Signed, sealed, delivered – new UK address for service rules
The UK IPO has published a new Tribunal Practice Notice setting out new rules for service of inter partes proceedings where there is no UK address on record. With the exception of oppositions filed against UK designations of International Registrations, where WIPO will still effect service, the UK IPO will write to the holder and require that a UK address for service is provided before the deadline to defend the proceedings commences.
UK IPO’s previous practice
As reported previously, following the Appointed Person’s decision in MARCO POLO, the UKIPO suspended pending opposition, cancellation and rectification proceedings relating to all UK trade mark applications without a UK address for service.
Prior to this decision, when a UK trade mark application was under attack and no UK address was listed, the UK IPO’s practice was to send a copy of the action by post to the recorded non-UK address of the holder or its representatives. This was deemed to constitute effective service for the purpose of setting the two month period for the holder to file its defence.
New Tribunal Practice Notice
On 25 January 2023 the UK IPO published a new Tribunal Practice Notice setting out the rules on effective service to non-UK addresses in inter partes proceedings, which is implemented with immediate effect.
Going forward, in most cases the UK IPO will give the holder an opportunity to provide a UK address before any formal service of documents (and therefore before the period for filing the defence commences). This is the case for trade mark invalidation, revocation and rectification proceedings, as well as registered design invalidation proceedings.
However where the action is an opposition filed against a UK designation of an International Registration (“IR”), notification of the opposition by WIPO still constitutes effective service. In this case the period for filing a defence commences before the holder is required to provide a UK address for service.
As a general note, in cases where non-UK addresses are available for both the holder and its representatives, the UKIPO will always use the representatives’ address in preference to the holder’s address.
Invalidation, revocation and rectification proceedings
On receipt of a third party action, the UK IPO will post a preliminary letter to the holder requiring it to provide a valid UK address for service along with confirmation of its intention to defend the proceedings within one month.
Where the holder provides a valid UK address for service within the one month period, the UKIPO will then serve the action on the holder who will be given the normal two month period in which to file its defence.
If the holder responds by confirming its intention to defend the proceedings but does not provide a valid UK address for service, the UK IPO will post a second letter requiring that a valid UK address is provided within a further one month period.
If the holder fails to respond to the UK IPO’s first letter, or confirms its intention to defend the proceedings but then fails to provide a valid UK address for service in response to the UK IPO’s second letter, the UK IPO will write to the holder again confirming its intention to treat the action as undefended.
Opposition relating to a UK designation of an International Registration
The procedure relating to oppositions filed against UK designations of IRs is slightly different, as the UK IPO is required to send initial notification of the opposition to the holder via WIPO. WIPO will then send the grounds of opposition to the holder, and this will constitute effective service of the opposition.
In parallel, the UK IPO will send a duplicate letter to the IR(UK) holder, requiring it to provide its defence within a two month period. The UKIPO will also request that a valid UK address for service is provided, but the holder is not required to provide this within the two month period.
Where the holder responds within the two month period and provides both a defence and a valid UK address for service, the proceedings will continue as normal.
If the holder provides a defence but no valid UK address for service, the UK IPO will write to the holder and require it to provide a valid UK address for services within one month. Where no address is provided within this period, the UK IPO will issue WIPO with a notice of final refusal.
Regardless of whether a valid UK address for service is provided, if a defence is not filed within the initial two month period, the application will be treated as abandoned.
Deficiencies in the application for opposition, cancellation or rectification
Where the UK IPO identifies deficiencies in the application form, the UK IPO will provide the holder with a copy, posted to the non-UK address. This letter will refer to the absence of a valid UK address for service and will confirm that this will be required if/when the proceedings officially commence.
Comparable trade marks
Where the trade mark under attack is a comparable trade mark (derived from an EUTM at the end of the Brexit transition period) and the relevant proceedings are started before 1 January 2024. These new practices will not apply and service will continue to be effected via the relevant address for service of the original EUTM (according to the data inherited by the UK IPO).
Given that the deadline provided for holders to provide a UK address for service is only one month (and that letters sent by post internationally are likely to take some time to arrive), it is all the more important to ensure that all trade marks and designs have UK representatives on record. This will ensure that no communications are missed which can lead to the action being deemed undefended, and that valuable time for preparing the defence or discussing potential settlement is not lost.