As UK IP lawyers and Chartered Trade Mark Attorneys, we’ve learned to ensure that local associates, especially in certain countries, record their firms as representatives for the respective designation under an application for a International Trade Mark or Design. Local representation provides an extra safety net; allies on the ground to receive, decipher and report important notifications, some of which have tight deadlines; an extra pair of eyes to ensure mid-term maintenance deadlines are met; and sometimes a bonus complimentary watch for potentially conflicting applications.
In light of the irregularities highlighted by the ‘Marco Polo’ case and the Tribunal Practice Note (TPN) 2/2023, issued just last week (25 January 2023) and with immediate effect, which seeks to ‘fix’ the issue, we recommend that a UK address for service is recorded immediately and as a matter of course, even if the applicant or proprietor has an address in the United Kingdom, Gibraltar or the Channel Islands.
Appoint a UK address as soon as possible for existing UK national registrations, comparable registrations and UK designations of International rights. In respect of recently filed applications for International Trade Marks or Designs, we suggest that that a UK representative is appointed, as soon as possible, usually when a WIPO registration certificate/International Registration (“IR”) number is issued,.
Following a decision last November 2022, by the Appointed Person, Geoffrey Hobbs KC, in the “Marco Polo” case, Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22), questions were raised regarding the UKIPO’s practice for processing International Trade Mark Registrations designating the UK. Whilst the UKIPO urgently sought advice as to how practices should change in response, it suspended a large number of cases potentially affected by the decision.
Of particular concern was the requirement for a UK address for service for designations which attained registration without a UK address for service, due to the fact that they did not attract any objection or opposition during prosecution. The Appointed Person found that posting documents to non-UK addresses may not have constituted valid service of those documents.
In the case, invalidity proceedings filed against the designation in question were notified by post to the Australian based applicant but due to its offices being closed, the notification was not received or responded to.
A Declaration of Invalidity was later issued by the UKIPO to the International Bureau, at which point the owner’s WIPO representative was informed. A UK representative was subsequently appointed and an appeal filed against the invalidity.
The Appointed Person held that the application for invalidity was not properly served on the Australian owner of the IR and the default decision declaring the designation invalid was set aside.
“The new practice impacts all types of inter partes proceedings that target rights without a valid UK address for service. Procedural differences between invalidation, revocation and rectification actions (where service is effected by the UKIPO) and trade mark opposition actions against UK designations of International trade marks or designs (where service is primarily effected by WIPO) means that the TPN sets out two distinct approaches.”
The TPN sets out the process for notifying the owner of the challenged registration that they must appoint a UK address for service (and confirm their intention to defend the action). The time limit to do so is one month, following which the documents associated with the challenge to this registration will be formally served on the owner.
This direction will be sent by post to the owner’s non-UK recorded representative (if such details are known to WIPO) or the owner’s own address. It will set out a time period for appointing an address for service, and make clear the means by which one can be appointed and the consequences of failure to comply, also detailed in the TPN.
Where an IR is opposed, the UKIPO will now notify both WIPO (this is required pursuant to the Madrid Agreement) and the owner of the IR (via their non-UK representative, if known) that their application to designate the UK has been opposed. WIPO will also subsequently notify the owner of the IR in a separate communication (as it does now).
The notification will direct the owner of the IR to file a defence against the opposition within two months of the date it was notified of the opposition by WIPO. A UK address for service may be appointed at the same time. If the owner does not appoint a UK address for service when filing a defence, the owner will subsequently be directed to appoint one if it wishes to engage further with the opposition. Failure to comply with either direction will result in the application being treated as abandoned.
