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UKIPO: new rules on address for service for contentious proceedings

Posted on 31 January 2023

The UKIPO has issued details of its much-anticipated new practice (Tribunal Practice Notice 2/23) in relation to service of proceedings against trade mark and design registrations / applications, where there is no valid UK address for service, which has particular implications for holders of (WIPO) International Registrations designating the UK. The updated approach follows the suspension of a number of ongoing cases at the UKIPO in light of an Appointed Person decision last year which had called into question the UKIPO's previous practice.

Under the new practice, which applies with immediate effect, the UKIPO will send a preliminary letter to the holder of the right (and their WIPO representative in the case of an IR (UK) or design registered under the Hague Agreement) giving them a short one-month period in which to notify the UKIPO of their UK address for service. Failure to do so may ultimately result in the relevant action against the right succeeding by default.

Practical steps

The new approach relating to UK addresses for service only applies to inter partes proceedings that target rights without a valid UK address for service (and so the UKIPO will not request a UK address for service on receipt of an IR(UK) from WIPO).

Given the potential for delays and lost communications sent by post to holders, and in order to ensure that communications from the UKIPO are received on a timely basis, the recommended approach for non-UK based holders is to appoint a UK representative (both for their UK registrations and pending applications/designations).

As explained below, the new practice will not apply to invalidity/revocation proceedings which begin before 1 January 2024 against comparable rights (i.e., those rights that were created post-Brexit based on an existing EUTM or Registered Community Design) which have an EU address for service. However, there will need to be a UK address for service in place if contentious proceedings are launched against the comparable right on or after 1 January 2024. It therefore also makes sense to put in place arrangements to deal with this situation at an early stage.

UKIPO's previous practice

In situations where there was no valid UK address for service in place, the UKIPO had previously issued documents to the holders of those rights via delivery to the holder's non-UK address, treating this as effective service. In the case of UK designations of an International Registration (IR), where the IR had a WIPO representative (but not local UK representative), the UKIPO's practice had been to notify the IR holder via post, but not its WIPO representative.

This issue came under the spotlight in the recent MARCO POLO case where the Appointed Person determined that the UKIPO had no power to serve documents outside of the UK, finding that there first had to be a valid UK address for service in place for the challenged right for service to be effected. Following that decision, various ongoing cases were suspended pending further review of the correct approach.

UKIPO new practice

The approach now adopted by the UKIPO under its new practice depends upon the nature of the proceedings, with a different approach applying in relation to oppositions against IR (UK) designations:

Invalidity, revocation and rectification proceedings

For such proceedings, where there is no valid UK address for service, the UKIPO will send a preliminary letter to the holder of the right directing it to provide a valid UK address for service within a period of one month from the date of the letter, together with confirmation that it intends to oppose the application for invalidity/revocation/rectification. The holder can provide its UK address for service by email to the UKPO in response to this letter.

The UKIPO will send these preliminary letters using the Royal Mail's Signed-For service to the address available to the UKIPO at that time. Where the right is an IR (UK) or design registered under the Hague Agreement, it will send the letter to the non-UK address of an overseas representative as held in the WIPO record or the holder's address. Where the representative's details are available, these will be used in preference to the holder's address. 

If the holder provides a valid UK address for service within the one-month period, this will constitute an intention to defend the proceedings. The UKIPO will go on to serve the application form (again, via Royal Mail's Signed-For service) to the UK address for service provided, and the two-month period for filing a defence will commence from the date of effective service

If, however, the holder does not respond within the one-month period by providing a valid UK address for service, the UKIPO will notify the holder of its intention to treat the application as undefended and to declare the mark/design invalid/revoked, or in the case of rectification proceed to correction of the error/omission. The holder will be given a 14-day period in which to reply and may within that period request a hearing. On expiry of the appeal period, the relevant trade mark/design will be declared invalid, revoked or rectified.

Comparable rights

Where the target of invalidity/revocation proceedings is a comparable trade mark (derived from an EUTM created at the end of the Brexit transition period) with an EU address for service, and the proceedings are launched before 1 January 2024, the new practice set out above will not apply. For such proceedings, service will be effected via the EU address for service (as set out in Tribunal Practice Notice 2/2020).   

Opposition proceedings against published International Registration (UK)

A different approach is being taken in relation to opposition proceedings against a published IR (UK). This is because WIPO transmits the opposition to the holder of the IR; this constitutes effective service, and so the holder does not – at this stage at least - have to deposit a valid UK address for service at the UKIPO.

However, the UKIPO will continue its current practice of issuing a letter to the IR(UK) holder using the address details provided by WIPO. This letter will confirm that a Form TM8 and counterstatement is required inside of the activated two-month period to initiate a defence, and that a valid UK address for service will be required to contest the opposition and engage beyond that initial submission of the Form TM8/counterstatement. Failure to submit the Form TM8/counterstatement within the two-month period will result in the application being treated as abandoned in respect of the goods/services relevant to the opposition. If the holder submits the Form TM8/counterstatement but fails to provide a UK address for service, the UKIPO will send directions via letter and email to the addresses held in the WIPO record, requiring that a valid UK address for service is provided within one month. Otherwise, the UK designation will be treated as withdrawn.  

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