Don’t get caught out by the new UK IPO changes!
3rd April 2023 by Tiff Elmer
Do you have a pending or registered UK trade mark or design? If so, you will want to make sure the new changes do not affect you. The UK Intellectual Property Office (“UK IPO”) has a new approach for handling important communications from third parties in relation to trade mark and design rights in the UK which are filed through the Madrid Protocol and Hague Agreement system – the international system for obtaining trade mark and design protection in a number of countries using a single application.
Up until now, applicants and owners of trade mark and design rights which have designated the UK (via the Madrid Protocol or Hauge Agreement) but do not have UK addresses will receive any third-party communications by the UK IPO to their non-UK address. However, following the recent “MARCO POLO” case it was decided the UK IPO has no power to serve communications outside of jurisdiction until a UK address for service (UK AFS) s provided. If this is not dealt with properly these changes could result in the possibility of loss of rights and / or any deadlines being missed.
The UK IPO is putting in place two new processes;
- For challenges after designs and/or trade marks are registered such as invalidation, revocation and rectification actions (e.g., claims made by a third party that an application or registration should be revoked because it has not been used for a particular period of time, or should be rectified due to error)
- For oppositions before applications are registered (e.g., where a third party will oppose the registration because it is similar or identical to their registration).
Invalidations, revocations and rectifications
On receipt of a third-party application (involving an invalidation, revocation or rectification) against a registered UK right which does not have a UK AFS, a letter will be sent by post providing a one-month period from the date of the letter for a valid UK address to be provided. If the UK right arises from the Madrid Protocol or Hauge system this letter will be sent to either the applicant / owner or their representative if they have one.
If a valid UK address is not served within this time frame there is a risk that the Registrar will deem the applicant / owner has not opposed the application and could result in the right being declared invalid, revoked or amended (whatever is claimed by the third party).
Oppositions
The oppositions approach will be different as the UK procedure will allow a valid UK address for service to be filed either before or after filing the defence and counterstatement. The UK IPO will issue duplicate communications unless there is a valid UK address for service.
At the point of receiving an opposition, the UK IPO will continue (as is does now) to process the notice and forward the information on to the holder or its representative. If the holder does not have a valid UK address, the UK IPO will send the notification to the holder using the non-UK address for services provided by the World Intellectual Property Office as well. Both letters will set a deadline of two months from the date of the letter to file a defence and counterstatement (or cooling off request with the opponent’s consent). The need for a valid UK address is required before the applicant / owner can engage further in the process and the initial letter to the applicant / owner will flag this. A failure to provide a UK address before or with the defence will continue to lead to additional deadlines and correspondence from the UK IPO, so there are likely to be some confusion and additional administrative burden on holder and their representatives.
What to do?
We strongly advise the holders of international trade mark and design registrations that designate the UK, and those who own national registrations which have no AFS, to appoint a UK AFS as soon as possible to avoid any possible issues and loss of rights.
If you require any further information or would like to discuss any of the above further, then please contact Tiff Elmer at t.elmer@laceyssolicitors.co.uk or on 01202 377 814.
Tiff Elmer
Solicitor — Corporate and Commercial
Direct dial: 01202 377814
Tiff joined Laceys in July 2021 as a paralegal and qualified as a Solicitor in 2023 deciding to specialise in Corporate and Commercial law. Tiff has relocated back home to Bournemouth after living in Bristol for four years where she completed her LPC at the University of Law, and worked in a large commercial law firm as a trade mark paralegal. Before moving to Bristol, Tiff completed her Law LLB Hons degree at Southampton Solent University in 2016 graduating with a 1st.
Tiff has particular experience in intellectual property law and assists her team to advise a range of businesses in various sectors in relation to intellectual property matters and commercial contracts, and is enjoying expanding her knowledge and skills within the commercial field.
Outside of work Tiff enjoys being outdoors by going for long runs, hikes and paddle boarding around the beautiful South Coast with family and friends.
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