Hot off the press is the long awaited guidance from the UKIPO on service of documents in contentious proceedings upon parties who do not have a UK address for service.
With immediate effect, the UKIPO will now ask for a UK address for service (AFS) if the party in question intends to defend the proceedings. The new AFS must be entered onto the register within one month of the UKIPO’s request, failing which the application or registration will be deemed abandoned subject to any extenuating circumstances and the Registrar’s discretion. What this means in practice is that if you are a trade mark owner whose trade mark has been opposed or challenged, and you have missed the critical deadline to file your defence after the UKIPO served the opposition/cancellation papers on you outside of the UK, fret not as you will be given a further opportunity to remedy this. If, in the future, your UK trade mark application or registration is ever challenged and you intend to defend but do not have a UK AFS, you must ensure that a valid UK correspondence address is entered in a timely fashion.
Being one of his own cases, the background to this was authoritatively covered by Gareth Jenkins in his article entitled Need UK representation? A Marco Polo Journey. Issued today, Tribunal Practice Notice 2/2023 sets out new rules for service of documents in inter-partes proceedings where trade mark applications or registrations having a non-UK address for service must be replaced with a valid UK address. It relates mainly to International trade mark registrations designating the UK, as well as disputes involving registered designs, but will also include cancellation actions brought against comparable UK registrations derived from EU trade marks and designs as part of the Brexit transitional arrangements (assuming of course that a UK AFS has not already been entered against those comparable registrations).
Prior to today’s TPN the Registrar deemed service to non-UK addresses to be effective in triggering the two-month defence deadline; applicants or proprietors often missed this crucial deadline, resulting in a loss of rights. For example, in the case which prompted an appeal to the Appointed Person and the subsequent review of the UKIPO’s own practice (Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22) the UKIPO’s documents were sent to the proprietor’s registered Australian address which was their accountant’s address. However, owing to Covid lockdown measures in Australia, their accountant’s office was closed for the duration of the proceedings. As a result, a defence was not filed and the proprietor’s registration was cancelled. Having considered the matter, the Appointed Person ruled in August that the Registrar does not have any power to serve outside of the jurisdiction, and cannot validly effect service without having first obtained a valid UK AFS for the challenged right.
Late last year many UK practitioners (including myself) were informed by the UKIPO that, because of the Appointed Person’s decision, oppositions, revocations and the like had been suspended whilst the UKIPO reviewed their practice. The TPN is long awaited and it is pleasing that we now have clarity on the AFS issue. On the other hand, the new practice will give applicants or proprietors a second bite at the cherry having previously missed their defence deadlines – which is great if your rights have been challenged but a little frustrating if you are on the opposite side.
This change in practice emphasises the importance of appointing a UK qualified representative against registered trade marks and designs having effect in the UK, to ensure that there is no confusion, delay or loss of important communications from the UKIPO such as cancellation requests or notifications of newly filed conflicting third party applications. A UK representative will also be able to provide appropriate and qualified advice, and update you quickly in relation to new UKIPO practices and guidelines. Finally, appointing a UK representative now will avoid any 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 a UK representative.
Just so you know, Marks & Clerk has eight offices in the UK that can be designated as an AFS and so there are plenty of representatives to choose from!