Has the UK IPO been incorrectly applying the address for service rules in relation to International Registrations? Find out what Geoffrey Hobbs QC, sitting as the Appointed Person, thinks and what this might mean for overseas trade mark holders and their attorneys.

The UK IPO has suspended a number of cases while it considers the implications of Geoffrey Hobbs’ decision in O/681/22.

The facts of the case

An invalidity action was filed against a UK designation and the UK IPO sent a notification by registered post to the Australian holder of the International registration.  The notification included a statement requiring the holder to provide an address for service in the UK.  No response was received so the UK IPO sent a further letter by registered post indicating that a default judgement would be entered in the absence of a reply.  Again, no response was received so a decision was issued invalidating the designation and that decision was also sent to the holder by registered post.

It is fairly common to see invalidity (and other inter partes) proceedings against UK designations concluded in this way but the appeal decision casts doubt on the validity of this process.

The decision

In a typically comprehensive and educational judgement, Geoffrey Hobbs KC leads us through the historic and current rules relating to the requirement to provide an address for service and the rules that apply if no UK address for service is provided.

Note that the Australian holder had filed the International application through an Australian trade mark firm and that firm was recorded as the address for service at WIPO.  During the prosecution of the UK designation, the UK IPO sent communications to WIPO who passed them to the Australian firm.  The designation proceeded smoothly to protection and at no point during prosecution did the UK IPO ask the holder or their WIPO representative to provide a UK address for service.

However, notification of the invalidity application was then sent directly to the holder and not to WIPO or to the Australian address for service recorded at WIPO. This is in accordance with standard practice of the UK IPO, which dictates that post-registration communications be sent directly to the holder.

The holder submitted evidence that the first two notifications were not received.  This evidence was not contested and therefore accepted as fact.  However on receipt of the third notification, i.e. the decision, the holder, via their Australian attorneys, took immediate steps to appoint a UK address for service and submitted a defence to the invalidity proceedings.

Hobbs held that as the first two notifications has not been received then the invalidity proceedings had not been properly served and the two month time period for submitting a defence had not started. Moreover, the counterstatement had been promptly filed on receipt of the third notification, and therefore well within a two month period of the holder first becoming aware of the proceedings, and hence the defence should be admitted and the appeal was allowed.

Next steps

The obvious solution for the UK IPO going forwards might be to copy the WIPO address for service on any post-registration communications, as well as notifying the holder, as it is obliged to do in the Rules.   In the evidence submitted by the Australian attorneys recorded as the WIPO address for service, it is stated that they expected they would continue to receive correspondence relation to the UK designation via WIPO and the Appointed Person noted that view was not particularly surprising. However, it is clear from the judgement that copying the WIPO address for service or communicating via WIPO is still insufficient as a UK address for service is needed for proper service.

This issue leads to a procedural problem for the UK IPO – as the UK IPO note in their submissions this could lead to a procedural cul-de-sac because if the holder fails to provide a UK address for service then there is no basis for the proceedings to be served and if they cannot serve the proceedings then the UK IPO may lack the basis for declaring the registration invalid.  A UK address for service could be required as part of the examination of a UK designation, but that would add significantly to the administrative burden on the UK IPO.

It remains to be seen how the UK IPO will resolve this issue but in the meantime overseas trade mark holders should consider appointing a UK address for service in relation to UK designations even if no objections arise during prosecution.  We do not levy a charge for adding cases to our records in these circumstances.

Looking more generally at the International system, it provides significant financial and administrative benefits but it is complicated and the vast majority of applicants use the services of a trade mark attorney to file the initial International application and then to remain as the WIPO address for service after registration.  The small number of countries that have introduced procedural mechanisms that require a locally appointed address for service to avoid important correspondence being sent directly to the holder undermine some of the key benefits of the International system and, whatever the outcome of this issue, we encourage the UK IPO to copy the WIPO address for service on correspondence where there is no UK address for service.

Category: News | Author: Ian Gill | Published: | Read more