Following a recent Tribunal Practice Notice issued by the UKIPO, Dr. Abigail Welford explains the importance of having a UK-based firm of attorneys to represent the applicants and owners of UK-based rights.
On January 25, 2023 the UK Intellectual Property Office (UKIPO) issued a Tribunal Practice Notice concerning the Registrar’s service of documents in inter partes trade mark invalidation, revocation, rectification and opposition proceedings, and also in registered design invalidation proceedings. Historically, applicants and proprietors of such contested rights have been deemed served with documents via delivery to non-UK addresses, initiating the two-month period for filing a defence. However, following a decision issued in Tradeix Ltd v New Holland Ventures Pty Ltd (O/681/22) the Appointed Person determined that the Registrar did not have the power to serve documents outside of the jurisdiction, consequently documents are not deemed validly served unless they are delivered to a valid UK address for service (AFS) for the challenged right.
With immediate effect from the 25 January 2023, the UKIPO has confirmed that for inter partes trade mark invalidation, revocation, rectification and opposition proceedings, or registered design invalidation proceedings, the Registrar will require a UK address for service. The original UKIPO 25th January 2023 Tribunal Practice Notice can be found here.
When a non-UK AFS is identified, the Registry will issue a communication, by official post, to the non-UK address. The applicant or proprietor will be required to confirm if they intend to defend the proceedings or not and they will be required to provide a valid UK AFS within 1-month of the date of the UKIPO communication.
Failure to provide a UK AFS within the 1-month period may result in the registration being declared invalid, revoked or rectified, or may result in an application being treated as withdrawn.
There is a risk that the UKIPO's communication may not be received at the non-UK address and rights may be affected or lost. The need to revert with a UK AFS also causes timely delays in the service of documents. Therefore, to ensure risks are minimised and to expedite matters before the Tribunal, we strongly recommend that applicants and proprietors of UK-based rights, appoint a UK representative as soon as possible.
If you would like to appoint our firm as a UK AFS, then please contact one of our patent and trade mark attorneys directly at franksco@franksco.com.
