UK IPO Changes Practice Regarding Address for Service Following ‘MARCO POLO’ Case
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UK IPO Changes Practice Regarding Address for Service Following ‘MARCO POLO’ Case

Summary

Owners of certain IP rights in the UK will now be required to record a UK-based address for service at the UKIPO in order to defend a challenge to those rights.

The UK IPO has published new guidelines detailing the procedure it will follow when directing owners to record such an address against their rights, and the consequences for not complying with such a direction.

Owners of UK IP rights with no UK-based address for service (predominantly holders of International Registrations designating the UK) are advised to record such an address. For assistance and further information in this regard, please ask your usual contact at J A Kemp.

Following the Appointed Person’s decision in Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/122, or the ‘Marco Polo’ case, discussed in our briefing here), the UK IPO has published a new Tribunal Practice Notice (TPN 02/2023, linked here). This details changes to the circumstances in which the IPO will require a UK address for service to be recorded for UK IP rights (where one is not already recorded) and the nature of the directions it will issue.

The changes will have the most noticeable impact for holders of international trade mark registrations (“IRs”) designating the UK. In the Marco Polo decision, the Appointed Person identified irregularities in the previous system for notifying holders of IRs designating the UK of a challenge to their rights. However, other IP rights (namely designs filed via the Hague system) where a UK address for service has not been recorded are also affected.

There are two scenarios in which the new practice will come into effect. These are:

  1. Invalidation, revocation or rectification of trade mark registrations; invalidation of registered designs.

The TPN sets out the process for notifying the owner of the challenged registration that they must appoint a UK address for service (and confirm their intention to defend the action). The time limit to do so is one month, following which the documents associated with the challenge to this registration will be formally served on the owner.

This direction will be sent by post to the owner’s non-UK recorded representative (if such details are known to WIPO) or the owner’s own address. It will set out a time period for appointing an address for service, and make clear the means by which one can be appointed and the consequences of failure to comply, also detailed in the TPN.

  1. Oppositions to IRs designating the UK.

Where an IR is opposed, the IPO will now notify both WIPO (as is required by the Madrid Agreement) and the holder of the IR (via their non-UK representative, if known) that their application to designate the UK IPO has been opposed. WIPO will also subsequently notify the holder of the IR in a separate communication (as it does now).

The notification will direct the owner of the IR to file a defence against the opposition within two months of the date it was notified of the opposition by WIPO. A UK address for service may be appointed at the same time. If the owner does not appoint a UK address for service when filing a defence, the owner will subsequently be directed to appoint one if it wishes to engage further with the opposition. Failure to comply with either direction will result in the application being treated as abandoned.

The new practice is to be implemented immediately and the procedures it creates will be followed in all proceedings currently suspended pending the IPO’s review of the Marco Polo decision. The suspension of these proceedings will most likely end in the coming weeks.

It should be noted that holders of IRs designating the UK will not need to appoint a UK address for service unless the Office raises an objection to the application which requires a response or the designation is opposed or otherwise attacked by a third party. However, it may still be advisable to appoint a UK attorney to act as address for service, so that any relevant correspondence regarding the IP right is received and reviewed by a qualified professional in the first instance.

Please contact your usual J A Kemp attorney if you have any questions regarding the implications of these changes for your current practice, or would like assistance with recording a UK address for service for UK IP rights.