When Is A UK Address For Service Required Before The UKIPO?

This is a question that we have been asked regularly since the expiry of the Brexit Transition Period, 31 December 2020, when UK clones, often referred to as comparable rights, were created from existing EU Trade Mark Registrations; and more recently, following the Decision in Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22), where the Appointed Person determined that the UKIPO has no power to serve documents outside of the jurisdiction.  This Decision prompted the UKIPO to issue Practice Notice TPN 2/2023.

Firstly, to clarify what “an address for service” is. It is an address which the UKIPO can issue legal documents to and, if a document is delivered to that address, it is considered as served on the party to whom it is addressed.

Following the expiry of the Brexit Transition Period, there was no immediate requirement for comparable rights to have an address for service in the UK, Gibraltar or Channel Islands. However, since 1 January 2021, all new trade mark applications filed at the UKIPO require an address for service in the UK, Gibraltar or Channel Islands.

An address for service in the UK, Gibraltar or Channel Islands is not required by a trade mark proprietor if that proprietor wishes to directly correspond with the UKIPO in respect of any of the following – change their address, renew or surrender their registration, add details of a licence agreement to their registration, or to correct an error or omission on the UK Trade Marks Register. This is not currently set to change.

The proprietor of a pending UK application, filed prior to 1 January 2021, will need to provide an address for service should that pending application be subject to an opposition.  

The proprietor of a comparable right (UK clone from an EU trade mark), a UK registration, or a protected UK designation of an International Registration, that does not currently have an address for service in the UK, Gibraltar or Channel Islands will need to provide an address for service should the trade mark be subject to an invalidation, revocation or rectification action.

Where there is no address for service in the UK and one of the above scenarios occurs the UKIPO will seek an address for service in the UK, Gibraltar or Channel Islands before the formal serving of any documents.  If a UK address for service does not exist the UKIPO will take the following action,

  • The UKIPO will send correspondence to the proprietor at their non-UK address, or if an overseas representative’s details are present the letter will be sent to that overseas representative.
  • The UKIPO will notify the proprietor, or their overseas representative, that the right is being challenged and set a one month period to provide an address for service in the UK, Gibraltar or Channel Islands if they intend to defend the right.
  • If the proprietor fails to respond to the UKIPO in that one month period, the UKIPO will consider the challenged application/right undefended.  The UKIPO will issue a further letter confirming this view and that, as a result, the challenge will be deemed successful. The proprietor will be given fourteen days to request a Hearing to contest the UKIPO’s approach.   If no response is received the UKIPO will issue a decision on the undefended right, resulting in it being removed or amended.
  • If the successful challenge was directed against the protected designation of an International Registration then WIPO will be notified as to the loss of that designation.
  • Where the proprietor does respond to the UKIPO’s letter setting out that they intend to defend their application/right, and provides an address for service in the UK, Gibraltar or Channel Islands, proceedings will commence. The proprietor is then set a two month period to address the challenge made.

UK designations from International Registrations

The procedure above differs for pending UK designations made under an International Trade Mark Registration.

A pending UK designation of an International Trade Mark Registration does not, at the time it is designated, require an address for service in the UK.   

If that pending designation is subject to an adverse examination report, this will be communicated to the proprietor by the UKIPO, via WIPO.    In order to respond to the examination report an address for service in the UK, Gibraltar of Channel Islands will be required.

Where an address for service has not been necessary during the examination process, but the UK designation is then subject to a third party opposition, a “Notice of Provisional Refusal Based on an Opposition” will immediately be sent by the UKIPO to WIPO.  WIPO will then forward that Notice on to the proprietor.  

The forwarding of the Notice of Opposition by WIPO to the proprietor constitutes an effective service of the opposition.    Even though a duplication of information, the UKIPO will also send a letter to the proprietor putting them on notice as to the opposition against their designation.

The proprietor must, within the normal two-month defence period, file a defence to the opposition.  Failure to respond will result in the designation being treated as withdrawn.   Whilst it is advisable to file a UK address for service with the defence it is not essential.   If a UK address for service is not provided with the defence, then the Registrar will set a one month period for the proprietor to provide a UK address and if they fail to do so their designation will be treated as withdrawn.

Summary

An address for service is required for the following,

  1. new UK trade mark applications;
  2. for addressing adverse examination reports issued against pending UK designations of International Registrations;
  3. for defending comparable rights, existing registrations or protected designations of International Registrations against invalidation, revocation or rectification proceedings;
  4. for challenging pending applications, comparable rights or registrations,

(Note: where any of those challenges are brought solely on the basis of a comparable right then the address for service in the UK is not required until 1 January 2024.  After 1 January 2024 an address for service is needed where a challenge is brought on the basis of a comparable right).

Recommended Approach   

Although not essential we do recommend that comparable rights and UK protected designations are given an address for service in the UK, Gibraltar or Channel Islands, to avoid the scenario where a proprietor based overseas receives correspondence directly from the UKIPO, does not act on that correspondence in the time required and, as a result, loses their valuable IP Right.

Costs

For instructions received prior to 1 January 2024 Dolleymores will not be making a charge in respect of becoming address for service before the UKIPO and adding details of the rights to our renewal system.

Contact

For further information on the points raised above please get in touch with your usual contact in our Trade Marks Team, or if you have not worked with us before, then please contact either Vicki Bennett, Chris Lewis, Stuart Nield or Tamara Ozarow at Dolleymores; info@dolleymores.com