Thu 2nd Feb 2023
New UK IPO requirements for UK address for service for trade marks and design rights
Services: Brand and trade mark audit, Brand protection, Brand watching service, Design rights, IP audit, IP litigation and disputes, Objecting to and opposing a UK trade mark application, Objections to WIPO Madrid Protocol applications designating the UK, Trade mark renewal, Trade marks
Sectors: Brand owners
On 25 January 2023, the UK IPO announced new procedures which provide clarity about the requirements for UK representation and a UK address for service for trade mark and design matters, post Brexit.
This follows a recent decision in the case of Tradeix Ltd v New Holland Ventures Pty Ltd (Decision O/681/22).
What UK IPO proceedings are affected?
The change applies to proceedings regarding UK design invalidity and UK trade marks and WIPO UK trademark designations for:
- opposition; and
Previously, on receipt of proceedings filed against a registration or application, the UK IPO would send papers to the representative or owner, even if there was no valid UK address for service. This was seen as valid, effective service.
With immediate effect, the UK IPO will no longer serve documents to non-UK addresses, and it will seek a UK address for service before formally serving any documents.
New procedures for invalidity, revocation, and rectification
If one of the above actions is filed against a trade mark or design registration and there is no UK address for service, the UK IPO will contact the WIPO representative or registered proprietor, and give one month for a valid UK address for service to be provided. This will be sent by Royal Mail Signed-For post using the contact details available to the UK IPO. Where an overseas representative is available, these details will be used rather than the owner’s address. Special attention should be paid to UK registered designs obtained via the Hague system, as the representative will often be overseas in such cases.
If no UK address for service is then provided, the UK IPO will write again, saying that it will assume that there is no intention to defend and there will be the opportunity to request a hearing within 14 days. When that period has elapsed without appeal, the trade mark or design registration will be declared invalid, revoked or rectified.
If a valid UK address for service is provided within the one month period, the proceedings will then be sent to the new valid UK address for service and the proceedings will continue as usual, with the filing of a Defence within two months from the date of effective service.
New procedures for trademark oppositions to WIPO UK Madrid designations
The UK IPO will write to WIPO who will then send the opposition to the holder of the registration. The transmission by WIPO counts as effective service and triggers the two month period for filing a Defence.
The UK IPO will also send a letter to the holder or its WIPO representative , duplicating the information provided by the WIPO, and confirming that a Defence must be filed within the two month deadline. It will also confirm that a UK address for service is needed, if the matter is to be progressed beyond the filing of the Defence.
Failure to file a Defence means that the application will be treated as abandoned.
If an opposed applicant of a WIPO UK files a Defence, but no address for service, this is sufficient notice to the UK IPO that the holder intends to defend the challenge. The UK IPO will then give the holder one month to appoint a valid UK address or the application may be treated as withdrawn.
Filing new UK applications
A UK address for service is needed to file a UK national application.
A UK address for service is not needed to designate the UK under a WIPO registration. However, a UK address for service is needed to respond to a UK IPO objection to a WIPO UK designation.
Oppositions and invalidity actions filed by you against UK applications and WIPO UK designations of others
A UK address for service is needed.
Invalidity and revocation actions against comparable UK trade marks derived from EU trade marks
If proceedings began before 1 January 2024, service can be effected via an address for service in the EU, using data added to the UK IPO system at the time of Brexit.
UK trademark registrations
Having a UK address for service on a registered trade mark, even if it is not the subject of proceedings has advantages. For example, it means prompt notification to a UK address by the UK IPO of later similar applications filed by others, that trade mark owners may be interested in opposing. It demonstrates that the trade mark owner is interested in the UK and is more likely to defend and assert its rights against later applications, when its rights are listed in UK examination reports. It reduces the risk of communications from the UK IPO being lost. It also eases the speedy recordal of transfers, changes of name and security interests.
How we can help
In light of the new procedures, we strongly recommend that trademark owners outside the UK designate a UK address for service for all UK trade mark registrations.
If you would like to discuss any aspect of this procedure, please contact our trade mark team at email@example.com.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in February 2023.