In MARCO POLO (O/681/22), the Appointed Person (Geoffrey Hobbs KC) has cast doubt on the UK IPO’s current practice for processing International Trade Mark Registrations designating the UK. In particular, it appears that all holders of an International Registration designating the UK would be well advised to appoint a UK address for service shortly after filing the International Registration application at WIPO, or as soon as possible for existing UK designations.
Since the end of the Brexit transition period, a UK address for service is required when filing a UK trade mark application directly at the UK IPO. The address for service must be specified in the application form (TM3). Until now, the statutory rules have not been understood as applying to International Registrations designating the UK, unless they encounter Registry objections or there are other proceedings with which the holder wishes to engage (e.g. opposition, invalidity, cancellation). As such, many UK designations are granted protection and sit on the UK register without a UK address for service, as the designations did not encounter objections or oppositions during the prosecution process.
Where a UK address for service is required, the UK IPO is obliged to set the proprietor a 1-month period for designating a UK address for service. Failure to meet this deadline can result in an application/registration becoming abandoned. To date, the UK IPO’s practice has been to set a deadline for appointing an address for service as well as a deadline for responding to objections or proceedings, with both time limits running in parallel. The recent Appointed Person decision has called this practice into question.
New Holland Ventures Pty Ltd is an Australian company. It obtained an International Registration of MARCO POLO in June 2020. The International Registration designated the UK.
On 5 January 2021, the UK IPO wrote to the International Bureau to confirm that the mark had been granted protection in the UK. The International Bureau forwarded that communication by email to New Holland Ventures’ Australian representatives.
At no point was a UK address for service appointed. As noted above, it is the standing practice of the UK IPO only to require an address for service if the proprietor of the International Registration needs to respond to an objection or engage in proceedings relating to the International Registration. Like many other UK designations, the MARCO POLO designation showed the owner and the WIPO representative on the UK IPO records.
On 18 May 2021, Tradeix Ltd applied to invalidate the designation. As required by the Trade Mark Rules 2008, the invalidity application was posted to the proprietor (in Australia). The WIPO representative was not informed. The communication to the proprietor, sent on 26 May 2021, set a 2-month deadline for appointing a UK address for service and filing a defence. The proprietor did not receive the communication, noting that its offices were not being attended due to the Covid-19 lockdown in force in Australia.
Due to the proprietor’s failure to file a defence, the UK IPO posted a notice of default to the proprietor on 12 August 2021, which, again, the registered proprietor has no record of receiving.
On 29 March 2022, the UK IPO issued a Declaration of Invalidity, a copy of which was forwarded to the International Bureau, which in turn notified the holder’s WIPO representatives, an Australian firm. The proprietor swiftly arranged for the appointment of a UK representative, and appealed against the Declaration of Invalidity on the basis that they did not have an opportunity to file a defence.
The Appointed Person held that the application for invalidity had not been properly served on the Australian proprietor. The UK IPO was only empowered to write to the Australian address to set a 1-month deadline for appointing a UK address, not to serve the invalidity. The Appointed Person held that the rules do not grant the IPO discretion to serve documents outside the jurisdiction, such that the notification of the invalidity application posted to the proprietor in Australia did not trigger the statutory 2-month deadline for filing a defence. The default decision declaring the designation invalid was set aside, and the invalidity proceedings were remitted for further processing.
Key Action Points
It has always been the case that holders of International Registrations designating the UK should ensure that their postal address is correct and monitored, to ensure no important correspondence is missed. WIPO representatives will not always be informed. This Appointed Person decision reinforces the importance of having a monitored postal address or valid UK address for service, as the decision indicates that the requirement for a UK address for service applies to International Registrations designating the UK.
As yet, there is no guidance from the UK IPO on the impact of this decision. However, we have noted that proceedings against UK designations are being suspended pending further guidance. For new filings, we may see the UK IPO proactively requesting an address for service as the first step of examination of UK designations. For existing designations, the UK IPO may request that a UK address for service is designated.
Importantly, requests to appoint an address for service may be sent directly to the holders of UK designations, not their WIPO representatives. Given the steady decrease in office attendance since the Covid pandemic, chances of physical post going astray or not being processed for a prolonged period are greater. It is therefore advisable for all holders of International Registrations designating the UK to appoint a UK representative as soon as possible, lest a future letter setting a 1-month, fatal deadline for appointing a UK address for service should be lost in the international post.
Please do not hesitate to reach out to your usual CMS contact if you or your clients could be affected by this development.
 An address for service in the Channel Islands or Gibraltar is also acceptable.