Important changes to UK address for service - specifically affecting UK designations of International Registrations

Following the decision of the Appointed Person’s in Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/122, the ‘Marco Polo’ case, as previously reported by my colleague, Nawel Chemali (here), the UK IPO has issued changes to practice in relation to addresses for service.

This change mostly impacts the holders of international trade mark registrations that designate the UK and do not have a UK address for service ("UK AFS").

Background:

In short, the Marco Polo case involved an invalidation action filed against the UK designation of International Trade Mark no. WO1541304 (MARCO POLO) held by New Holland Ventures Pty Ltd ("NHV") (an Australian company) by Tradeix Ltd. As the UK designation did not have a valid UK AFS for the representative nor the owner, the UK IPO sent a notice of invalidity of the UK designation to NHV, by a registered post, to its Melbourne address. This notice set out the two-month deadline for defending the invalidation action as well as a need to provide a valid UK AFS (within the two-month period). The notice was not received due to a closure of the NHV's offices during COVID-19. NHV also did not receive a preliminary decision to declare the registration invalid in the absence of the defence. The UK IPO therefore issued a declaration of invalidity, which was subsequently received by NHV, who then appealed. On appeal it was held that the UK IPO was not entitled to serve the proceedings out of the jurisdiction. Until now, the UK IPO issued applicants and proprietors of the contested rights with documents via delivery to non-UK addresses. Further, historically such action was deemed to constitute effective services for the purposes of setting out the deadline to file a defence. It was held that the UK IPO should have sent a letter to NHV requesting that a valid UK AFS within the one-month period, further specifying the consequence of not recording a valid UK AFS. Only once a valid UK AFS is recorded can the proceedings be served on the proprietor.

Beware, this does not mean that you can ignore the request for a valid UK address of service! There are consequences attached for non-compliance as explained below.

New requirements of a UK Address for Service

The UK IPO has now issued new guidelines as a result of the Marco Polo case, affecting UK designations of international registrations in relation to trade mark invalidation, revocation, rectification and opposition proceedings and registered design invalidation proceedings as follows:

1. Invalidation, revocation on the grounds of non-use, revocation on grounds other than non-use and rectification.

a) Issuing of proceedings in relation to invalidation/revocation action against UK designation

• On receipt of the relevant form in relation to invalidation/revocation proceedings, the UK IPO will examine the pleadings and check whether the challenged registration holds a valid UK AFS. If there is not a valid UK AFS, the UK IPO will issue a preliminary letter directing the proprietor to provide a valid UK AFS within the one-month period from the date of the letter and confirmation of its intention to defend its registration.
• The letter will be posted by the Royal Mail's signed-for service to the address available at the time of issuing proceedings, such as the address of an overseas representative held in the WIPO record or the proprietor's own address.
• The letter will explain the consequence of failure to comply, such as the UK IPO treating non-compliance as intention not to challenge invalidation/revocation proceedings against its registration and that the registration may be declared invalid or revoked.
• The proprietor may wish to email the UK IPO (email address provided on the letter) or post the response.

b) Outcome following compliance/non-compliance

• If a valid UK AFS and a confirmation of intention to oppose the application of invalidity/revocation are provided, the UK IPO will serve the application for invalidity/revocation in a normal manner and provide the proprietor with the two-month deadline to file its counter-statement.
• If a valid UK AFS is not provided, the UK IPO will treat the application for invalidity/revocation as not opposed.
• If a confirmation to oppose the application of invalidity/revocation is received but a valid UK AFS is not provided, the UK IPO will issue a second letter requesting a valid UK address for service. If a valid UK AFS not provided within the one-month period, the application for invalidity/revocation will be treated as not opposed.

2. Trade Mark Oppositions against published UK designations of International Registrations.

a) Issuing a Notice of Opposition against UK designation

• Once the notice of opposition is received, the UK IPO will notify WIPO of the notice of provisional refusal based on an opposition. The WIPO will then forward the notice to the holder of the international registration, as per the current procedure.
• The UK IPO will also continue its current practice of duplicating information already provided by the WIPO, setting out two-month deadline to initiate a defence and a requirement of confirming a valid UK AFS.

b) Outcome following compliance/non-compliance

• Where a counterstatement and a valid UK AFS are provided, the opposition proceedings will continue as per the normal practice.
• Where a counterstatement is provided but not a valid UK AFS, the UK IPO will treat the receipt of a counterstatement as an intention to defend the application. However, as a valid UK AFS is required, the UK IPO will issue a direction requesting a valid UK AFS, issued in a similar way as above - i.e. by registered post to the non-UK address of the applicant or its representative. Failure to provide a valid UK AFS within the one-month period, will result in the UK IPO treating the designation as withdrawn.
• Where no counterstatement or a valid UK AFS is provided, the UK IPO will issue WIPO with the final notice of refusal.

Take away points

• A valid UK AFS is required for all trade mark and design applications/registration in cases of oppositions, invalidation or revocation actions, not only in relation to UK designation.
• A valid UK AFS is also required where objection is raised against UK designation.
• It is better to have a valid UK AFS, although not required from the onset of the application, in order not to miss the important correspondence from the UKIPO

Please get in touch if you require a valid UK address for service!