Changes To The Handling Of UK Trade Marks And Designs Before The UK IPO Following MARCO POLO – Trademark

On 25 January 2023, the United Kingdom (UK)
Intellectual Property Office (IPO) released its
long-awaited Tribunal Practice Notice (TPN) on the
effective service of official documents for trade marks and design
registrations that do not have a valid UK address for service
(AFS).

The guidance follows the Appointed Person’s decision in
Tradeix Ltd v New Holland Ventures Pty Ltd (MARCO POLO),
whereby it was held that the UK IPO has no automatic power to serve
proceedings outside of the UK, and cannot validly effect service
without having first obtained a valid UK AFS for a challenged
registration.

In MARCO POLO, the UK IPO served an application for invalidity
filed against the UK designation of International trade mark
registration on the proprietor by registered post at its address in
Australia, setting a two-month deadline both for
defending the invalidity action and appointing a UK AFS. The
Appointed Person ruled that, in doing so, the UK IPO had not
followed the correct procedure since it did not first invite the
holder to appoint a UK address before attempting service of the
documents. The new TPN establishes the procedure the UK IPO will
now follow in comparable circumstances, which imposes an even
shorter one-month deadline for a proprietor to
react following notice of an incoming challenge to its rights.

The key points outlined in the TPN are as follows:

• the TPN applies to all trade mark and design
  registrations which do not have a valid UK AFS
  except UK comparable ‘cloned’ trade
  marks derived from an European Union (EU)
  trade mark where an EU AFS is considered sufficient until 1 January
  2024. Whilst the majority of affected registrations are likely to
  be UK designations filed via the Madrid Protocol or Hague
  Agreement, the TPN is also relevant to some national
  registrations.




• For invalidity, revocation and rectification
  proceedings against UK trade mark and design designations, the
  holder will be required to provide a valid UK AFS
  within a period of one-month, following which the
  documents will be served to the UK AFS setting the usual two month
  period for filing a defence.




• For trade mark oppositions filed against UK
  designations of a Madrid Protocol trade mark, the UK IPO will
  continue to issue a ‘notice of provisional refusal based on an
  opposition’ setting a two-month period for filing a defence to
  WIPO, who will then transmit the correspondence to the holder. This
  transmission by WIPO to the holder constitutes effective service of
  the opposition. The holder will need to appoint a valid AFS if it
  wishes to defend the opposition.




• Failure to appoint a valid UK AFS within the
  one-month time limit set by the UK IPO will result in a designation
  / application / registration being declared invalid, revoked or
  rectified, or treated as withdrawn. Given that the notice to
  appoint a valid UK AFS issued by the UK IPO will be sent directly
  to the WIPO representative (or the holder where no representative
  is appointed) by post only, who could be anywhere
  in the world, there is a real possibility that the correspondence
  could be lost, mislaid or simply not received within the short
  one-month deadline.




• The TPN only applies to inter partes
  trade mark invalidation, revocation, rectification and opposition
  proceedings, and registered design invalidation proceedings. It
  does not apply to ex parte proceedings,
  and the UK IPO’s practice for newly filed UK designations will
  remain the same i.e., a valid UK AFS will only be required if a
  provisional refusal is issued and the holder wishes to respond.
  National applications filed directly with the UK IPO will continue
  to require a valid UK AFS on filing.




• The TPN applies to proceedings which have been
  suspended pending the release of the TPN, and the backlog
  of inter parte proceedings will now be cleared. Holders
  who do not have a valid UK AFS can expect the UK IPO to request one
  over the forthcoming days and weeks, and will need to take action
  within the one-month period if they wish to defend the
  proceedings.

Our recommendations

MARCO POLO served as a cautionary tale to all holders of UK
trade mark and design registrations which did not have a UK AFS.
This TPN reinforces the importance of having a valid UK AFS to
ensure important and time sensitive UK IPO correspondence is
received.

We strongly advise the holders of International trade mark and
design registrations that designate the UK, and those who own
national registrations which have no AFS, to appoint a UK AFS as
soon as possible to avoid any possible issues and loss of
rights.

A link to the full TPN can be found at Tribunal Practice Notice 2/2023.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.