UK address for service rules in review following recent decision

In MARCO POLO (O/681/22), the Appointed Person (Geoffrey Hobbs KC) held that the UKIPO was not entitled to serve proceedings on the proprietor of an international trade mark registration, for whom no UK address for service had been provided. As a result of this case, actions involving international trade mark registrations designated in the UK, where the challenged designation’s address for service is outside the UK, have been suspended by the UKIPO and will likely lead the UKIPO to adopt a new procedure.

The Trade Mark Rules 2008 – Legal background

Since 1 January 2021, a UK address for service has been required when filing a UK trade mark application directly at the UKIPO. However, this does not apply to international trade marks designated in the UK, unless the UK designation is faced with:

• An objection from the UKIPO;
• An opposition from a third party; or
• Cancellation proceedings.

Unless one of these conditions is present, UK designations are likely granted protection and quite often sit on the UK register without a UK address for service. If there is no UK address for service, the UKIPO will notify the proprietor of the mark, rather than the WIPO representative.

Where a person has failed to file an address for service and the UKIPO has sufficient information to contact that person, the UKIPO must direct that person to file an address for service within one month. If that person fails to provide an address for service within one month, that person will be deemed withdrawn from proceedings.

The Marco Polo case

New Holland Ventures Pty Ltd (“NVH”), an Australian company, obtained an international registration of Marco Polo (“NVH’s Mark”) in June 2020 which designated, amongst others, the UK.

In January 2021, the UKIPO notified the International Bureau that NVH’s Mark was registered and had been granted protection in the UK. The International Bureau then forwarded this notification to NVH’s representatives.

On 18 May 2021, Tradeix Ltd (“Tradeix”), the proprietor of trade mark ‘MARCO POLO’ registered in the UK with effect from 11 December 2018 (“Tradeix’s Mark”), filed an invalidity action against NVH on the basis that there was a likelihood of confusion between NVH’s Mark and Tradeix’s Mark.

On 26 May 2021, as prescribed by the Trade Mark Rules 2008, the UKIPO sent a copy of the invalidity application to the registered office address of NVH in Melbourne. This was the address recorded in the UK register for the holder of the UK international registration. The letter was not copied to NVH’s WIPO representative, who was also recorded on the UK register. The covering letter to the notice set a 2-month deadline for defending the action and directed NVH to provide a UK address for service within the same deadline. However, NVH did not receive this notice as its offices were closed due to the Covid-19 lockdown.

On 12 August 2021, as NVH had not filed a defence, the UKIPO sent NVH a notice of default to the same address, stating the registration would be declared invalid if NVH did not respond within a specified period. This letter was also not received by NVH due to the continuing Covid-19 complications. The letter was not copied to NVH’s WIPO representatives.

On 29 March 2022, the UKIPO issued a declaration of invalidity and forwarded it to the International Bureau, which, in turn, notified NVH’s WIPO representatives. On receipt of the declaration, NVH immediately appointed a representative with an address for service in the UK and appealed the decision on the basis it had not had the opportunity to file a defence.

The Appointed Person’s decision

Geoffrey Hobbs KC held that the invalidity application and subsequent notice of default had not been served on NVH as the Melbourne registered address was not an “address for service”. Hobbs KC clarified that the Trade Mark Rules 2008 do not grant the UKIPO the power to serve documents outside the jurisdiction. Therefore, the UKIPO was only empowered to go as far as writing to NVH’s registered address to set a one-month deadline for appointment of a UK based address for service.

As a result, the decision to invalidate NVH’s mark was set aside and the appeal was allowed.

Comment

This decision highlights the risks of leaving, albeit inadvertently, an international mark with a UK designation without a UK address for service. Holders of international trade mark registrations designated in the UK should ensure that their registered address is correct and monitored regularly to ensure UKIPO correspondence is received. As happened in Marco Polo, the UKIPO will not always send all correspondence to WIPO representatives, with the risk that the holder may miss a critical deadline.

The UKIPO has suspended all pending actions involving international trade mark registrations designated in the UK. The Chartered Institute of Trade Mark Attorneys advised on 24 November 2022 that this suspension is still ongoing. It is presumed that the UKIPO will issue new guidance or adopt a new procedure to deal with UK addresses for services in international trade mark registrations shortly. Until this happens and in any event from a safeguarding point of view, we strongly recommend that holders of international trade mark registrations designated in the UK ensure that their marks have a UK address for service as soon as possible.

If you have any questions regarding this subject or require advice in the area of trade marks, please contact Claire Lehr or any member of the Intellectual Property team.

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