Following the Appointed Person’s decision in MARCO POLO, the UK IPO is suspending all pending opposition and cancellation matters where the holder of the contested UK designation of an International Registration’s address for service is outside of the UK. It is likely the UK IPO will shortly adopt a new procedure, which may request a UK-based address for service for all UK designations of International Registrations.

UK IPO’s current practice

The UK IPO’s practice to date has been to request a UK-based address for service from the holder of the International Registration when the UK designation is subject to an objection from the UK IPO, a third-party opposition or cancellation action. Where none of these interruptions occur, a UK designation will proceed to grant and sit on the UK register without a UK-based address for service. However, this procedure is likely to change following Geoffrey Hobbs KC’s (sitting as an Appointed Person) decision in MARCO POLO (O/681/22).

Factual Background

New Holland Ventures Pty Ltd., (the “Proprietor”) filed an International Registration that was registered by WIPO in June 2020. The International Registration designated, amongst others, the UK. The Proprietor’s address, and that of its appointed legal representatives, was listed on the International Registration as being based in Australia. However, the Proprietor’s legal representatives had specified on the application for the International Registration that email was the ‘dedicated communication channel’.

In December 2020, the UK IPO granted protection to the UK designation and informed WIPO. WIPO informed the Proprietor’s Australian based representatives via email in January 2021. At no point did the UK IPO request the Proprietor or its representatives provide the UK IPO with a UK based address for service (which for clarity would have had to be a physical address as an email address is insufficient on its own under UK law).

Service of the Invalidity Action

On 18 May 2021, an invalidity action was filed on the basis that there was a likelihood of confusion between the UK designation and an earlier UK trade mark registration.

Under the Trade Mark Rules 2008, the UK IPO is required to send a copy of the invalidity action to the Proprietor (or its representative) and provide them with a date for filing a defence and counterstatement. On 26 May 2021, the UK IPO sent a copy of the invalidity action to the Proprietor by registered post at its registered office address in Melbourne, Australia. In the letter, the Proprietor was asked to provide the UK IPO with a UK-based address for service. This letter was not copied to the Proprietor’s representatives.

On 12 August 2021, the UK IPO sent a default notice (saying that the registration would be declared invalid unless the Proprietor responded within a specified period of time) to the Proprietor by registered post at its registered office address in Melbourne, Australia. This letter was not copied to the Proprietor’s representatives either.

On 29 March 2022, the UK IPO issued a declaration of invalidity and informed WIPO. WIPO sent a copy of the declaration to the Proprietor’s representatives in Australia. The Proprietor received the decision and instructed its UK-based legal representatives to file an appeal on the basis that that UK IPO treated the Proprietor as not opposing the invalidity application without knowing all the facts and circumstances of the case. In other words, the Proprietor had not been given a proper opportunity to defend the invalidity action.

The Proprietor’s UK-based representatives requested a copy of the invalidity application, which the UK IPO provided to them and two days later the Proprietor filed its defence.

Appointed Person’s Decision

Under UK law, the Proprietor’s address in Melbourne was not an “address for service” to which the letters of 26 May 2021 and 12 August 2021 could have been “properly addressed” and, therefore, the invalidity application and default notice had not been validly served by post. Instead, the UK IPO should have written to the Proprietor’s Australian address requesting they appoint a UK-based address before sending the invalidity application to the UK-based address.

As a result, the UK IPO’s decision to declare the UK designation invalid was set aside and the appeal was allowed.

Practical considerations

As the UK IPO are suspending all pending opposition and cancellation matters where the holder of the contested UK designation’s address for service is outside of the UK, it is likely the UK IPO will shortly adopt a new procedure in circumstances such as these. This may just be to change how the UK IPO notifies Proprietors of actions, or they may require a UK-based address for service for all UK designations of International Registrations.

While we do not know exactly what new procedure the UK IPO will adopt, it makes sense for non-UK-based brand owners of UK designations with no UK-based address to instruct a UK-based representative immediately to ensure that relevant correspondence is received and acted upon without delay.

Please do not hesitate to get in contact if you are affected by this and require UK representation.