Hitherto, if cancellation or invalidation proceedings were brought against the United Kingdom designation of an International design or trademark where no representative had been appointed in the United Kingdom, the owner would have had an effective two month period within which to take action.
Under the new procedure, if a challenge is made to a UK designation of an International trademark registration 1 or international design for which no address for service in the UK has been recorded, the UKIPO will write to “whichever contact details are available at the time”. In the case of designs, this is stated to be the address of the representative shown on WIPO’s records or failing that, to the address given for the owner of the international design. That letter will give the owner one month in which to provide an address for service within the United Kingdom and confirm that it wishes to contest the challenge. Once the address for service has been provided, the papers challenging the registration will be served on the UK representative, giving the normal two months term for filing a response to the challenge. If no address for service is provided within the one month period set in the UKIPO’s initial letter, the mark or design in question may be declared invalid or revoked.
Similar provisions will apply from January 1, 2024 to “cloned” UK rights deriving from applications originally filed at the EU Intellectual Property Office, but until then, under the terms of the UK’s Withdrawal Agreement from the EU, papers can continue to be served at the address for service provided to the EUIPO.
The new provisions do not apply to oppositions to registration of international trademarks in the United Kingdom, which continue to be governed by regulations made under the Madrid Protocol and for which WIPO is responsible for making proper service of opposition papers on the applicant.
In view of these changes, it is recommended that holders of international trademarks and designs designating the United Kingdom appoint a UK address for service promptly after creation of their rights to minimize the risk that the new one month term for taking action is missed.
- Challenges to which this provision applies include for example seeking revocation of the mark on grounds of non-use or otherwise, seeking cancellation of the mark or invalidation of the mark. A separate procedure applies to oppositions. ↩