UK IPO Practice Update: UK Addresses for Service

The UK Intellectual Property Office (UK IPO) has recently changed its practice on the service of invalidation, revocation, and opposition proceedings against trade marks and registered designs which do not have an owner/applicant/representative address in the UK (including the Isle of Man), Gibraltar or the Channel Islands. The change in practice follows a recent decision from the Appointed Person (Tradeix Ltd v New Holland Ventures Pty Ltd or “Marco Polo” case), which confirms that the UK IPO does not have the power to serve tribunal proceedings on parties outside of the UK.

Tribunal Practice Notice 2/2023

With effect from 25 January 2023, the UK IPO will seek to obtain a valid address for service (in the UK, Isle of Man, Gibraltar or the Channel Islands) from a party based outside the UK before serving invalidation, revocation, or opposition proceedings. Before serving proceedings, the UK IPO will seek to obtain a valid address for service as follows:

• For invalidity, revocation and rectification proceedings, the holder will be required to provide a valid address for service within 1 month of the date of a written request from the UK IPO. Otherwise, following a further notification from the UK IPO, the proceedings will be deemed undefended, which may result in loss of protection or partial loss of protection; and

• For oppositions filed against UK designations, the UK IPO will continue to issue a “notice of provisional refusal based on an opposition” to WIPO. This sets a two-month period for filing a defence and counterstatement. The UK IPO will also now write to the proprietor or its WIPO representative requesting a valid address for service. A proprietor who wishes to defend an opposition against its UK designation will be required to provide a valid address for service, failing which the opposition will be deemed to succeed.

For now, the majority of trade marks and designs affected are those protected as UK designations via WIPO under the Madrid Protocol/Hague Agreement. Note that the new practice will not apply to the registrations created automatically from EU Trade Marks until 1 January 2024.

Comment

The change in practice emphasises the importance for holders of UK designations, UK trade marks and registered designs to appoint a representative in the UK to act as an address for service for those registrations. Whilst the UK IPO will continue to correspond directly with overseas proprietors in the first instance, the period to respond to the UK IPO is relatively short which creates a heightened risk of an inadvertent loss of rights.