The MARCO POLO trade mark case provides a salutory warning to IP owners about the risks of failing to appoint a valid UK address for service at the UKIPO for trade mark and design cases.

The Appointed Person’s decision concerns an appeal against the cancellation of a UK trade mark designation for MARCO POLO, as a result of the proprietor’s failure to file a timely defence against an invalidation application.

The case illustrates the pitfalls that may be encountered in the absence of a UK address for service at the UKIPO for trade mark and design cases (particularly under the Madrid Protocol and Hague Agreement), and the potential consequences of  loss of rights.

Following the Appointed Person’s decision, the UKIPO has revised its practice on service of proceedings in cases for which a valid UK address for service is not on record. Our briefing note on the new practice can be found here.

Background

The Australian company, New Holland Ventures Pty Ltd (New Holland), owns an international trade mark registration no. 1541304 for MARCO POLO, designating the UK.

Where a UK designation of an international registration is granted without objection or opposition, the UKIPO does not routinely request that a UK-based address for service be appointed. Instead, its practice is to simply to list the representatives of the international registration (if any) on the UK trade mark register.

In the MARCO POLO case, a firm of Australian attorneys had filed the international application, and therefore became listed as representatives on the UKIPO’s database. The Australian attorneys had listed their e-mail address in the international application and specified that e-mail was to be the “dedicated communication channel”.

When a third party applied to invalidate the UK designation, the UKIPO did not send notice of the invalidity application to the WIPO or even to the Australian representatives. Instead, the examiner wrote by mail to the New Holland’s registered office address in Australia, setting the company a deadline for providing an address for service and for filing a defence.

In the absence of a timely defence, the UK designation for MARCO POLO was held invalid by default. Once alerted to the decision, New Holland appointed a UK representative and appealed against cancellation of its mark to the Appointed Person.

The Appointed Person’s decision

The Appointed Person set out that, under the UK’s Trade Mark Rules 2008, an address for service must be provided in the UK, Gibraltar or the Channel Islands, before proceedings – such as this invalidity application – are issued by the UKIPO. The UKIPO was therefore wrong to have served the proceedings without a dedicated UK address for service on record.

Whilst the Appointed Person had some sympathy with the Australian attorneys’ assumption that they would have been informed of the invalidity application by e-mail, as requested in the international application, the Appointed Person did not find any provision in UK law to allow for this course of action.

The Appointed Person found that the correct procedure should have been for the UKIPO to notify the rights holder by post of the invalidation application, asking it to appoint a UK address for service within a period of one month, but not, at that point, serving the proceedings.

The Appointed Person therefore set aside the Hearing Officer’s decision to invalidate the designation ordered that the invalidity proceedings resume as normal now that a UK address for service had been appointed. This meant the trade mark proprietor would be allowed to file a timely defence.

The full text of the Appointed Person’s decision can be accessed here.

Comment

The new practice announced by the UKIPO (here) makes clear that a UK address for service is not strictly required for a UK designation of an international registration, unless objections or challenges are encountered.

However, the UKIPO’s new practice guidance makes clear that, where such a right is challenged post-grant, a UK address for service will be required to file a defence, and the UKIPO will send the request for appointment of the UK address for service by mail, with a short one-month deadline for response.

Postal systems in many countries can be unreliable and slow, such that important IPO communications could go astray or be delayed, particularly at busy times of the year. In the event of challenge, we therefore believe there is a risk that IP owners risk missing their one-month deadline for appointment of a UK address for service, or may have very little time to comply.

We are therefore recommending the UK trade mark and design holders take early steps to appoint a UK address for service, to safeguard their rights.

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.