The recent Marco Polo case has some pretty mitigating circumstances but the result could allow many cases without such mitigating circumstance to be brought back from the brink.
In the case (here) my partner, Kirsten Gilbert, and I pleaded that owing to various circumstances outside of the control of the proprietor and the current practice of the UKIPO dealing with UK address for service for International Registrations designating the UK, that it was not in a position to defend an invalidation action filed against it. In brief summary, the proprietor was served invalidation papers by the UKIPO to its registered Australian address, which happened to be the proprietor’s accountant’s address whose physical offices were closed due to a government lockdown for the duration of the proceedings. In light of this, no defence was filed and the proprietor’s registration was cancelled pending appeal.
It is clear that these circumstances would warrant an appeal but the decision looks at the actual practice of the UKIPO sending physical post to proprietors, who are not represented by a representative with a UK address, more generally. The scale of the issue was highlighted by Rob Reading of Clarivate who posted on Linked in (here) that “There are currently 164,788 active IR records that designate the UK. Over 90% of these (nearly 146,000 records) DO NOT have a UK address for service at the UKIPO”. The issue is therefore very wide spread with proprietors losing rights seemingly without their knowledge.
The UKIPO are seeking external legal advice on how to deal with these implications so the solution is still unknown. So where does this leave the possible 146,000 proprietors, the thousands of owners of UK “cloned” trade marks, the many now pending proceedings and those who have already lost rights or missed opportunities to object to newly filed applications? We simply do not yet know.
On 31 December 2023, there will be a requirement for the majority of actions before the UKIPO to require a representative with a UK address for service, which will affect the 146,000 cases listed above and thousands of the cloned UK Trade mark rights with representatives without a UK address. Additionally, there is momentum behind a push for requirements to go further whereby merely having an address in the UK would not suffice and that the representative will require suitable UK qualification as well. Although this latter requirement is not a guarantee, the future looks to be moving in this direction.
With these three factors playing out together, we see real benefit in appointing UK qualified representatives sooner rather than later, for the following reasons:
- No confusion, delay or missing of important communications from the UKIPO such as invalidation papers or notification of newly filed, and possibly conflicting, applications;
- The provision of appropriate and qualified advice;
- No need to play catch up when the UKIPO issue new practices, guides and requirements;
- Avoiding delays in the processing of applications to appoint representatives in the run up to the December 2023 deadline for the owners of all UK TM registrations to appoint UK representatives.