01.02.2023
Following the recent decision of the Appointed Person (AP) in Tradeix Ltd v New Holland Ventures Pty Ltd BL (O/681/22) (Marco Polo Case), the UKIPO will now require a local address in the UK (or in Gibraltar or the Channel Islands) before any formal serving of documents in contentious proceedings relating to UK designations of International trade mark or design registrations. Failure to provide a UK address for service may result in a challenged registration being cancelled or an opposed trade mark being treated as withdrawn.
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What has changed?
Historically, the UKIPO served documents relating to contested International trade marks and designs to proprietors located outside of the UK. Following the decision in the Marco Polo case, this practice is being discontinued with immediate effect, as it was held that the UKIPO did not have the authority to serve documents outside the UK and could not validly communicate in the absence of a valid UK AFS for the challenge right. Consequently, the UKIPO will now seek to obtain a UK AFS before issuing any documents relating to inter partes proceedings, namely, invalidation, revocation, rectification and opposition proceedings.
What is the effect of the change?
Where a UK designation is challenged, the UKIPO will now seek to obtain a local UK AFS through the introduction of a new communication sent to the proprietor or its WIPO recorded representative. Upon receipt of this communication, the proprietor will be requested to confirm their intention to defend the proceedings and to appoint a valid UK AFS within one month from the date they received the communication. Failure to do so will result in the UKIPO treating the right as undefended and consequently, your right may be declared invalid, revoked, or rectified, or your application treated as being withdrawn. Where an International trade mark or design Registration designating the UK is protected without objection or opposition, the UKIPO will not request a UK AFS to be provided.
This new appointment practice will impact all inter partes proceedings that have not specified a valid UK AFS. There will, however, be procedural differences between invalidation, revocation, and rectification actions (where service is effected by the UKIPO) and opposition actions against International Registrations designating the UK (where service is primarily effected by WIPO).
New approach for invalidation, revocation on the grounds of non-use, revocation on grounds other than non-use, and rectification:
Where a UK designation is challenged with no valid UK AFS, the UKIPO will issue a preliminary letter directing the proprietor to provide valid UK AFS within a period of one month from the date of the letter alongside their intention to oppose the application for invalidation, revocation or rectification. Failure to do so will result in the UKIPO treating the UK designation as undefended. A letter will be issued notifying the proprietor of the UKIPO’s intent to treat the challenge as undefended and possibly to declare the right invalid or revoked. This letter will be sent to the non-UK address currently on file and will give them a 14-day period in which to reply. Failure to respond will result in the UKIPO issuing a decision on the undefended challenge. If the UK designation is declared invalid, revoked or rectified, WIPO shall be informed accordingly.
New approach for oppositions against published International Registration with a designation in the UK:
For oppositions against pending UK designations, a ‘notice of provisional refusal based on an opposition’ will continue to be sent to WIPO, who will then relay the information to the applicant using the non-UK address for service. WIPO’s actions will continue to constitute as effective service of the opposition.
At this stage, the UKIPO will then send a letter to the applicant duplicating the information relayed by WIPO, namely that the 2-month period to initiate a defence has been activated and to confirm that a valid UK AFS is required.
Where an applicant submits a counterstatement and a valid UK AFC, the proceedings will continue in accordance with the standard practices. If only the counterstatement is filed, the UKIPO will issue another letter to the address held by WIPO requesting a valid UK AFS within one month of receipt of the letter. In cases where the applicant fails to provide a valid UK AFS, the UKIPO will issue WIPO with a final notice of refusal. The opposition will be treated as if no counterstatement was supplied. It is however important to note that this consequence will only apply to the goods and/or services against which the opposition was directed.
Additional Notes
For UK comparable rights that were created automatically when the UK left the EU, it is not mandatory to have a local UK address for service for the first three years following the 1st of January 2021. From the 1st of January 2024, however, all contentious proceedings relating to these comparable rights will require a local UK AFS.
To eliminate unnecessary risks, we highly recommend Proprietors/Applicants of International trade mark and design registrations designating the UK appoint a UK representative as soon as possible.
Moving Forwards
To mitigate risks for international rights holders, we recommend owners of UK designations appoint a UK-based address of service (UK AFS) at an early stage, rather than addressing the matter under tight timelines upon request from the UKIPO.
Should you wish to appoint Keltie as your UK address for service, please contact the author or your usual attorney. We would be delighted to assist.
Photo by Sebastian Pichler on Unsplash
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