27/01/2023
On 25 January 2023 the UKIPO issued a new and important Tribunal Practice Notice (TPN 2/2023), which became effective immediately. It relates to the service of documents in the following contentious proceedings before the UKIPO:
- UK trade mark invalidation, revocation, rectification and opposition proceedings
- UK registered design invalidation proceedings
The UKIPO now requires a UK Address for Service (UK AFS) to be provided for those proceedings – non-UK addresses are no longer accepted (except in limited circumstances). A UK AFS (an address in the UK, Gibraltar or the Channel Islands) must be provided within one month of the UKIPO requesting it.
Failure to provide a UK AFS may result in an application for a UK trade mark being refused due to an opposition succeeding by default, or opposition, revocation and cancellation proceedings being deemed withdrawn.
TPN 2/2023 will not apply in the following situations:
- Where the target of UK invalidation or revocation action is a UK trade mark or registered design that was cloned from an EU right at the end of the Brexit transition period (1 January 2021), and those proceedings are commenced before 1 January 2024. In these circumstances, service will be effected via the EUIPO AFS.
- The filing of International Trade Mark Registrations designating the UK – here the UKIPO will continue to use the address of the WIPO representative. However, if the UK designation encounters objections at the examination stage, or is later opposed, then a UK AFS will be required.
- Where UK opposition or cancellation proceedings were filed on, or before, 31 December 2020 and where a final decision has not been issued. Here, the exceptions in TPN 2/2020 apply.
A more detailed article to follow shortly.
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This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
