UK IPO Practice Update – UK ‎Addresses for Service | Locke Lord LLP

UK IPO practice update: UK mailing addresses

The UK Intellectual Property Office (UK IPO) has recently changed its practice on the service of invalidity, revocation and opposition proceedings against trade marks and registered designs that do not have an owner/applicant/representative address in the UK (including the Isle of Man), Gibraltar or the Channel Islands. The change in practice follows a recent decision by the nominee (Tradeix Ltd v New Holland Ventures Pty Ltd or the “Marco Polo” case) confirming that the UK IPO does not have the power to serve court proceedings on parties outside the UK.

Notice of Court Practice 2/2023

With effect from January 25, 2023, the UK IPO will attempt to obtain a valid delivery address (in the UK, Isle of Man, Gibraltar or Channel Islands) from a non-UK based party before filing nullity , revocation or objection procedure. Prior to service of proceedings, the UK IPO will attempt to obtain a valid delivery address as follows:

• For invalidity, revocation and rectification proceedings, the holder must provide a valid delivery address within 1 month of the date of a written request from the UK IPO. Failure to do so will result in the proceeding being deemed unreasonable upon further notice from the UK IPO, which may result in loss of protection or partial loss of protection; And

• For oppositions filed against UK designations, the UK IPO will continue to issue a “Notice of Provisional Refusal on the Basis of an Opposition” to WIPO. It sets a time limit of two months for filing a defense and counter-statement. The UK IPO will now also write to the holder or their WIPO representative requesting a valid delivery address. A holder wishing to defend an opposition against his designation in the UK must provide a valid mailing address, otherwise the opposition will be deemed successful.

Currently, most marks and designs concerned are those protected as British designations via WIPO under the Madrid Protocol/Hague Convention. Note that until January 1, 2024, the new practice will not apply to registrations automatically generated from EU trade marks.

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The change in practice underlines the importance for holders of UK designations, UK trade marks and registered designs to appoint a UK representative to act as an address for service of those registrations. While the UK IPO will initially continue to correspond directly with overseas owners, the timeframe to respond to the UK IPO is relatively short, which entails an increased risk of an inadvertent loss of rights.