Remember to appoint a UK Address for service for all UK Madrid Designations, Hague Designs and comparable UK Trade Marks derived from EU Trade Marks
Further to our recent newsletter reporting the decision of the Appointed Person in MARCO POLO (O/681/22), the UKIPO has now released its practice update regarding the address for service rules and the service of documents in inter partes proceedings. The Tribunal Practice Notice can be found here.
This practice notice confirms that it is necessary for the proprietors of UK Trade Marks and Designs to have an address for service in the United Kingdom, if they wish to defend their UK rights and contest a cancellation action or opposition. This is particularly relevant for the holders of UK Designations of Madrid or Hague Registrations.
Under the new procedure, where there are inter partes trade mark invalidation, revocation, rectification and opposition proceedings, or registered design invalidation proceedings, and there is no address for service in the UK, the holder will be notified (via the contact details held by WIPO) and they will have one month to appoint an address for service in the UK. This will then enable the UKIPO to properly serve the relevant Notice on the applicant/proprietor. If no address for service is appointed within that one month period, the UK Designation may be deemed withdrawn or declared invalid.
From January 2024, the same rules will apply to all EU derived comparable UK Trade Marks where no UK address for service has been appointed. We would always advise having an address for service in the UK for UK Trade Marks or Designs, but this new practice notice highlights the importance of appointing an address for service as soon as possible, in order to ensure that official correspondence from the UKIPO is safely received, and that there is no risk of unintentionally losing your UK Trade Mark/Design.
Accordingly, whilst it is not mandatory, other than in inter partes proceedings, we would recommend that the owners of any UK Designations or comparable UK Trade Mark Registrations derived from EU Trade Marks appoint a UK address for service as soon as possible after filing.
If you would like any further information regarding the address for service rules or any other trade mark matters, we would be very pleased to assist; please contact Rebecca Atkins or any member of the A+I Trade Marks team.