20 Nov UK AFS required in dispute proceedings involving International Trade Marks and Designs
The UK IPO recently changed its practice in relation to serving documents in trade mark contested proceedings and registered design invalidation proceedings in the UK, where the applicant or registered right holder does not hold a UK address for service (UK AFS).
Following the recent UK IPO decision of the Appointed Person in Tradeix Ltd v New Holland Ventures Pty Ltd BL (O/681/22) (Marco Polo Case), the UK IPO will now require a local address in the UK (or in Gibraltar or the Channel Islands) before any formal serving of documents in contentious proceedings relating to UK designations of International trade mark or design registrations. Failure to provide a UK address for service may result in a challenged registration being cancelled or an opposed trade mark being treated as withdrawn.
What is the effect of this change?
Prior to this change, the applicants and proprietors of such contested rights have been issued with documents via delivery to non-UK addresses. This practice is been discontinued with immediate effect, as it was held that the UKIPO did not have the authority to serve documents outside the UK and could not validly communicate in the absence of a valid UK AFS for the challenged right. The Registrar will now seek to obtain a UK AFS before any formal serving of documents in contentious proceedings by a new communication posted to the non-UK address held by the Registrar. The applicant or proprietor/holder (hereafter referred to as ‘the holder’) will be asked to confirm its intention to defend the proceedings and to provide a valid UK AFS within a period of one month from the date of the communication. The Registrar will specify the consequences of failure to comply, which may result in the registration being declared invalid, revoked or rectified, or the application being treated as withdrawn.
In most cases, registered/protected rights that are not accompanied by a valid UK AFS are likely to be those obtained through the International registration process. Similarly, applications without a valid UK AFS facing opposition are likely to be UK designations of International Registrations (‘IRs’) that have been published by the UK IPO. The new procedures will, therefore, be most commonly applied to Tribunal proceedings involving International Registrations that designate the UK.
The new practice impacts all types of inter partes proceedings that target rights without a valid UK AFS. However, procedural differences between invalidation, revocation and rectification actions (where service is effected by the UK IPO) and trade mark opposition actions against IR(UK)s (where service is primarily effected by WIPO) means that two distinct approaches will be adopted, although the final outcome could be the same.
How can we help?
To mitigate risks for international rights holders, we recommend owners of UK designations appoint a UK-based address of service (UK AFS) at an early stage, rather than addressing the matter under tight timelines upon request from the UKIPO.
Should you wish to appoint Elys IP as your UK address for service, please contact the author Yvonne Onomor at yvonne.onomor@elys-ip.com and we would be delighted to assist.
