Effective Service outside of the UK

30th January 2023

The Intellectual Property Office (IPO) has recently issued “Tribunal Practice Notice 2/2023: Effective service in proceedings against trade marks and registered designs without a valid UK address for service.” This Practice Notice fundamentally changes the practice of the UKIPO effective immediately in respect of non-UK based holders of trade mark and design rights.

The Current Practice

Currently, the IPO issues documents to applicants or proprietors via delivery to non-UK addresses in the event of inter partes trade mark invalidation, revocation, rectification and opposition proceedings, and registered design invalidation proceedings.

Basis for Change

Following the decision of Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22), the current practice is being discontinued. Effectively, it was determined by the Appointed Person that the Registrar has no power to serve outside of jurisdiction. Therefore, the proceedings could not continue. Valid service must be done to a UK service for address in order for the party to respond to the action.

Put simply, an address for service in the UK is needed for certain IP disputes, which we look at in more detail below. Our advice is to immediately appoint UK representatives for all UK marks, to avoid the risk of missing crucial correspondence and therefore the ability to defend proceedings.

What's Changing?

With immediate effect (i.e. from 25 January 2023), the Registrar will now seek to obtain a UK address for service before any formal serving of documents. This includes proceedings which have been suspended prior to the decision in Tradeix, but will resume after the above in-bold date. This change particularly affects registrations and applications obtained or made via the International (Madrid Protocol and Hague Agreement) routes, i.e. international parties outside of the UK.

The new practice, however, will have no effect upon ex parte proceedings, i.e. those that do not involve another party. When an IR (UK designation) is received from the World Intellectual Property Organization (WIPO), it will be examined as normal, and only where the objections are raised will the IPO request a UK address for service.

There will be different approaches depending on whether the proceedings involve a registered right or an application for registration.

  • 1) If the dispute centres around a registered right (i.e. invalidation, revocation or rectification), whether a direct UK mark, a cloned EU mark or an IR designation:
    • a) the caseworker will examine the pleadings and check the challenged registration holds a valid UK address for service. If not, a preliminary letter will be sent to the representative of the holder of the right, or the holder themselves, if no representative is found. The letter will ask that, within one month, the holder provides a valid UK address for service along with confirmation that it intends to challenge the action.
    • b) The letter will stipulate the consequences for failing to comply with the request, such as not opposing the application for opposition, registration of the mark / design declared invalid or revoked, or not objecting to the correction of an error / omission. The letter will also include an email address that the holder can use to inform the IPO of a UK address for service, although the holder can choose to post its response.
    • c) If the holder complies with the request, the application form will be served in the normal manner to the UK address for service, and the two-month period for filing the TM8 will begin. If the holder confirms an intention to defend but does not provide a UK address for service, a second letter will be sent asking for a UK address for service in a one-month period. Failure to do so is deemed a failure to comply with the request.
    • d) If the holder does not comply with the request, the consequences will be as set out in the letter. A further letter will be sent to the holder of the IPO’s intention, giving a period to reply and the option for a hearing. If no response, the application will be deemed undefended.
  • 2) If the dispute centres around an IR application for UK designation:
    • a) The IPO will issue a notice of provisional refusal based on an opposition to WIPO, which will constitute effective service of the opposition. The IPO will continue its practice of issuing a letter to the IR (UK) holder via its non-UK address for service. This letter will inform the holder that a counterstatement is required within the two-month period, and confirm that a UK address for service is needed for the holder to engage in the opposition beyond filing form TM8 and counterstatement.
    • b) At this point, the holder only needs to file form TM8 and counterstatement. It may choose to accompany that form with form TM33 recording a valid UK address for service, but need not do so. Form TM8 is sufficient notice to the Registrar that the holder intends to defend the challenge. Failure to submit a completed form TM8 and counterstatement will result in the application being treated as abandoned. A confirmatory letter will be sent to WIPO for onward transmission, with a fourteen-day period for reply.
    • c) Where form TM33 is filed alongside form TM8, then the proceedings will proceed as normal. Failure to file form TM33 at the same time will lead the IPO to issue a further letter requesting a valid UK address for service within the one-month period. Failure to do so will lead to the application being withdrawn, and a notice of final refusal will be sent to WIPO.

Practical Considerations

Primarily, any party must consider whether you have already provided a UK address for service for your current registrations. If not, you will need to determine where that address could be, either a company address if you have a UK presence, or appoint representatives for your UK marks who are UK-based.

It is strongly suggested that this is done as soon as possible, as the IPO’s practice has changed with immediate effect. If you require time to seek estimates from UK-based representatives, then you must protect your position and inform the IPO, in response to notice of an opposition / revocation / rectification action, that you intend to defend the application. Be mindful of the strict one-month timeframe in which to provide a UK address for service to the IPO.

Fortunately, the IPO has allowed for your UK address for service to be communicated by way of email. For non-UK parties considering applying for a trade mark under an international regime, you must think about whether to instruct UK-based representatives at the start, to prevent any correspondence slipping through the net. Additionally, holders of rights should ensure that their contact information, and the contact information of their representatives, is kept up to date with WIPO.

Blake Morgan offer full-service trade mark management and protection, and has significant experience in all aspects of UKIPO procedure, including application for registration, either directly or via WIPO, oppositions, cancellation and rectification actions. We would be happy to discuss your needs. More information can be found here.

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