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Why your International trade marks and designs designating the UK are at risk if you do not appoint a UK address for service
Home / News & Events / Why your International trade marks and designs designating the UK are at risk if you do not appoint a UK address for service
The UK IPO has just announced a change in its practice on the service of inter partes proceedings. This change affects parties who do not have a UK address for service, and is likely to be most relevant in relation to International applications that designate the UK.
This update comprises a summary of the most important points of the UK IPO Tribunal Practice Note 2/2023 and follows up on my recent article relating to the decision of Geoffrey Hobbs KC in the Marco Polo case. The change in practice does not impact ex parte proceedings.
Does this impact you?
You are impacted if you are based outside the UK and you are:
an attorney who files International trade marks or registered designs designating the UK on behalf of clients; or
a private applicant based outside the UK who files such applications.
What proceedings will this impact?
You can obtain protection in the UK via the International route without appointing a UK address for service provided your application does not receive any objections or oppositions. However, if that designation is challenged after protection is granted then the following new procedure applies:
A letter will be posted to the holder or their WIPO representative setting a one month term to appoint a UK address for service;
Failure to comply will lead to a further letter declaring the right invalid or revoked, and setting a 14 day term to request a hearing.
This correspondence will be sent via recorded post.
In contrast, if the designation is opposed during the application process, the UK IPO will continue to notify WIPO that an opposition has been filed and also notify the holder, setting a two month period for the holder to submit a defence. A UK address for service can be appointed later – this is not needed in order to submit the defence but specialist advice from a UK attorney is recommended when drafting the defence. If no defence is filed a further letter will issue setting a 14 day term to request a hearing, but that further letter will be sent to the holder, not to WIPO.
What is a valid UK address for service?
The address must be in the UK, Gibraltar or the Channel Islands.
What is getting worse for you?
Whilst there is no significant change in relation to opposition proceedings, for post-grant challenges you now only get one month from the date of the letter notifying you of the proceedings to appoint a UK address for service, not two months. As the letter will be sent by post, the amount of time you actually have to respond may be much less than a month by the time it is received.
What is getting better for you?
For post-grant challenges the UK IPO will send the communication to the WIPO address for service, where there is one – previously the correspondence was sent directly to the holder even if the UK IPO knew there was a WIPO address for service. This may help to ensure that deadlines are docketed and acted on promptly.
It is a positive step that the UK IPO will take note of a WIPO address for service when sending the initial notification of a post-grant challenge, but the short periods for response, and the consequences of any correspondence being lost or mishandled suggest that you should consider appointing a UK address for service for all UK designations.
AA Thornton will not charge to appoint ourselves as your address for service. Please contact myself or my colleagues at firstname.lastname@example.org to discuss how we can help with this issue for existing designations or new designations.
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