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Legal 500, 2022

UKIPO announces changes to address for service requirements

On 25 January 2023, the UK Intellectual Property Office (‘UKIPO’) published a practice notice introducing changes to its practice relating to the service of documents in inter partes proceedings.

As a result of the changes, applicants and proprietors of challenged UK trade marks and designs must now have an address for service in the UK, Gibraltar or the Channel Islands (‘UK AFS’) before the Registry will formally serve any documents.

Failure to appoint a UK AFS within the time allowed could result in pending applications being deemed to have been withdrawn or existing registrations being declared invalid, revoked or rectified. Accordingly, right-holders need to be aware that there could be serious implications for their trade marks and designs if the UK AFS requirements are not met.

What types of proceedings are affected?

The changes introduced at the end of last month affect UK trade mark opposition, invalidation, revocation and rectification proceedings, as well as UK registered design invalidation proceedings.

Since January 2021, it has been necessary for a UK AFS to be provided for all new UK trade mark or design applications filed directly at the UKIPO. For the most part therefore, rights that do not have a UK AFS are likely to have been obtained via the international filing route – under the Madrid Protocol in the case of trade marks, or the Hague Agreement in the case of registered designs.

Proceedings against International Registrations which designate the UK will form the bulk of those affected by the changes.

What was the existing practice and why the change?

Prior to the changes coming into force, the UKIPO deemed documents to have been effectively served in inter partes proceedings if they were sent to an address anywhere in the world.

This practice has now been reviewed in light of a decision of the Appointed Person in which delivery of an official letter to a registered office address in Melbourne, Australia was held not to constitute valid service.

What has changed?

Going forwards, when an opposition is filed against a pending UK designation of an International Registration, or an application is filed for invalidity, revocation or rectification of a UK trade mark, or invalidity of a UK registered design, the UKIPO will require a UK AFS to be provided before any formal documents relating to the proceedings will be served on the owner of the challenged right.

Failure to appoint a UK AFS within the time allowed will lead to proceedings being deemed undefended, which could ultimately lead to a loss of rights. The changes in practice mean there will be several subtle changes to the deadlines that will be set by the UKIPO once they have conducted their preliminary review of an opposition or application for revocation, invalidity or rectification. It is therefore hugely important that applicants and proprietors understand the changes and what action will be required before each deadline expires.

How can we help?

In order to reduce the risk that official letters could go astray, deadlines might be missed, or rights could be inadvertently lost, we recommend that rights-holders appoint a UK AFS for all UK trade marks and registered designs as soon as is practicable.

If you are concerned that a UK AFS may not have been appointed for some of your UK trade marks or designs, please do not hesitate to contact the Harbottle & Lewis team and we will happy to check your rights and advise.

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