In 2022, we reported on the decision in the MARCO POLO trade mark case (“Do IR holders need a UK representative?”), in which the Appointed Person found that an invalidity application was not validly served by the UK IPO.
The IPO has now addressed that problem, with an important Tribunal Practice Note setting out a change regarding the service of documents in inter partes proceedings where there is not a valid address for service.
The Note was published on 25 January 2023 and has immediate effect, including to all proceedings suspended since the Appointed Person’s decision.
What is changing?
The Office previously issued documents via delivery to non-UK addresses, starting the two-month period for filing a defence.
But the Office will now seek to obtain a UK address for service before any formal serving of documents. Where a non-UK address is held by the Registrar, the holder will be asked to confirm its intention to defend the proceedings and to provide a valid address for service within one month from the date of the communication.
Failing to comply may result in the registration being declared invalid, revoked or rectified, or the application being treated as withdrawn.
The new procedures will mainly apply to rights obtained through the Madrid Protocol (trade marks) and Hague Agreement (designs) routes. Applications without a valid UK address for service facing opposition are likely to be UK designations of International Registrations published by the UK IPO.
The new approach has no effect on ex parte proceedings: the Office’s practice in relation to new UK designations received from WIPO and intended for examination under UK law will remain the same and the Office will not request a UK address for service on receipt of an International Registration (UK) from WIPO.
Steps to take
The change only affects cases where objections are raised that result in a notice of provisional refusal, to which a response is needed.
However, as stated in our previous post, best practice remains to appoint a UK representative for all UK trade mark and design rights. That will ensure that information is received as timely as possible, so that you can make the most of the very limited time to respond.
We can help! So please do get in touch if this is an issue for you or your clients.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com