If you or your clients are based outside the UK, we strongly recommend you have a UK address for service recorded for your/your clients’ UK IP rights, to ensure prompt notification can be received of any challenges upon their validity.
In January 2023, we emphasised the importance of appointing a valid UK address for service for trade marks and designs, especially those designating the UK in International trade mark (Madrid Protocol) or International design (Hague Agreement) registrations, which might otherwise only have an address for service outside the UK jurisdiction.
In our article here, we reported upon a significant procedure change by the UK Intellectual Property Office (UK IPO), effected by their Tribunal Practice Notice (TPN) No 2/2023. The TPN can be viewed here.
The TPN provides that – in the event of third party challenges to a UK registered right, such as invalidation, revocation on grounds of non-use, revocation on grounds other than non-use, or rectification – absent a UK address for service, a preliminary letter by post would be issued by the UK IPO directly to the rights holder (should they have no representative at all) but otherwise directly to the holder’s recorded representative outside the UK. This communication would require the holder to provide a valid UK address for service within just one month, together with confirmation of its intent to defend its right. Without any response within this very short period, the holder could risk losing its rights.
The effects of the TPN are now becoming significant for so-called “clone” trade mark and design registrations on the UK Registers, as created from European Union (EUIPO) registrations at the point of Brexit. The Withdrawal Agreement between the UK and EU had specified that the UKIPO could not require a UK address for service for these clone registrations for a three year period, but that period will come to an end on 31 December 2023. As such, from the start of next year, the TPN will encompass post-Brexit clone registrations as well, and will require appointment of a UK address for service where any new contentious proceedings are launched, such as invalidations, revocations or rectifications. Directions from the UK IPO to appoint a UK address for service, where needed, will be sent by post to a non-UK address, and will give only one month for that appointment to be made.
Just one month is such a short period of time to receive by post, react to, obtain client instructions, and appoint UK representation for any challenge upon your/your clients’ UK rights. As such, we would strongly recommend that you promptly appoint a UK address for service for any of your clients’ UK registrations – be those national registrations, UK designations in International registrations, or UK clone registrations created out of EUIPO registrations – to ensure that notifications of any challenges to those rights can be promptly received and acted upon.
Wherever questions are raised relating to validity of an IP right in the UK, local advice and representation is crucial, and Two IP’s attorneys are well qualified to help you. Get in touch here or email hello@two-ip.com.
