Trade marks and designs: UK address for service essential

All owners of UK trade marks and designs should be now appointing a UK representative to take any steps in relation to those rights.

Until recently, there was a slight loophole in relation to international applications and registrations designating the UK. However, this has now been closed following a recent change in practice at the UK Intellectual Property Office (UK IPO) taking effect on 25 January 2023.

Following the Appointed Person's decision in MARCO POLO (O/681/22), where the UK IPO was found to have incorrectly served documents outside the jurisdiction, the UK IPO have issued Tribunal Practice Note (TPN) 2/2023 to explain that a UK address of service will now be required to respond to proceedings originating from an international application or registration designating the UK. 

For further information, please see the TPN here.

In brief, the TPN sets out a change in practice regarding international applications and registrations that do not hold a valid address for service in the UK. With immediate effect, the UK IPO now seeks to obtain a UK address for service.  The effect of this is as follows:

• Post registration proceedings such as invalidation and revocation actions - on receipt of an application for invalidation or revocation, where a UK address for service is not recorded, the UK IPO will give the holder one month to appoint a UK address for service and confirm its intention to oppose the application for invalidation/revocation.

• Oppositions – once in receipt of an opposition, the UK IPO will provide a two month deadline for the holder to file a defence to the opposition and appoint an agent with a UK address for service.

We strongly advise right holders to appoint a UK address for service as soon as possible. Failure to do so runs the risk that a letter from the UK IPO is not received and a deadline is missed, which could lead to a trade mark or design right being refused/cancelled.

To avoid any issues in the future, we are prepared to appoint ourselves as address for service for you and your clients' trade marks and design rights at no charge.  This will protect your position and those of your clients.  

If you require any assistance with this, please contact Charlene Nelson, Senior Associate (Chartered Trade Mark Attorney).