Address the risk: Appoint a UK address for service

Owners of all UK trade marks and designs and UK designations of International Registrations should appoint a UK address for service[1] following a change in the UK IPO’s practice, which came into effect on 25 January 2023.

Under the new practice, if a UK right is challenged, the owner or the WIPO representative (for an International Registration) will be set a short window of one month for appointing an address for service in the UK. Crucially, correspondence setting the deadline will be sent by post, so there is a considerable risk that a communication will be delayed or lost when sent overseas. Failure to appoint a UK address by the deadline will result in a loss of the challenged right. Appointing a UK address for service immediately will remove this risk.

Background

In September 2022, we published this article detailing the decision in MARCO POLO (O/681/22), in which the Appointed Person found the UK IPO’s practice for serving post-registration proceedings on trade mark owners outside the UK to be unlawful.

The UK IPO has now issued a Tribunal Practice Notice[2] setting out its new practice in relation to the service of documents outside the UK in trade mark and design proceedings. This new practice takes immediate effect.

To summarise, the key point is that owners of UK rights should always appoint a UK address for service in order to ensure that a monitored, up-to-date UK address for service is recorded in the UK register, lest a physical letter setting a short (and fatal) 1-month deadline is not received and processed in time to defend post-registration proceedings.

Who is Affected?

This development has ramifications for the owners of registered UK trade marks and designs, whether they were applied for directly with the UK IPO or via the WIPO under the provisions of the Madrid Protocol or Hague Agreement, who have not appointed a valid UK address for service[3].

The new practice will not affect rights holders who have already appointed a UK address for service[4].

Post-Registration Proceedings

The key development in the UK IPO’s practice relates to post-registration proceedings concerning trade mark and design rights in respect of which a UK address for service has not been appointed. This practice will apply to revocation, invalidity, and rectification proceedings.

Where a post registration action has been examined and initially accepted by the UK IPO, but the rights holder has not appointed a UK address for service, a letter will be sent to the holder’s overseas address setting a 1-month deadline for (i) appointing a UK address for service and (ii) indicating an intention to defend the proceedings. That deadline will run from the date the letter is posted. The letter will be sent by Royal Mail’s signed-for service, which ‘aims’ to deliver post to Europe within 3 – 5 working days, and to other countries within 5 – 7 days. Notably, this service does not permit delivery to PO boxes or pack stations and could be interrupted by strike action. The ability to track delivery and receipt in the destination country is also limited as it relies on local postal services.

The diagram below sets out the various time periods which will be set, and by what means, following the issue of this initial letter:

Prosecution of UK Designations of International Registrations

The new practice does not materially affect pre-registration proceedings such as the examination of, or oppositions to, UK designations of International Registrations. The UK IPO will not require the appointment of a UK address for service for ex parte proceedings concerning UK designations.

Further, the UK IPO will continue to serve opposition proceedings (and issue a communication requiring filing of a defence within 2 months) via the WIPO, with a copy of the letter also posted to the holder’s address. A holder who has filed a defence without appointing a UK address for service will be invited by a letter posted to its overseas address to appoint a UK address for service within 1 month. Failure to do so will lead to a loss by default at first instance.

Key Action Points

The key action points remain as set out in our September article: owners of registered UK trade mark and design rights (including those with an EEA address for service which is valid until 1 January 2024 under the terms of the Withdrawal Agreement) are strongly advised to appoint a valid UK address for service as a priority, to avoid the risk that a future letter setting a 1-month deadline for appointing a UK address for service is not received and processed in time to avoid an irretrievable loss of rights.

Please contact the CMS trade mark team if you require further advice or would like CMS to act as address for service for any trade marks or designs.

[1] An address in the UK, Gibraltar or the Channel Islands, or in very limited circumstances, an address in the EEA – see Rule 11(4) of the Trade Mark Rules 2008 and Rule 42(4) of the Registered Designs Rules 2006, as amended by The Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020.

[2] Tribunal Practice Notice 2/2023: Effective service in proceedings against trade marks and registered designs without a valid UK address for service (https://www.gov.uk/government/publications/tribunal-practice-notice-22023-effective-service-in-proceedings-against-trade-marks-and-registered-designs-without-a-valid-uk-address-for-service).

[3] A time-limited exception applies to owners of comparable UK trade mark registrations created on 1 January 2021 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, at which point the new practice for registered rights without a UK address for service will apply.

[4] N.b. a UK address for service can be appointed either by the rights owner giving a UK address as its own address, or by appointing a legal representative who has a UK address.