Related ServicesTrade Marks IP Strategy & Management Designs
Related PeopleCorinna Hiscox Kapil Agashi
UK ADDRESS FOR SERVICE – WHY DO I NEED ONE?
The recent decision of the Appointed Person involving the YETI trade mark highlights the benefits of using a professional representative to manage IP rights, and the advantages of early appointment of UK professional representatives at the UKIPO for UK trade mark and designs.
This case concerns an appeal against the UKIPO’s decision to revoke a comparable UK trade mark registration for YETI, in the absence of a timely defence by the registered proprietor. The near loss of rights serves as a warning to IP owners to ensure they have robust systems in place to monitor their rights and manage communications from IP Offices.
The YETI trade mark was owned by French company, Yetigel International SA (Yetigel), and had been cloned from an EU trade mark (EUTM) when the UK left the EU. The original EUTM had been filed by Yetigel directly, without the aid of a professional representative, and so the UK registration did not have a representative on record.
A third party applied to cancel the UK registration, asserting that the mark YETI had not been put to genuine use. UK trademarks that have been registered for more than five years become vulnerable to revocation, if they have not been put to genuine use. In the event of such a challenge, the onus falls on the trade mark proprietor to prove the mark has been used.
As a result, the UKIPO issued an official letter, setting Yetigel a deadline to file a defence and evidence of use. The letter was sent to Yetigel’s French postal address, using Royal Mail’s “International Tracked and Signed” service, which confirmed the letter had been delivered and signed for. When the deadline passed without action, the UKIPO wrote to Yetigel again advising that, in its preliminary view, the mark should be revoked.
In response, Yetigel appointed a UK address for service, sought an extension of its original deadline, and filed a defence and proof of use of the mark. It claimed, in evidence, that it had not received the initial notification, and did not recognise the signature collected.
Yetigel argued the extension of time should be granted, as permitted under rule 76 in the event of delay or failure of a communication service.
It also argued separately that the UKIPO hasdiscretion to extend the missed deadline, where circumstances justify, under rule 38(6).
At first instance, the Hearing Officer rejected the request for an extension of time on both grounds, and did not admit the counterstatement and evidence of use. The Hearing Officer found Yetigel had not proven, on the balance of probabilities, that it had not received the original official letter. The Hearing Officer considered there had been no failure of a communication service and there were no extenuating circumstances in place, which would justify the exercise of discretion to extend the deadline. As a result, the Hearing Officer decided the trade mark registration should be revoked.
The Appointed Person’s Decision
On appeal, the Appointed Person considered that the circumstances did allow for an extension for discretionary reasons under rule 38(6).
In particular, the Appointed Person noted that relief may be “granted when there are extenuating circumstances or compelling reasons sufficient to justify doing so” and the exercise of such discretion “requires a case specific and fact sensitive process of determination”.
The Appointed Person found that, on the evidence presented, Yetigel’s failure to comply with the original deadline was the result of an “undetected mishap early on in the mail handling procedure” by Yetigel’s reception.
Further, the Appointed Person considered that the adverse party did not suffer any significant prejudice as a result of Yetigel’s failure to comply with the deadline. On the other hand, a refusal to extend the deadline would be seriously prejudicial to Yetigel. For these reasons, the Hearing Officer’s decision was overturned.
The full text of the appeal decision of 21 December 2022 can be accessed here.
Although this appeal was ultimately decided in favour of the registered proprietor, and the case was remitted to the UKIPO’s Tribunal Section, it highlights how difficult it can be to remedy missing certain deadlines at the UKIPO, and discretion in favour of the applicant or rights holder is far from guaranteed.
This case illustrates the numerous pitfalls that can be encountered when IP owners do not appoint a professional representative, and fail to put in place secure procedures for handling incoming communications and docketing official deadlines.
Some deadlines – such as for filing a defence in opposition, revocation and invalidation actions – cannot normally be extended, and failure to meet them will almost always result in refusal / cancellation of the rights in question.
In general, the UKIPO is strict when it comes to granting extensions of time, if available, and all requests must be supported by appropriate and full justification.
Further guidance on the change of practice at the UKIPO regarding appointment of a UK address for service can be found here.
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.