Out-Law / Your Daily Need-To-Know

Global brand owners risk losing IP rights without a UK address

Out-Law News | 02 Feb 2023 | 11:36 am | 1 min. read

Multinational businesses based outside the UK should urgently appoint a UK-based representative to be the point of contact for UK designations of their internationally registered trade marks and designs, an expert has said.

Triona Desmond of Pinsent Masons said the action is necessary after the UK Intellectual Property Office (UKIPO) announced an immediate change to the way it will communicate with holders of UK designations of international registrations (IRs) when invalidation, revocation, rectification and opposition proceedings are lodged against them.

The UKIPO confirmed that it will no longer serve documents relating to those proceedings to non-UK addresses for holders of UK designations of international registrations (IRs).

“With immediate effect, the UKIPO will change its practice in relation to contentious actions involving holders of UK designations of IRs for trade marks and designs,” Desmond said. “In short, IR holders will now need a valid UK address for service. Without one, they risk being deemed unsuccessful in the action by default and potentially losing their registered or pending rights.”

“Going forward, the UKIPO will give IR holders one month to provide a UK address for service and confirm whether they wish to defend an action. This letter will be sent to the current World Intellectual Property Organization representative on record, or the holder directly if none is appointed, via Royal Mail’s Signed-For service. For IR holders without representation, there is a risk that this letter may not reach them, or they have insufficient time to respond,” she said.

“If the IR right holder does not respond to the letter, in relation to trade mark and registered design invalidation or revocation proceedings, the UKIPO may treat the holder as not opposing the application, and the registration could be declared invalid or revoked. With respect to rectification, the holder may be treated as not objecting to the correction of the error or omission,” she said.

“Interestingly, existing non-UK addresses listed for UK trade marks or design rights cloned from parallel EU rights following Brexit, remain valid for serving invalidation/revocation actions until the end of 2023,” she said.

According to Desmond, the UKIPO’s announcement has been eagerly anticipated since an appeal tribunal ruling last March in which it was determined that documents sent to a non-UK address were not validly served. A number of opposition proceedings raised against IR designations have been suspended since that ruling – they are all impacted by the UKIPO’s new practice note. 

Desmond said: “This practice amendment highlights the importance of having a UK address for service for all UK designations of IRs. Otherwise, deadlines could be missed and that could result in a loss of trade mark or design rights for the IR holder. Given the immediate effect of this change in practice, and the serious implications, we strongly recommend that IR holders without representation appoint a UK representative without delay.”

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