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Following UK trade mark decision, UKIPO reviews UK address for service for IRs designating the UK

Jude Antony
16/11/2022

Locations

United Kingdom

The UKIPO has suspended oppositions and cancellations of International Registrations designating the UK, in circumstances where the challenged designation's address for service is outside the UK. These oppositions and cancellations have been suspended while the UKIPO considers the implications of the decision of the Appointed Person, Geoffrey Hobbs KC in MARCO POLO (O/681/22).

What's the context?

Since the end of the Brexit transition period (1 January 2021), if a trade mark application is made directly to the UKIPO, a UK address for service is required. This is an address for service in either the UK (which for these purposes includes the Isle of Man), Gibraltar or the Channel Islands.

However, the UKIPO will process a WIPO international trade mark registration designating the UK, registered via the Madrid Protocol without requiring a UK service address.

There are certain scenarios in which a UK service address is required:

  1. Where the UKIPO objects to the designation;
  2. Where there is an opposition from a third party;
  3. Where there is a cancellation action. 

Unless it becomes the subject of proceedings, until recently, a UK designation could be registered without a UK-based address for service. This is because filing an "address for service" by the proprietor is optional in accordance with Rule 11(2):

“The proprietor of a registered trade mark, or any person who has registered an interest in a registered trade mark, may file an address for service on Form TM33 or, in the case of an assignment of registered trade mark, on Form TM16.”

Where there is no address for service in the UK, the UKIPO will notify the proprietor only rather than the WIPO representative.

What happened in Marco Polo?

  1. 19 June 2020 - MARCO POLO was registered by New Holland Ventures Pty Ltd as an International Registration designating multiple countries including the UK. There was no requirement for a UK service address for IRs designating the UK and the proprietor address was in Melbourne. New Holland's appointed legal representatives were also based in Australia. The legal representatives did provide their telephone number and email address in the application, with "email" specified as the 'dedicated communication channel'.
  2. 31 December 2020 – The UK designation was granted protection and the Registrar informed WIPO.
  3. 7 January 2021 – The Proprietor's lawyers were informed (via email) that the IR had been granted protection in the UK.
  4. 18 May 2021 - Tradeix Ltd, the proprietor of the earlier mark MARCO POLO (registered with effect from 11 December 2018) filed an invalidity action.  

The Registrar was required by Rule 41(5) of the 2008 rules to send a copy to the proprietor. The proprietor would then have two months to provide a counter-statement, otherwise the registrar could treat the proprietor as having not opposed (and the mark would be declared invalid).

  1. 26 May 2021 – The Registrar sent a copy to the Proprietor by registered post to the registered office address in Melbourne. This was the address recorded in the UK register for the Holder of the UK International Registration. It was not copied to the WIPO representative. The letter was not received by the proprietor due to the Covid-19 lockdowns.

The letter contained a paragraph stating:

The holder of the International Registration must provide us with an address for correspondence in the United Kingdom (which for the purposes of the Act includes the Isle of Man, the Channel Islands and Gibraltar) on a form TM33 ‘Appointment or change of agent or contact address’ … within this two month period.

This paragraph did correctly recognise that the Invalidity Application was being sent by way of service to an address which the Registrar wasn't in a position to treat as an address for service.

  1. 12 August 2021 – The Registrar sent a default notice to the Melbourne address. This notice said that the registration would be declared invalid unless the Proprietor responded within a specified period. Again, Covid-19 lockdowns meant that the letter was not received.  
  2.  29 March 2022 – There was no response from the Proprietor to the official letters and therefore it was declared invalid.

The Proprietor appealed on the basis that the UKIPO had made a decision based on the fact that the Proprietor had "not opposed the invalidity action" without knowing all the facts and circumstances of the case.

The Appointed Person found that the Proprietor’s registered office in Melbourne was not an “address for service” and therefore the Invalidity Application was not validly served by post at that address. The default notice was also not validly served.

This is because the UKIPO does not have authority to serve outside of the jurisdiction. The UKIPO should have written to the Australian address requesting that they appoint a UK-based address for service and then sent the invalidity application to the UK address.

The Declaration of Invalidity was therefore set aside.

What's next?

We anticipate that guidance will be issued and that the UKIPO practice will change. It is possible that new designations will require a UK-based address for service at the examination stage. For now, it is recommended that holders of IRs designating the UK appoint a UK-based address for service to ensure UKIPO correspondence is received.

With special thanks to Trainee Solicitor, Tash Brown, co-author of this article. 

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Areas of Expertise

Intellectual Property