The UKIPO, through its Tribunal Practice Notice 2/23, has published a change in practice for the formal service of inter partes proceedings against trademarks and designs without a valid UK address for service. This change will therefore particularly affect registrations where the right holder or WIPO representative is based outside of the UK.
Failing to provide a UK address for service may result in an action against a right succeeding by default.
This new practice applies to both registered trademarks and designs, and those still pending. For some rights this comes into force straight away, and for others from 1 January 2024 – as discussed below.
An address for service, as outlined in the UKIPO guidance is, “an address that [one uses] to correspond with the UK Intellectual Property Office (IPO) and also for the purposes of proceedings under IP legislation.” It can be the address of the right holder or the address of an attorney/representative. For many registrations this is may be a non UK address.
Previous practice saw the UKIPO issuing documents to the holders of a right via delivery to the holder's non-UK address (constituting effective service). However, it was determined, during the recent Marco Polo case, that the UKIPO had no power to serve documents outside of the UK. Therefore there first had to be a UK address for service for the challenged right for service to be effective.
The New Practice
The new practice follows on from this outcome and seeks to obtain a UK address for service prior to continuation of inter partes proceedings for rights where one is missing.
It takes two distinct approaches to do this depending on the nature of the action brought forward.
Invalidation, revocation and rectification proceedings where there is no UK address for service
Invalidity and revocation proceedings against comparable rights
The new practice means that only representatives with an address in the UK (which includes the Isle of Man, Gibraltar, and the Channel Islands) are entitled to act on behalf of applicants at the UKIPO. However, there is an exception for comparable trade marks (as set out in Tribunal Practice Notice 2/2020). If an invalidity/revocation action is made against a comparable trade mark (a cloned EUTM created at the end of the Brexit transition period) with an EU address for service, and the proceedings began before 1 January 2024, the new practice set out above will not apply. For such proceedings, it will be possible to use an EEA (European Economic Area) address.
Owners of comparable rights will need to provide an address for service in the UK, Gibraltar or the Channel Islands as of
1 January 2024.
Opposition proceedings against a UK designated international registration
In relation to opposition proceedings against International registrations (designating the UK), on receipt of a notice of opposition, WIPO will communicate the notice of provisional refusal to the IR holder. This transmission by WIPO constitutes effective service, and so the holder at this stage, does not have to provide a valid UK address for service.
The UKIPO will continue its current practice of issuing a letter to the IR holder using the address details held in the WIPO record. This letter will direct the holder to submit a Form TM8 and counterstatement within 2 months, and provide a valid UK address for service to defend the opposition. If the holder submits the Form TM8/counterstatement but fails to provide a UK address for service, the UKIPO will send a letter via post and email to the addresses provided by WIPO requesting that a valid UK address for service be provided within one month. Failure to provide a valid UK address for service will result in the application being treated as abandoned and the UK designation being withdrawn.
Meissner Bolte UK welcomes queries on any of the above.