Tribunal Practice Notice 2/2023: Effective service in proceedings against trade marks and registered designs without a valid UK address for service

The United Kingdom Intellectual Property Office (UKIPO) has announced an important Tribunal Practice Notice on 25 January 2023 concerning UK registered trade mark or design holders/representatives without a UK address for service (UK AFS).

This will predominantly affect owners of trade marks and registered designs who have designated the UK through an international registration filed through the World Intellectual Property Organisation (WIPO) and are subject to any opposition and cancellation proceedings. It is effective immediately.

For any inter partes trade mark invalidation, revocation, rectification and opposition proceedings, and registered design invalidation proceedings, the UKIPO will now seek a UK AFS before any formal serving of documents. Any non-UK addresses will not be accepted.

Invalidation, revocation and rectification

In the event of an application for invalidation, revocation, and/or rectification being filed against a UK designation of an international registration, the UKIPO will issue a preliminary letter directing that the affected right holder has one month to appoint a UK AFS, along with its intention to oppose the application for invalidation, revocation and/or rectification.

Failure to act will result in the UKIPO declaring the challenged trade mark or design registration as abandoned or invalid and being removed from the register.

Oppositions

In the event of opposition being filed against a UK designation of an international registration, the UKIPO will issue a notice of provisional refusal based on an opposition to WIPO, who will thereafter forward those grounds to the international registration holder, either applicant or representative.

The UKIPO will also issue a letter informing the applicant or representative, using the non-UK AFS, that there is a two month deadline to file a counterstatement in defence of the opposition and a UK AFS must be appointed.

Where a counterstatement has been provided but a UK AFS was not, the UKIPO will instruct the applicant to provide a UK AFS within one month.

Failure to act will result in the UKIPO treating the application as withdrawn in respect of those goods and services against which the opposition was directed.

Brexit – Filing new trade mark and design applications

From 1 January 2021 any new application for a trade mark or registered design filed at the UKIPO must have a UK AFS. This includes any UK trade mark or registered design applications filed within the first nine months following January 1, 2021, which claim the filing or priority date of an earlier EU trade mark (EUTM) or community design registration.

Brexit – cancellations or oppositions against Brexit clone registrations and comparable rights

Following the UK’s departure from the EU, the creation of existing rights (clone registrations) that are a result of existing EUTM or community design registration do not need a UK AFS. Many of these registrations retain a non-UK AFS.

UK opposition or cancellation proceedings commencing before 31 December 2020 will not be affected by the Tribunal Practice Notice 2/2023. The UKIPO will continue to use the non-UK AFS for the duration of the proceedings.

After 1 January 2024, this exemption will no longer apply, and a UK AFS will be required if the right is subject to any cancellation or opposition proceedings.

Key takeaways

It will only be required to designate a UK-based address for service if the UK designation of an international registration is the subject of an application for invalidation, revocation, rectification or opposition.

The Tribunal Practice Notice has clarified that this approach will only concern inter partes proceedings and has no impact or effect upon ex parte proceedings.

In response to this notice issued by the UKIPO, any non-UK holders of international trade marks or design registrations are strongly advised to appoint a UK-based AFS as soon as possible in order to reduce the possibility that crucial, time sensitive notices from the UKIPO will not be acted upon by the holder and result in the loss of rights. Holders should also ensure that all addresses are up to date.

Mathys & Squire can provide UK representation for international UK designations, and represent clients in trade mark opposition and cancellation, as well as design invalidity proceedings in the UK. The full details of the tribunal practice notice can be found here.