UK address for service for IR trademarks and IR designs needed

With immediate effect change of service in proceedings against trademarks and designs in the UK

Due to a practice note published by the United Kingdom Patent Office (UKIPO) on January 25, 2023, all owners of international registrations of trademarks and designs that extend to the United Kingdom are strongly advised to designate an address for service in the United Kingdom as soon as possible!

Following the change in UKIPO practice, owners of trademarks and designs against which an application for invalidity, revocation or rectification has been filed will receive a notice by mail from the UKIPO inviting them to defend against the application within one month (from the date of the letter).

Where the challenged IP right is an IR mark or design with a foreign owner and no UK address for service, the UKIPO’s notice will also be sent by post to the owner (or preferably his representative) based abroad, who must designate an address for service in the UK within the extremely short time limit of one month and confirm his intention to defend his rights. If no UK address for service is designated, the UKIPO will treat the application against the challenged IP right as if its owner had not defended himself and will declare the challenged IP right invalid to the extent requested!

This new time limit of one month (previously two months) is unusually short, especially when one considers that it also includes the mailing time abroad, since the time limit is calculated from the date of the message from the UKIPO. As a result, there is a great risk that the letter will reach the IP right holder (or his representative) unprepared or too late and he will not be able to react appropriately or in time with the consequence that the challenged IP right will be restricted or cancelled.

However, the new practice does not apply to oppositions against IR trademarks that extend to the United Kingdom: For these, it continues to apply that the trademark owners are not informed directly by the UKIPO, but that the UKIPO issues a provisional refusal of protection on the basis of the opposition, which it transmits to the International Bureau of WIPO with the opposition. The International Bureau informs the IP right holder of this, who must appoint a UK representative within a period of two months and comment through him on the provisional refusal of protection.

Summary:

• The UKIPO will serve an invalidity, revocation or rectification request on owners of IR trademarks or IR designs (or their representatives) even if they are located abroad and do not have a UK address for service. The owner has only one month to respond. If he does not respond in time, the UKIPO will grant the application filed against the IP right without further examination!
• In order to avoid disadvantages or negative consequences due to the too short time limit, it is strongly recommended that IP right owners register a UK address for service with their IR trademark or IR design.
• The new regulation will be implemented with immediate effect.

Further information can be found on the UK government’s website.
Please feel free to contact us if you have any questions.