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8 August 2023

UKIPO makes procedural changes to representation for trade marks

The UK intellectual Property Office (IPO) has implemented a significant change to the rules concerning the representation of trade marks and design rights in inter partes contentious proceedings. The new rules, outlined in the IPO’s Tribunal Practice Notice 2/2023, requires rights holders without a UK-based Address for Service (AFS) to provide one as the first step after official notification of the action. They must confirm their intention to defend the proceedings and provide a valid UK AFS within one month. Failure to do so will result in the UKIPO treating the action as undefended, resulting in loss of rights through refusal of opposed applications and cancellation of challenged registrations.

This update primarily affects inter partes proceedings involving UK designations of international trade marks. This change came about because previously, when a challenged trade mark registration had an AFS located outside the UK, notification was sent by the UK IPO to the holder rather than to their WIPO representative and a deadline for two moths set for a response which was required to be filed with a UK AFS.

After the Appointed Person, Geoffrey Hobbs KC, made a decision in the ‘Marco Polo’ case, Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22) in November 2022, concerns arose on the UK IPO’s handling of International Trade mark Registrations designating the UK. In light of this decision, the UKIPO needed to consider its practice and whether adjustments were needed, so they suspended the various cases that could be impacted by a change in practice.

A significant issue that arose was the lack of a UK address for service for designations that proceeded to registration without encountering any official or third party objection.  The Appointed Person was of the view that mailing documents to addresses outside the UK may not have fulfilled the criteria for validly serving those documents.

In the case concerned, the UKIPO sent notification of invalidity proceedings by mail to the Australian holder, rather than to their appointed representative at WIPO. However, the applicant’s offices were closed due to Covid restrictions in place, so they did not receive or respond to the notification. The UKIPO adopted its standard practice of taking lack of a response to indicate a lack of intention to defend the cancellation application, and in due course a decision confirming that the registration had been cancelled was issued by the UKIPO to the International Bureau.  At this point the owner’s representative at WIPO was informed. Subsequently, a UK representative was appointed, and an appeal against the cancellation decisions was filed. The Appointed Person determined that the application for invalidity was not appropriately served on the Australian owner of the International Registration (IR), resulting in the default decision of cancellation of the designation being overturned.

The TPN makes it clear that the owner of a challenged registration will be required to appoint a UK address for receiving official communications (and confirm their intent to defend the case) within one month of receipt of this first official notification.  After this period, the documents related to the challenged registration will be sent to the appointed UK AFS of the owner.  The initial notice will be sent by mail to the owner’s non-UK registered representative (if such information held by WIPO) or to the owner’s own address. The notice will specify the timeframe of one month for appointing an address for service and provide clear instructions on how to do so. The TPN also includes details on the consequences of non-compliance.

For oppositions, the practice is slightly different as the UKIPO will send the notice of opposition to the owner’s non-UK registered representative (if such information held by WIPO) or to the owner’s own address by mail but will also notify WIPO of the provisional refusal of the application, and WIPO will send this onto the representative, or the holder if they are unrepresented.. The notice will specify the timeframe of two months for filing the defence and counterstatement but at this point no UK AFS Need be provided.  If no UK AFS is provided, this will prompt a notice of requirement to appoint a UK AFS within one month of the notice, and this notification will be sent by mail and email to the addresses held by WIPO.  It is worth noting that the procedure for amending a defence and counterstatement is not straight-forward and leave is required, so we recommend instructing a UK trade mark attorney to prepare and file the defence and counterstatement at the same time as taking over representation of the application in the UK.

Given the concerns identified in the ‘Marco Polo’ case and the recently issued Tribunal Practice notice 2/2023, we recommend appointing a UK AFS promptly and routinely to ensure no loss of rights. We also strongly advise appointing a UK AFS for existing UK national registrations, comparable registrations created after Brexit, and UK designations of international rights. For recently filed applications pertaining to International trade marks or Designs, it is highly recommended to promptly appoint a UK representative, typically upon the issuance of a WIPO registration certificate or an International Registration (“IR”) number, rather than relying on service of an initial notice via the UK and overseas postal services, given the short timeframe of one month permitted to appoint a UK AFS, and we would be happy to assist with this.

If you have any questions regarding this article, please contact your usual Venner Shipley attorney or email us at UKAFS@vennershipley.co.uk.

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