30/01/2023
This new rule will primarily affect trade mark owners and registered design owners who have protected their trade mark or design in the UK through an International Registration.
The United Kingdom Intellectual Property Office (‘UKIPO’) has updated its practice on the requirement of a UK address for service in contentious registry proceedings. The new practice came into effect on 25 January 2023.
A UK address for service can be an address in the UK, Gibraltar or the Channel Islands. This is the address that the UKIPO will correspond with.
A UK address for service is now required for:
- opposing a UK trade mark application
- defending an opposition against a UK trade mark application
- applying to cancel a UK trade mark registration (invalidity or revocation)
- defending an application to cancel a UK trade mark registration
- applying to invalidate a UK registered design
- defending an application to invalidate a UK registered design
The majority of applications and registrations on the UK trade marks register and the UK designs register that do not have a UK address for service are designations of International Registrations filed through the World Intellectual Property Organisation (‘WIPO’). The new practice will be applied most often to oppositions and cancellations filed against UK designations of an International Registrations.
The new rule affects all opposition and cancellation proceedings filed from today onwards, as well as the large number of proceedings concerning applications and registrations with a non-UK address for service that the UKIPO had suspended pending finalisation of this new practice.
Filing trade mark and design applications
A UK address for service has been required since 2021 for all new trade mark applications filed directly through UKIPO.
A UK address for service is not required when designating the UK as part of an International Registration.
The examination procedure for a UK designation is not affected by the new rule. If the UKIPO raise a provisional refusal against a UK designation, the applicant or their representative will be notified through WIPO as usual.
A UK address for service will only be required if the UK designation of an International Registration is refused on examination, if it is opposed, or if it is granted and subsequently has a cancellation action filed against it.
Defending trade mark oppositions
When a UK designation of an International Registration is opposed the UKIPO will report this to WIPO, who will then notify the applicant or their representative.
The UKIPO will also notify the applicant or their representative directly by sending a letter sent to their non-UK address.
The letter will inform the applicant or their representative that:
- There is a two month deadline to file a counterstatement in defence of the opposition
- A UK address for service must be appointed
If a counterstatement is not filed before the deadline the application will be treated as abandoned for all goods and services that were opposed.
With the introduction of the new rule, if a counterstatement is filed but a UK address for service is not also provided at the same time, the UKIPO will direct the applicant to provide a UK address for service within one month. This communication will be sent by letter and email to the addresses for the applicant or their representatives that are held at WIPO.
If a UK address for service is not provided before the deadline then the application will be treated as withdrawn for the goods and services that were opposed.
Defending trade mark and design cancellations
When an application is filed to invalidate or revoke a UK trade mark or design registration which does not have a UK address for service, the UKIPO will notify the owner or their representative and inform them that a UK address for service must be appointed within one month.
This notification will be a letter sent by recorded delivery to the owner or their representatives non-UK address. Where the UK register holds details of a representative the letter will be sent to this address. If the UK registration is unrepresented the letter will be sent to the owner’s address.
Once a UK address for service has been provided the UKIPO will serve the cancellation application to this address and the proceedings will continue as usual.
If a UK address for service is not provided then the owner will be deemed to have not defended the application for invalidity or revocation. The registration will then be declared invalid or revoked for the goods and services that were the subject of the cancellation application.
Cancelations filed against Brexit clone registrations
At the end of the Brexit transition process the UK government created millions of new trade mark and design registrations that were clones of existing EU trade mark registrations and EU design registrations. This ensured the continuation of rights in the UK post-Brexit. Many of these clone registrations retain a non-UK address for service from the original EU registration.
The new rule requiring a UK address for service does not immediately apply to cancellation applications filed against Brexit clone registrations.
Up until 1 January 2024, the UKIPO will continue serving notification of the cancellation application to the registration’s non-UK address for service.
After 1 January 2024 this exception will no longer apply and a UK address for service will be required.
Any opposition and cancelation proceedings relating to Brexit clone registrations which commenced before 31 December 2020 are not affected by the new rule and the UKIPO will continue to use the non-UK address for service for the duration of the proceedings, including for any related appeal.
How we can help
Reddie & Grose represents international clients in a high volume of trade mark opposition and cancellation proceedings and design invalidity proceedings in the UK.
Contact us if you require assistance in proceedings before the UKIPO.
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.
