The UKIPO has now clarified its approach regarding the requirement to have a UK address for service with the publication of Tribunal Practice Notice 2/2023 on 25 January 2023.
In Tradeix Ltd v New Holland Ventures Pty Ltd (Decision O/681/22), the UKIPO had sent a notice of invalidity proceedings to a non-UK based address for service and set in motion the usual timetable to file the notice of defence, noting that this was outside of the rules governing address for service requirements in UK proceedings. The Appointed Person deemed that the correspondence had not been properly served on the proprietor and as such, the decision to invalidate the UK designation was remitted back to the UKIPO for further processing.
It has been highlighted that most applicants without a UK address for service tend to be holders of an International Registration which designates the UK.
It has now been clarified that the correct approach, and the approach which will be adopted going forward with regards to address for service, will be as follows:
- For cancellation actions - the applicant will be required to appoint a UK address to receive service of such documents within a one month window. Following the appointment of the UK address for service, the applicant will have the usual two month window to respond. If no UK address for service is appointed, then the trade mark or design registration risks being revoked or treated as invalid.
- In the case of an opposition, the UKIPO will notify WIPO of the filing of an opposition by raising a Notice of Provisional Refusal and set the usual two month deadline to file a defence. Within this correspondence, the UKIPO will also confirm that a UK address for service should be appointed. If the applicant complies with the requirement to file a defence, but does not appoint a UK address for service, they will be set a further deadline of one month to do so, failing which, the UK designation risks being deemed to be withdrawn.
The UKIPO has clarified that this approach will be taken in relation to inter partes proceedings, but that their procedure for ex parte proceedings will remain the same - i.e. an applicant will only need a UK address for service where an objection is raised to their application and the applicant wishes to file a response.
Whilst not therefore a strict requirement in every case, we would nevertheless recommend that non-UK applicants appoint a UK address for service in respect of their UK trade mark and design applications and registrations going forward, in light of this guidance.