As discussed in a previous article, the UKIPO’s common practice regarding the service of documents relating to trade mark invalidation, revocation, rectification and opposition proceedings (where there was no UK address for service) was to notify only the proprietor directly, not the WIPO representative. This led to various issues relating to the non-delivery of documents and ultimately, an internal procedural review by the IPO.
On 25 January 2023, the UKIPO issued a notice with immediate effect to say that the above practice will no longer apply. Instead, the registrar will require a UK address for service (AFS) before any documents are considered formally served.
This change was brought about by the decision in Tradeix Ltd v New Holland Ventures Pty Ltd (O/681/22). It was held that the Registrar has no power to serve outside of the jurisdiction and therefore, they cannot validly effect service without obtaining a valid UK AFS for the challenged right.
The UKIPO will now:
- Send a communication, via official post, to the non-UK address
- Request the applicant or proprietor of the right to confirm whether they intend to defend the proceedings or not
- Ask them to provide a valid UK AFS within 1 month from the date of the communication
The consequences of failing to comply with this guidance could include the registration being declared invalid, revoked, or rectified, or even being treated as withdrawn altogether.
It is imperative that applicants and proprietors who have international rights designating the UK, or who hold comparable UK rights, seek to appoint a UK representative as soon as possible.
