November 17, 2022
Following a recent UK decision, many holders of International Registrations (“IRs”) designating the UK are wondering whether it is now necessary to appoint a UK representative.
This particular case raised concerns around how notice of proceedings can be served and how it impacts foreign brand owners. As a result, many holders of international trade mark registrations are now left wondering – how does this case impact them? In this article, intellectual property experts weigh in on the case, and explain the next steps that need to be taken regards international registrations.
An IR is, effectively, a bundle of national trade mark rights, whereby you can select countries of interest beneath the international registration. Simple stuff.
Rule 11 of The Trade Mark Rules 2008 requires that if you want to be involved in any proceedings at the UK Intellectual Property Office (or UKIPO), then you need to provide an address for service in the UK. If you don’t, then you’re unable to join in the proceedings.
A UK address for service is currently defined as an address in the UK, EEA or Channel Islands. Such proceedings include the filing of a UK trade mark application filing a response to an examination report and engagement in registry proceedings. Crucially however, these proceedings don’t include the designation of the UK as part of an International Registration.
Where there is no UK address for service on the UK Trade Mark Register, the UKIPO will direct that party to file an address for service.
The case related to an “Application for Invalidity”, which was an application to cancel a UK designation and remove it from the UK Trade Mark Register. This application was filed against a UK designation owned by New Holland Ventures Pty Ltd (“New Holland”) for MARCO POLO covering a wide range of financial services. New Holland resided in Melbourne, Australia and was represented by an Australian law firm. No UK address for service had been appointed for the UK designation (and did not have to be) as it had gone through to protection without any issues.
The UKIPO sent a copy of the Application for Invalidity to New Holland’s registered address in Melbourne and not to its Australian representative, as the Australian law firm did not meet the criteria of being a UK address for service. Due to the strict lockdown in Australia in 2021, New Holland did not attend its Melbourne office and, as a result, did not receive the letter from the UKIPO. This sparked a domino effect, whereby the IR holder did not file a defence and the UK designation was declared invalid. It was only when the Australian representative was informed of the invalidation decision by WIPO that the issue came to light and an appeal was filed.
The case revolved around whether the Application for Invalidity was effectively served, and Mr Geoffrey Hobbs KC asked and answered the following questions:
Mr Hobbs asked, “Does Section 7 of the Interpretation Act 1978 apply to the service of the Application for Invalidity by the Registrar under Rule 41(5) of the Trade Mark Rules 2008”.
Or, in simpler terms: what is needed to constitute effective service by post? To this, Mr Hobbs confirmed that an Application for Invalidity is considered to be effectively served when the document has been properly addressed, pre-paid and posted.
Mr Hobbs asked, “Is it permissible for the UKIPO to use an address which does not comply with the requirements for a UK address for service under Rule 11(4) of the 2008 Rules?”
In other words, Can the UKIPO use an address that does not meet the criteria of a UK address for service (ie: an address in the UK, EEA or Channel Islands)?
The answer here was no. The UKIPO cannot serve the Application for Invalidity in Australia or anywhere outside of their jurisdiction. As a result, service would need to be achieved by “other means”, namely conforming with the rules on address for service.
Mr Hobbs asked, "Is it necessary for the requirements of Rules 11 and 12 of the 2008 Rules, namely appointment of an address for service in the UK, EEA or Channel Islands, to be completed prior to service of an Application for Invalidity?" This was a magnanimous yes! The 2008 Rules clearly require a UK address for service to be in place to enable the UKIPO to effectively serve the Application for Invalidity.
This case does not necessarily mean that all holders of International Registrations designating the UK must immediately appoint a UK address for service. It’s expected that the UKIPO will issue guidance on this soon but, until they do, this decision makes it clear that there will always be an opportunity for the holder to appoint a UK address for service before the Trade Mark Registry can effectively serve notice of proceedings.
However, whilst you don’t have to appoint a UK address for service, it may be wise depending on your circumstances. It’s clear that the UKIPO will not correspond with the WIPO representative in relation to a UK designation.
Therefore, unless the holder is happy (and prepared) to receive correspondence at their registered address (and that address is kept up to date on the UK Register), it seems it would be smart to appoint a UK address for service for you or your client’s UK designations. In doing so, you can ensure you receive notification of any opposition, invalidity, orrevocation proceedings before it is too late.
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