The UKIPO has issued new guidance (TPN 2/2023) outlining changes of practice for appointment of a UK address for service in contentious trade mark and design proceedings.

The guidance follows the decision of the Appointed Person in an appeal concerning the MARCO POLO trade mark case, in which the UKIPO was found to have incorrectly served cancellation proceedings without a UK address for service having first been appointed, in a chain of events almost leading to loss of rights.

Background

At present, a large number of cases feature on the UK trade mark and design registers without a UK address for service. The majority of such cases have been filed as part of international registrations under the Madrid or Hague Agreements, or result from the cloning of EU rights into comparable UK registrations, at the end of the transition to the UK’s exit from the EU.

To date, where cases filed under the Madrid or Hague international systems have been challenged post-grant, it has been the UKIPO’s practice to serve notice of such proceedings to non-UK addresses, setting a two-month deadline for appointment of a UK address for service and the filing of a defence.  This practice is now changing with immediate effect.

The UKIPO’s guidelines outline new procedures for 1) handling challenges to registered rights, and 2) notification of oppositions to pending UK designations of international registrations.

New practice for invalidation, revocation and rectification proceedings

This applies to contentious proceedings against all UK registered trade marks and designs without a valid UK address for service, including UK designations of international registrations (except UK comparable rights, cloned from EUTMs or RCDs filed directly at the EUIPO, and discussed further below):

• The UKIPO will set the owner of the contested registration a short one-month deadline to confirm its intention to file a defence and to provide a valid UK address for service.

• This will be by way of a letter sent by mail using Royal Mail’s Signed-For service to the postal address of the proprietor’s overseas representative (the WIPO representative) where available, or otherwise the proprietor’s own address.

• The letter will set out the consequences of failure to comply, including loss of rights.

• Where the proprietor or its overseas representatives provides a valid UK address for service in time, the proceedings will be served, setting a two-month period for filing a defence.

New practice for oppositions to UK trade mark designations or international registrations

This applies to oppositions against UK designations of international trade mark registrations under the Madrid Protocol:

• The UKIPO will issue a “notification of provisional refusal based on an opposition” to WIPO, which will then transmit details to the proprietor of the international registration, or its recorded representative, where one has been appointed. This communication will set a two-month deadline for the filing of a defence.

• The UKIPO will continue in its current practice of sending a separate notification of the opposition to the proprietor’s WIPO address for service.

• Failure to file a defence within the deadline will normally result in success of the opposition.

• The proprietor will not require a UK address for service to file its initial defence. However, a UK address for service will be necessary to contest the opposition and engage further in the proceedings.

Comparable UK registrations cloned from EU trade marks

Under the terms of the UK’s exit from the EU, the proprietor of UK comparable rights cloned from EUTMS and EU registered designs (which were originally filed directly at the EUIPO) may retain an address for service in the EEA up until the end of 2023). For such cases service will continue to be effected via the EU address for service for any proceedings launched up to 31 December 2023.

However, from 1 January 2024, when new contentious proceedings are commenced against such rights, the UKIPO will require a UK address for service.

Recommendations

The UKIPO’s clarification of its new procedure does provide assurance that appointment of a UK representative for UK trade marks and designs registered under the Madrid Protocol and Hague Agreement is not strictly necessary, where no objections or challenges are encountered.

However, where an address for service in the UK is needed, it must be noted that the UKIPO will request appointment by post, in particular, in the case of post-grant contentious proceedings.

The reliability of postal services in many countries is highly questionable, especially at busy times of the year. We therefore have concerns that official communications could go astray or be delayed, with the result that the IP rights owners may miss their one-month deadline to appoint a UK address for service, or have very little time to comply.

In particular, the UKIPO’s new practice is unlikely to have assisted the French proprietor of the UK comparable registration for YETI (which had been cloned from an EUTM) in the recent case reported here. The French proprietor did not have professional representation in place and its failure to respond to a revocation action almost resulted in cancellation of its rights.

We are therefore recommending that IP rights holders appoint a UK professional representative to act as address for service for UK trade marks and designs, to ensure safe receipt of official communications and timely response to important deadlines.

Insofar as comparable UK registrations cloned from EU trade marks and designs are concerned, it is expected that a large number of proprietors will file applications for appointment of UK representatives during the course of 2023. This is expected to lead to delays in the recordal process at the UKIPO, particularly as 1 January 2024 approaches. We are therefore recommending that the proprietors of such rights take early steps to appoint a UK representative during the course of 2023, if not already.

This article is for guidance only and should not be taken as formal advice. If you require advice on a particular case, please do not hesitate to contact us.