UKIPO's new policy: UK address for service for IRs designating the UK

On 16 November 2022, we blogged about the UKIPO reviewing its practice regarding addresses for service for International Registrations designating the UK.

As anticipated, a new policy has since been implemented. On 25 January 2023, the UKIPO published its note setting out its change in practice. The Registrar will now seek to obtain an address for service in the UK (UK, Gibraltar or Channel Islands) before formally serving documents.

There are some procedural differences between (a) invalidation, revocation and rectification actions and (b) trade mark opposition actions against International Registrations designating the UK. This is because, for the former, service is effected by the UKIPO and for the latter, service is effected by WIPO.

Invalidation, revocation and rectification actions

For invalidation, revocation and rectification actions where a UK address for service has not been provided in the application form, the caseworker will issue a letter giving the holder one month to provide a valid UK address for service (and confirmation that the action will be defended). Failure to comply may result in the Registrar (i) treating the holder as not opposing the application, (ii) the mark being declared invalid or revoked or (iii) treating the holder as not objecting to the correction.

Where the holder complies with the directions by providing a valid UK address for service within the one-month period, the UKIPO will serve the invalidation, revocation or rectification application form in the normal manner. Where a notice of defence is required join the proceedings, the two-month period for filing this starts from the date of effective service.

Trade mark oppositions against IRs designating the UK

Where an IR designating the UK is opposed, the UKIPO will notify WIPO and the IR holder. The owner will then have two months to file a notice of defence against the opposition - it may record a UK address for service at this point but it is not mandatory at this stage.

Where a notice of defence is filed without recording a UK address for service, the UKIPO will issue direction requiring a UK address for service to be recorded within one month and failure to do so will result in the application being withdrawn. It should be noted that UK addresses for service are not mandatory for holders of IRs designating the UK, unless and until the IR is objected or opposed. However, we recommended that a UK address for service is recorded in any case, to ensure all correspondence is properly received.

This will apply to contentious proceedings, including those that had been suspended following the MARCO POLO decision.

With thanks to Tash Brown for co-authoring this article.