International trade marks designating the UK

The UK Intellectual Property Office ("UKIPO") is suspending all opposition and cancellation proceedings where the holder of an international designation has an address for service outside the UK. This is following the Appointed Person's decision in MARCO POLO (O/681/22).

The UKIPO is considering what action to take following this decision. It is likely to issue further guidance shortly, which may include a requirement for a UK-based address for service for all international trade marks designating the UK.

Currently, all trade mark applications, oppositions and cancellation actions filed in the UK require an address for service in the UK, Gibraltar or the Channel Islands, unless those proceedings are based on a cloned UK right from the equivalent EU right.

From 1 January 2024, all new proceedings will require an address for service in the UK, Gibraltar or the Channel Islands.

To date, applicants filing for a UK trade mark via the international system have not been required to provide a UK address for service unless an objection is raised by the UKIPO or a third party files an opposition or cancellation action against the trade mark. The MARCO POLO decision questions this practice.

Decision

New Holland Ventures Pty Ltd, an Australian company, obtained an international trade mark registration designating the UK for MARCO POLO in June 2020.

In May 2021, Tradeix Ltd applied to invalidate the designation. Notification of the invalidation application was posted to the proprietor in Australia setting a two-month deadline for appointing a UK address for service and filing a defence. The proprietor did not receive the communication due to their offices being vacant during the Covid-19 lockdown in Australia.

The proprietor failed to file a defence to the invalidation action and the UKIPO posted a notice of default to the proprietor in August 2021. Again, the proprietor has no record of receiving this communication.

In March 2022, a declaration of invalidity was issued by the UKIPO and forwarded to the World Intellectual Property Organisation ("WIPO") (the body through which you can file an international application) which in turn notified the proprietor's WIPO representative, a firm based in Australia. Following this, the proprietor appointed a UK representative who appealed against the declaration of invalidity on the basis that the proprietor did not have an opportunity to file a defence.

The Appointed Person found that the application for invalidity had not been properly served on the proprietor as the UKIPO, under the Trade Mark Rules 2008 ("Rules"), also needed to write to the Australian address to set a one month deadline asking it to appoint a UK address for service. The Rules did not permit the UKIPO to serve documents outside the UK, such that the notification of the invalidity application posted to Australia did not trigger the statutory two-month deadline for filing a defence.

The default declaration of invalidity was set aside and the invalidity proceedings were remitted for further processing.  

What does this decision mean?

This case highlights the importance of appointing a UK address for service for international designations so that important correspondence is not missed and also because the UKIPO is not permitted to serve documents outside the UK.    

We are awaiting official guidance from the UKIPO on the impact of this decision. However, as set out above, we are noticing that proceedings against UK designations are currently being suspended until further guidance is issued.

We would strongly advise that all owners of UK designations appoint a UK representative for their trade marks as soon as possible. This can be done by filing the relevant form at the UKIPO.

Charlene Nelson, Senior Associate (Chartered Trade Mark Attorney)