A new rule for non-UK trade mark owners
22 March 2023
The UK Intellectual Property Office (“UKIPO”) has issued a new rule for trade mark owners, which primarily affects non-UK based applicants.
If the trade mark owner is a non-UK based applicant, a valid UK address for service is now required if a UK trade mark application receives objections on examination, if the application is opposed during the opposition period, or if a registration receives an invalidity or revocation action filed against it. Given that all new UK trade mark and design applications (filed directly through the UKIPO) require a valid UK address for service upon filing, this new rule affects owners of International Registrations filed through the World Intellectual Property Office (“WIPO”) designating the UK, but who do not have a UK address for service recorded.
Registrations: invalidity and revocation proceedings
Trade mark owners will be notified by WIPO that an invalidity or revocation action has been filed against their trade mark application, and they will be given one month to confirm an intention to defend the proceedings and appoint a valid UK address for service. Where an overseas representative is available, these details will be used rather than the trade mark owner’s address. Failure to provide a valid UK address for service will result in abandonment of the UK designation.
Applications: opposition proceedings
Applicants of UK designations will be notified by WIPO in the usual way if a notice of opposition has been filed against their application, and the deadline to file the defence will be two months Following this, a valid UK address for service will be required within one month of the defence being filed, and so appointing a valid UK address for service at the time of filing the defence is recommended. Failure to provide a valid UK address for service will result in the UK designation being treated as withdrawn.
New UK designation
As it stands, the UKIPO will not require a valid UK address for service at the time of filing the UK designation. However, if a non-UK based applicant has designated the UK through their International Registration and the application receives an objection during examination, the UKIPO will request a valid UK address for service at this point.
The Birketts view
The UKIPO uses Royal Mail’s Signed-For postal system to notify non-UK rights holders when an email address is not available. This can be problematic as letters can often be delayed or lost when being sent overseas. To avoid this, and for peace of mind, we recommend that trade mark owners outside of the UK appoint a UK address for service from the outset.
The content of this article is for general information only. It is not, and should not be taken as, legal advice. If you require any further information in relation to this article please contact the author in the first instance. Law covered as at March 2023.