Important change to UK Inter Partes Proceedings: We strongly advise recordal of a UK Address for Service
The UK IPO has issued a Tribunal Practice Notice, changing the practice involved in the Registrar’s service of documents in inter partes (i.e. contentious) trade mark and design proceedings. This notice concentrates on the effects of the notice on trade mark proceedings, being invalidation, revocation, rectification and opposition matters. For the moment, this practice will mainly relate to designations of the UK for International Registrations.
Procedure for Invalidation, Revocation and Rectification (Protected designations)
From now on, if the owner of a UK (IR) trade mark registration does not have an address for service in the UK (UK representative) listed, instead of immediately serving invalidation, revocation or rectification papers, and commencing proceedings providing the owner a 2-month deadline to file a defence and counterstatement, the Registrar will:
- Write to the addressee on record (if a foreign representative is listed against a UK designation of an IR, the foreign representative’s address will be used; if not, the applicant/proprietor will be written to);
- Send a copy of the application for invalidation/revocation/rectification; and
- Provide a one-month deadline for a UK address for service to be listed, together with confirmation that the matter is going to be answered.
The UK IPO will send that correspondence using the Royal Mail signed-for service, which can be slow. And, if no response is received, the UK IPO is likely to deem the matter uncontested, meaning that the applicant for invalidation, revocation or rectification will succeed in the matter almost immediately. With that said, a 14-day deadline will be provided to request a hearing to discuss why no action was taken; in our experience, it is very difficult to overturn the preliminary indication that the mark will be deemed surrendered.
So, in effect, whilst the UK IPO is lengthening the time limit to file a defence and counterstatement from 2 months to 3 months, if the first short one-month deadline is missed, the proprietor’s right is likely to be deemed surrendered.
Procedure for Opposition (Pending designations)
The process here has not changed. The UK IPO will continue to write to WIPO advising of the opposition (as well as either the representative listed at WIPO or the applicant) advising of the opposition filed, and providing a 2-month term by which to file a defence and counterstatement. That paperwork includes the recording of a UK address for service, so a separate representation request is not required, at that time.
On the basis of this new practice, we strongly urge you to list an address for service against all protected UK designations of International Registrations in order to minimise the potential for clients to lose their rights on the basis of possible shortcomings of the postal service, and the often-difficult feat of answering a 1-month deadline in relation to protected designations.
We will be happy to take over representation for any (unlimited) UK designations, at no cost to your client.
Please note that, for the moment, there is no obligation for a UK address for service to be listed against UK designations of IRs as regards ex parte matters, unless responses are required to provisional refusals, and such like.
This is a very important change in UK requirements for an address for service. Please speak to your usual Forresters attorney or contact us with any questions. We can then discuss with you the best process to upload any marks onto our records and file representation requests, at no charge to you.
