February 21, 2023 UK IPO require UK Address for Service
The legal ruling
In Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22) (“Marco Polo” case) it was decided that the UKIPO had not been empowered to effect service of invalidity proceedings on the trademark owner at an address outside of the jurisdiction. That it was open for the UKIPO to notify the trademark owner an invalidity application had been made and to seek a UK AFS for use in proceedings instead of using the overseas address. The documentation sent by the UKIPO to the overseas address, therefore, did not constitute valid service.
Updated Tribunal Practice Notes
In response, the UKIPO on 25 January 2023 published Tribunal Practice Notes 2/2023 which effectively stated that for all contentious proceedings, including applications to rectify a trade mark registration, it would now seek to obtain a UK AFS if there was no valid one on record. The practice note goes on to detail how the new approach would affect:
- Invalidation, revocation and rectification proceedings; and
- Trade mark opposition against an International Registration designating the UK.
1) Invalidation, revocation and rectification proceedings
Upon receiving an invalidation/revocation/rectification application where the registration does not hold a valid UK AFS, the UKIPO will write to the holder notifying them that within a period of one month “from the date of the letter”, they must provide a valid UK AFS along with confirmation of its intention to oppose the application (where applicable). For information only, the letter will also enclose a copy of the application.
The letter will be sent to the contact details that are available to the UKIPO at that time. Where the registration was obtained through the international trademark system (Madrid Protocol) and the international design system (Hague Agreement), the address used will either be that of the overseas representative or the owner, with the former being prioritised. The holder can post a response, or more likely in the interest of time, use the UKIPO email address provided.
Upon being provided a UK AFS, the UKIPO will use that address for service and the holder will have two-months to respond. For contentious proceedings, failure to provide a UK address for service may be deemed as the owner not opposing the application and may result in the registration being declared invalid or revoked.
2) Trademark opposition against an International Registration designating the UK.
In accordance with the Madrid Protocol, on receipt of opposition to a published international trademark registration designating the UK, the UKIPO will continue to send a “notice of provisional refusal based on an opposition” to WIPO, who will pass this on to the holder. This transmission by WIPO to the holder of the international registration constitutes valid service even if the address used for the holder is not a UK AFS.
In addition to the “notice of provisional refusal based on an opposition”, the UKIPO will issue a letter stating that in order to initiate a defence against the opposition a counterstatement is required within two months of service (by completing Form TM8). In default, the application for registration would be treated as abandoned in respect of those goods/services against which the opposition was directed and the standard procedure relating to a non-defence would follow.
The UKIPO letter will also ask for a UK AFS (by completing Form TM33). How proceedings continue will then depend on whether Form TM8 and TM33 was submitted at the same time, or whether only Form TM8 was submitted.
Where Form TM8 and Form TM33 are submitted at the same time, the defence would be examined by the UKIPO and may subsequently progress to evidence rounds. Where only Form TM8 was submitted, the UKIPO will write to the holder notifying them that within a period of one month “from the date of the letter”, they must provide a valid UK AFS otherwise the application for registration would be treated as abandoned in respect of those goods/services against which the opposition was directed and the standard procedure relating to a non-defence would follow.
Who does this change affect?
These changes affect holders of trademarks/designs registered in the UK that do not have a UK AFS, as well as those applying to register a trademark in the UK via the international trademark system (Madrid Protocol), who are faced with proceedings.
According to the UKIPO, in most cases the lack of a UK AFS for trademarks/designs will be because the registrations were made using the international trademark system (Madrid Protocol) and the international design system (Hague Agreement).
What should rights owners do?
Owners of trademarks/designs registered in the UK without a UK AFS should consider what would happen in the event that proceedings are launched. The rules state that they may only have one month “from the date of the letter” to provide a UK AFS. When taking into consideration postal delays, industrial action, remote working, and a number of other factors this may leave little or no time for them to act.
For these reasons it is strongly advised that a UK AFS should be appointed to ensure no communications are missed and to mitigate the risk of an action being deemed undefended and rights lost.
How can Elemental Help?
Elemental has been providing registered address services and process agent address services to many clients from all over the world. Our address service has been in place for 80+ years and remains an important part of the corporate services we offer law firms, advisors, and their clients.
- We have considerable experience handling service proceedings.
- Our address services is monitored daily.
- We are independent and impartial and able to work with your existing representatives.
For more information read our UK address for service guide.
The blog article is not intended to be legal advice and should not be relied upon as such. If you are in any doubt as to your legal obligations you should obtain independent legal advice.