31 January 2023

Following a change of practice, which came into effect on 25 January 2023, holders of UK rights should ensure that they have appointed a valid UK Address for Service (“AFS”) to safeguard their rights in the event of a challenge. Failure to appoint a UK AFS within 1 month of notification by the UK IPO could result in the loss of the right subject to challenge.

Why the change?

In the recent case of MARCO POLO O/681/22, the Appointed Person, Mr Geoffrey Hobbs KC, found that the UK IPO’s practice of posting notification of contentious proceedings to non-UK addresses would not constitute valid service. As a consequence, the UK IPO suspended all trade mark and registered design proceedings potentially affected by the decision.

To resolve this, the UK IPO has issued a Tribunal Practice Notice (TPN 2/2023) detailing its new practice for the service of documents outside the UK in trade mark and registered design proceedings.

What has changed?

Where the owners of UK registered trade mark and design rights do not have a UK AFS and their rights become subject to challenge, the new practice will see a letter sent to the non-UK address on record providing a deadline of 1 month to appoint a UK AFS and confirm if the right will be defended.

A valid UK AFS must be an address in the United Kingdom, Gibraltar or the Channel Islands. An exception applies to owners of comparable UK trade mark registrations created following the UK’s exit from the European Union: for these registrations, an EEA address for service will continue to be valid until 1 January 2024, after this date the new practice for registered rights without a UK address for service will apply.

Ramifications of this change

Now that the Tribunal Practice Notice has been issued, the suspended cases are expected to resume.

If a valid UK AFS is not supplied by rights holders, the UK IPO may declare the challenged right abandoned or invalid.

Who does this effect?

In most cases, registered UK trade mark and design rights which do not have a valid UK AFS are most likely to be UK designations of International Registrations.

Owners of pending UK Designations of IR trade mark applications

The UK IPO does not require a UK AFS for the prosecution of pending International Registrations designating the UK. The UK IPO will only require a valid UK AFS if an objection is raised on examination.

If an opposition is filed against a pending UK designation, the opposition proceedings will be served via WIPO (the World Intellectual Property Organization) alongside a letter sent direct to the UK IR owner. It is not necessary to appoint a UK AFS to file a defence to the opposition. However, a valid UK AFS will be required within 1 month of the defence being filed, to contest the opposition and engage beyond the submission of the initial defence. Failure to file a defence and / or provide a valid UK AFS will result in the UK application being treated as abandoned.

Owners of Registered UK trade marks and designs

This change in practice will likely have the biggest impact on revocation, invalidity, and rectification proceedings issued against UK registered rights.

Where the challenged right does not have a UK AFS, a letter will be sent to the holder’s non-UK address granting a deadline of 1 month (from the date the letter is posted) to:

  • appoint a UK AFS; and
  • indicate whether the holder intends to defend the proceedings.

Where representative details are available, they will be used in preference to the holder’s address.

Failure to respond within the specified time period will result in the UK registration being removed from the register.

Key Takeaways

We strongly recommend that rights holders based outside the UK proactively review their registered UK trade mark and design rights and appoint a valid UK address for service as a priority.

The UK IPO’s use of the postal system to notify rights holders based outside of the UK of contentious proceedings poses a real risk to rights holders who could lose their rights for failure to comply with the requirement to appoint a UK AFS within the specified time period if the notice is not received and processed in time.

This article was written by Amy Salter. If you require assistance in relation to registering or challenging a trade mark or design, or would like any further information, please contact Amy, Emily Roberts or another member of our Intellectual Property team.

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Key contact

Emily Roberts

Emily Roberts Partner

  • Intellectual Property and Media
  • Intellectual Property Disputes
  • Intellectual Property Portfolio Protection

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