Changes to the Handling of UK Trade Marks and Designs Before the UK IPO Following MARCO POLO

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.

HLK can act as AFS for your UK trade mark and design applications and registrations free of charge. Please contact your usual HLK attorney or solicitor, or email tmrecords@hlk-ip.com, for further advice and guidance.

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