UK IPO announces address for service changes with immediate effect

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Background

The UK IPO’s approach in handling communications arising out of third-party actions filed against UK trade mark and design applications and registrations has recently been called into question (Appointed Person’s decision in Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22); “MARCO POLO” case) and has been under review.

The UK IPO has now issued a practice note confirming its new approach being introduced with immediate effect. In particular this will impact the handling of important communications on UK trade mark and design rights filed and obtained through the International Madrid Protocol and Hague Agreement systems.

Previous position

To date, communications to applicants and proprietors of rights being contested have been issued by the UK IPO to the non-UK addresses of the rights holders. In the Tradeix decision the Appointed Person determined that the Registrar has no power to serve communications outside of jurisdiction, consequently that service could not be validly effected without first  obtaining a UK address for service (“AFS”). Following internal review, the UK IPO is now changing its practice and applying these changes to both trade mark and design matters.

The changes will affect all types of inter-partes proceedings that issue against rights without a valid AFS. However due to procedural differences, the UK IPO is implementing two separate processes, one for post-registration challenges such as invalidation, revocation and rectification actions, the second addressing oppositions.

The new AFS requirements do not currently apply to comparable trade marks derived from EUTMs, which are subject to a different practice until 31 December 2023 as a consequence of the Brexit Withdrawal Agreement.

New approach  – invalidations, revocations & rectifications

On receipt of a relevant third-party application for action against a UK protected right without a valid UK AFS, a preliminary letter will be issued by post using the Royal Mail’s Signed-For service providing a one-month period from the date of the letter for a valid UK AFS to be provided. Where a UK right arising from the International Madrid or Hague systems is involved, the letter will be sent to either the holder or its WIPO recorded representative. The WIPO representative address details will be used in preference to the holder’s address details, but communication will still be issued by mail.

The letter requesting a valid AFS will confirm the consequences of failure to comply, which may result in the Registrar treating the holder as not opposing the application that has been made and failure to comply could result in the right being declared invalid, revoked or amended. Based on current practice it is possible that the UK IPO might allow some additional time for the provision of a valid AFS if the initial deadline is missed for good reason, but swift action is likely to be needed and the holder needs to become aware of the issue in the first place.

To avoid any risk, it is strongly recommended that a UK AFS is recorded against any rights arising out of Madrid or Hague applications and registrations at an early opportunity. Formal proceedings will continue with fresh deadlines for action once the AFS appointment has been made.

New approach – oppositions

The slight difference in approach on oppositions is that the UK procedure will allow a valid AFS to be filed before or after the filing of the defence and counterstatement. The UK IPO will also continue to issue duplicate communications unless there is a valid UK AFS, which could lead to some confusion.

On receipt of a notice of opposition, the UK IPO will continue to process the notice and to issue communications to WIPO, who will then transmit the notification and information to the holder or its representative. The transmission by WIPO is deemed to constitute effective service. If the opposed right does not have a valid UK AFS, the UK IPO will, in addition, issue a letter to the holder using the non-UK AFS address details provided by WIPO. Both letters will set a deadline of two months from the date of the letter to file a defence and counterstatement (or cooling off request with the opponent’s consent).

The UK IPO has confirmed that the provision of a valid UK AFS is not required in order to file the defence and counterstatement but will be required before the holder can engage further in process. The initial direct letter to the holder will flag the need for a valid UK AFS, but the WIPO directed communication may not. And a failure to file the UK AFS before or with the defence will lead to additional deadlines and communications from the UK IPO, all of which will be directed to the holder until the valid UK AFS is filed. So there is potential for some confusion and certainly for additional administrative burden on holders and their representatives.

Way forward – recommended action

To simplify process and to try to avoid unnecessary communications being issued to rights holders and the possibility of deadlines being missed or loss of rights, it is recommended that a valid UK AFS is added to the details of any Madrid or Hague rights held by WIPO at the earliest opportunity. This may be best achieved when the registration certificate is processed by WIPO and/or notification of application/designation issued to national offices.

It is highly recommended that existing International rights are reviewed and valid UK AFSs added as soon as possible. Processes should also be updated to ensure that this step is incorporated into prosecution matters before WIPO.

If you would like to discuss this matter further, please do not hesitate to contact the author your usual Barker Brettell trade mark attorney.

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