Background

The proprietor appealed against a UKIPO decision declaring its international registration, MARCO POLO, invalid. The decision was issued in default, a result of the proprietor failing to file a defence. Importantly, correspondence from the UKIPO should have been sent to the proprietor’s address for service. However, as an address for service had not been provided the UKIPO sent correspondence to the proprietor’s registered office address in Australia.

The trade mark rules 2008

• An address for service must be in the UK, Gibraltar or the Channel Islands.
• For the purpose of proceedings (including registration) an address for service shall be filed by: (a) the applicant for the registration of a mark, (b) any person who opposes a mark, (c) any person who applies for revocation or a declaration of invalidity or rectification, (d) the proprietor of the registered trade mark who opposes such an application.
• Where a person fails to file an address for service, and the UKIPO has sufficient information to contact them, the UKIPO must direct that person to file an address for service within one month.
• If after one month the person fails to provide an address for service, that person will be deemed withdrawn from proceedings.

Examination of the international registration

When MARCO POLO was applied for the proprietor did not provide an address for service. Nevertheless, the UKIPO sent an email via the World Intellectual Property Organization (WIPO) to the proprietor’s representatives confirming it had been registered.

The fact that MARCO POLO was accepted without an address for service was contrary to the Trade Mark Rules. The UKIPO should have contacted the proprietor requesting an address for service, and refused the application had one not been provided. One consequence of this decision may be that the UKIPO becomes stricter in requesting an address for service before accepting international registrations.

Invalidity application

An invalidity application (TM26(I)) was later filed against MARCO POLO. The Trade Mark Rules require the UKIPO to send a copy of the TM26(I) to the proprietor. However, as an address for service had not been provided, the UKIPO sent correspondence and a copy of the TM26(I) to the proprietor’s registered office address in Australia.

Geoffrey Hobbs KC held that the UKIPO should have adopted a procedure for notification that catered for two outcomes:

1. Compliance by the proprietor to provide address for service, thereby putting in place an address to which the TM26(I) could be sent.
   
2. Failure by the proprietor to provide an address for service, thereby leaving in place proceedings for a declaration of invalidity with respect to which the proprietor would be deemed to have withdrawn from the proceedings.

The letter sent to the proprietor was not framed in adequate terms to achieve either result. Hobbs stated that there is room under the Trade Mark Rules for the UKIPO to send a letter:

• Informing the proprietor of a registered trade mark of the invalidity application, and;
  
• Directing the proprietor to notify the UKIPO in writing whether the invalidity application is opposed, and, if so;
  
• Directing the proprietor to provide an address for service for the purposes of the further conduct of the invalidity proceedings, and;
  
• Comprehensively specifying the consequences of failure to comply with the directions.

Decision

The appellate tribunal held that the invalidity application had not initially been validly served. On this basis the appeal was allowed and the first instance decision and invalidity order set aside.

The applicant’s claim for invalidity was remitted to the UKIPO for further processing on the basis that the procedural irregularity, with regard to service, was rectified at a later date when the notification was sent to the proprietor’s, later provided, address for service.

Comment

The decision suggests that the UKIPO’s notification process, relating to international registrations where an address for service is not provided, does not comply with the UKIPO’s own procedural rules.

The UKIPO has suspended all actions against UK designations of international registrations whilst it considers the implications of this appeal. The UKIPO is likely to evaluate how parties have been notified of proceedings, and whether that was effected correctly. If formalities have not been completed correctly it is likely, or at least possible, that parties will be permitted more time to file a response to proceedings if they wish to do so.

It is apparent that there is real merit and urgency in listing a UK firm as representative against international registrations designating the UK. To avoid any potential loss of rights, when filing an international registration designating the UK, or filing for a mark from abroad, we recommend listing a UK firm from the outset.