UKIPO: owners of UK trade marks and designs need a valid address for service

The UK Intellectual Property Office (UKIPO) has confirmed new requirements for owners of UK trade marks and designs to have a valid address for service in the UK. 

Here, our IP experts Georgia Close and Sara Ludlam explain the importance of the new rules and how we can assist.

1 January 2024 deadline 

The UKIPO has advised that rights holders risk losing invalidation, rectification and revocation actions in relation to their comparable trade marks and registered designs if they haven’t provided a UK address for service by 1 January 2024 for the following situations:

• Changing the address for service recorded against a comparable trade mark or re-registered design.
• Acting in any invalidation, rectification or revocation proceedings launched on or after 1 January 2024.

For proceedings started on or before 31 December 2023, there is no obligation to provide a UK address for service on an existing registered comparable right unless it’s derived from an international registration.

The UKIPO states that: “If you fail to do so, then the proceedings against you could succeed (without your involvement) and you could lose your right.”

We strongly recommend listing a valid UK address for service from the outset or as soon as possible.

Why do I need a UK address for service?

The UK address for service requirement stems from the recent Marco Polo case, in which the Appointed Person held that the service of documentation in relation to contentious proceedings to addresses outside of the UK cannot be considered valid. This is because, according to the Trade Mark Rules 2008, the Registrar does not hold the power to serve outside of its jurisdiction.

As such, the UKIPO introduced its new rule with immediate effect, meaning that owners of UK trade marks and designs must ensure that they have appointed a valid address for service (in the UK, Gibraltar or the Channel Islands) in certain circumstances. This will enable the service of documents in relation to applications for invalidation, revocation and rectification, as well as opposition proceedings.

Who is affected?

This affects owners of pending and registered UK trade marks and designs — whether your rights are registered directly with the UKIPO or through the World Intellectual Property Office (WIPO).

It also affects owners of ‘comparable’ trade marks and registered designs (those created following Brexit) who want to change their address for service or are involved in any invalidation, rectification or revocation proceedings launched on or after 1 January 2024.

How are my rights affected?

The UK address for service requirement brings with it two new approaches:

1. For invalidation, revocation and rectification actions against any UK protected right (both national registrations and (UK) designations of international registration).

Upon receipt of an application form in relation to any of the above-listed matters and where the owner of the mark does not already have a valid UK address for service, the UKIPO will send a preliminary letter to the owner’s international address, requesting a response within one month. The response must appoint a valid UK address for service and confirm the owner’s intention to contest the invalidation, revocation or rectification action.

The letter will also address the consequences of failure to comply within the requisite deadline. In the case of a revocation or invalidation action, failure to comply may result in the UKIPO deeming that the trade mark or design is invalid or revoked. In the case of a rectification, a lack of response may lead the UKIPO to interpret that the owner doesn’t object to the error or omission. A follow-up letter shall be sent to the owner, confirming the Registrar’s understanding that the owner doesn’t intend to defend the action.

2. For opposition proceedings against UK designations of international trade mark registrations.

In the event of an opposition against a pending international application with no valid UK address, the ‘notice of provisional refusal based on an opposition’ will be sent to WIPO as usual, which will forward the same to the owner (or their WIPO representative) at their non-UK address. This will constitute effective service.

At the same time, the UKIPO will also send a letter to the applicant to inform them that the two-month period to submit a defence has commenced and that a valid UK address is required via the submission of a Form TM33. Provision of a valid address for service will be a requirement in order to contest the opposition.

If the applicant files both a Form TM8 and counterstatement and a Form TM33 with the UKIPO within the two-month period, proceedings will continue in-line with normal practice.

If the applicant only files a Form TM8 and counterstatement — but no Form TM33 — within the two-month period, the Registrar will consider this to be sufficient notice that the applicant intends to defend the opposition. The Registrar will issue another letter to the applicant’s non-UK address, requiring the submission of a valid UK address for service within one month from the date of the letter. The letter will make clear that failure to provide such information will result in the application being treated as withdrawn.

Failure to provide both a Form TM8 and counterstatement and a TM33 within the two-month deadline will result in the application being abandoned in relation to the goods and services for which the opposition was directed.

What action do I need to take?

In order to limit the potential risks for owners of UK designations of missing deadlines for response, we strongly recommend listing a valid UK address for service as soon as possible.

Even in cases where the other party is based outside of the UK, it is important to ensure that they have an appropriate UK address or representation to ensure that documents can be validly served. Representatives should be appointed in any ongoing disputes involving parties without a UK address.

We can provide you with a valid UK address for service. Should you wish to appoint Brabners as your UK representative and UK address for service, talk to us by completing our contact form below.

Our IP experts Sara Ludlam and Natalie Hardman will be in Berlin for the MARQUES 37th Annual Conference between 19 and 22 September. Connect with them on LinkedIn to book a meeting ahead of time.