration documents on non-UK owners directly rather than via their WIPO representative, and setting deadlines for the appointment of a UK address to run concurrently with the deadline to respond to the office action.  This practice was criticised by the Appointed Person on appeal from a cancellation application filed at the UKIPO.  The decision can be accessed on UKIPO’s website here.

For now, the UKIPO has suspended actions relating to UK designations and we expect they will urgently review their internal procedures and issue a practice update in the coming weeks.  A detailed report on this decision will be available on our website soon, and we will provide updates as the UKIPO issues their own response to this decision.

The immediate take home message is to ensure UK designations have a UK agent appointed to ensure that UKIPO notices are received in a timely fashion, and do not go missing or cause confusion for rights holders with professional representation.

The trade marks team at Venner Shipley can assist with this, so please get in touch.

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