The recent decision of 16 August 2022 by the Appointed Person, Trade Mark Appeals Decision O/681/22 (ipo.gov.uk), serves as a reminder to both the UK Registrar and involved parties that a suitable address for service is required before commencing any proceedings. Funnily enough, it also sets out how to validly and effectively serve official communications from the UK IPO.
Following Brexit, the UK IPO made a conscious effort to publish official guidelines and articles regarding the changes to the address for service requirements. Indeed, as of 1 January 2021, an address for service in the UK, Gibraltar or Channel Island ("UK Address for Service") is required in order to file a new trade mark application at the UK IPO. For cloned marks (comparable rights), as per the terms of the Withdrawal Agreement, the UK IPO requires a UK Address for Service from 1 January 2024.
However, little has been said regarding International Registrations (IR) designating the UK. According to the Trade Marks (International Registration) Order 2008, Section 54 of the Trade Marks Act 1994, a UK Address for Service is, in theory, a requirement.
In this recent case, the Registrar argued that it is not always practical, although technically required, to have parties file a UK Address for Service where an IR designating the UK is at stake.
Let's dive into the facts of the case to understand why the Appointed Person rejected the Registrar's arguments.
In this case, neither the proprietor of the IR, nor its representative, had a UK Address for Service. Despite this, the UK designation obtained protection and a Statement of Grant was issued, confirming that “all procedures before [the UK IPO] have been completed and there is no ground for [the UK IPO] to refuse protection”.
This was criticised by the Appointed Person, who held that since neither the proprietor nor its appointed representative had been directed, either directly or indirectly via the International Bureau, to file a UK Address for Service, it is understandable that they expected all further official communications to be received via email, their chosen communication channel, especially since the Statement of Grant had been received by email.
The Appointed Person took this opportunity to stress the fact that an email address does not qualify as an “address for service” because it does not designate any particular premises at which papers intended for a particular person can with confidence be physically delivered.
A third party then filed an invalidation action against this designation and, because no UK Address for Service was available, the Registrar sent an official letter including a copy of the invalidation proceedings by post to the proprietor at its registered office address in Australia (the address registered on the UK Register for the proprietor of the IR). This letter informed the proprietor of their deadline to file the TM8 and counterstatement. It did not inform the proprietor that they should appoint a UK Address for Service. Further, the Registrar did not send a copy of the invalidation action to the proprietor's WIPO representative in Australia as recorded on the UK Register.
No response was received within the prescribed timeframe and the proprietor later claimed never to have received this letter. Additionally, and as stated above, they did not expect to receive any official communication by post, let alone addressed to them directly and not to their representative.
As no response had been received, the Registrar then sent, still by post and to the proprietor's registered address, a Default Notice informing them that the Registry was minded to 1. treat the holder as not opposing the invalidation proceedings, and 2. declare the designation as invalid. Again, no response was received and the Registrar finally declared the designation invalid and directed that it be deemed never to have been made.
The proprietor became aware of this decision and immediately appointed a UK representative to appeal the Registrar's decision. The UK representative was forwarded a copy of the invalidation application as filed, together with the statement of grounds. A TM8 and counterstatement was filed on behalf of the proprietor a couple days later.
Consequently, in the appeal proceedings, the Appointed Person decided that the proprietor's registered address was not a UK Address for Service. Therefore, even if the official letter and default notice were delivered, they were deemed not to have been validly served by post for the purposes of the 2008 Rules.
The Appointed Person added that the period for filing a defence should be taken to have commenced when the Registrar sent the proprietor's UK representative a copy of the invalidity application.
Key take homes
We can expect that going forward contentious proceedings before the UK IPO may not be resolved as easily and swiftly as they have been until now where the holder of a contested mark (or their appointed representative) does not provide a UK Address for Service at the outset (ie in the case of UK designations).
Despite the Registrar's concern with the financial and time constraints associated with this additional step of obtaining a UK Address for Service before commencing the proceedings, the Appointed Person reiterated that this was a requirement that the Registrar simply did not have the power to circumvent.
The UK IPO must give the proprietor an opportunity to appoint a UK Address for Service. Of course, if no UK Address for Service is filed within the prescribed period, the Registrar will be able to draw the relevant conclusions.
However, only official letters sent to a UK Address for Service will be considered to have been validly served (and deemed delivered).
Better safe than sorry: remember to always provide an address for service in the UK, Gibraltar or the Channel Islands at the outset to ensure that official communications are validly received.
For the reasons I have given the Proprietor’s Appeal is allowed, the Hearing Officer’s Decision and Order are set aside and the Applicant’s claim for invalidity of International Registration (UK) No. WO1541304 is remitted to the Registrar for further processing in accordance with the provisions of the 1994 Act and the 2008 Rules on the basis that the procedural irregularity with regard to service of the Invalidity Application under Rule 41(5) was rectified in May 2022.