The UKIPO’s Tribunal Practice Notice (2/2023), published on 25 January 2023, set out a change in practice regarding the requirement for a UK address for service. The change in practice affects future proceedings as well as any proceedings suspended following the MARCO POLO decision.

The notice will affect international registrations for trade marks and designs that designate the UK where the World IP Organization (WIPO) representative is based outside the UK. Moreover, it will affect some UK comparable trade marks and re-registered designs, further information on which can be found in our previous article regarding a UK address for service being required from 01 January 2024.

There is real merit and urgency in listing a UK firm as representative against UK trade mark and design rights that do not currently have a UK address for service. To avoid any potential loss of rights, D Young & Co LLP strongly recommend listing a UK firm against the UK designation from the outset.

If you would like any further information on how we can assist, please contact us.

The new practice

The new practice impacts inter partes proceedings. The practice differs depending on whether the action is:

1. Invalidation, revocation and rectification proceedings against trade marks and invalidation proceedings against design registrations whether the right is a national registration or an international registration designating the UK; or
2. Trade mark opposition proceedings against an international registration designating the UK.

1. Invalidation, revocation and rectification proceedings against trade marks and invalidation proceedings against designs without a valid UK address for service

• On receipt of application to invalidate, revoke or rectify a trade mark or invalidate a design registration without a UK address for service, the UKIPO will direct the registered proprietor to provide a UK address for service within one month.
• The request will be sent by post. In light of recent overseas mailing delays, this may leave little or no time for the registered proprietor to respond.
• Failure to provide a UK address for service may be construed as the registered proprietor not opposing the application and so may result in the registration being declared invalid, revoked or rectified.

2. Trade mark oppositions against international registrations designating the UK without a valid UK address for service

• On receipt of a notice of opposition against an international registration designating the UK, WIPO will communicate the notice of provisional refusal to the holder.
• This transmission by WIPO constitutes effective service of the opposition.
• At the same time, the UKIPO will direct the holder, using the (non-UK) address, to provide a TM8 and counterstatement within two months as well as a valid UK address for service.
• At this point, the holder need only submit a completed TM8 and counterstatement within the two-month reply period.
• If the holder fails to provide a UK address for service, the UKIPO will issue a second direction by post and email, and ask that a valid UK address for service be provided within one month.
• Failure to provide a UK address for service within one month will result in the UK designation being deemed withdrawn.

Questions & answers

What is a valid UK address for service?

A valid AFS must be in the UK, Gibraltar or the Channel Islands.

What is the deadline to name a UK address for service?

Where the UKIPO directs a holder to file an address for service, the holder will have one month beginning with the date of the direction to so.

Failure to provide a UK address for service may be construed as the holder not opposing the application and so may result in a registration being declared invalid, revoked or rectified or an application for an international registration being treated as withdrawn.

I have ongoing proceedings that were suspended following the MARCO POLO decision, what will happen now?

In relation to ongoing proceedings suspended following the MARCO POLO decision, the UKIPO will be looking at these actions shortly, in accordance with the Tribunal Practice Notice, with a view to recommencing proceedings from around March 2023.

What is your recommendation?

There is real merit and arguably an urgency in listing a UK firm as representative against UK trade mark and design rights that do not currently have a UK address for service. Moreover, it is important to ensure that all recorded addresses are up to date. To avoid any potential loss of rights, D Young & Co LLP strongly recommends listing a UK firm against the UK designation from the outset.

If you would like any further information on how we can assist, please contact us.