This notice sets out a change in practice regarding the Registrar’s service of documents in inter partes trade mark invalidation, revocation, rectification and opposition proceedings, and registered design invalidation proceedings. It specifically concerns applications and registered/protected rights that do not hold a valid address for service (‘UK AFS’) [footnote 1]. Until now, applicants and proprietors of such contested rights have been issued with documents via delivery to non-UK addresses. Further, the Registrar has historically deemed such action to constitute effective service for the purpose of setting the two-month period for filing a defence.
The new practice impacts all types of inter partes proceedings that target rights without a valid UK AFS. However, procedural differences between invalidation, revocation and rectification actions (where service is effected by the IPO) and trade mark opposition actions against IR(UK)s (where service is primarily effected by WIPO) means that this notice sets out two distinct approaches. The first deals with invalidation, revocation and rectification proceedings against any UK right (whether a national registration or a protected IR(UK) designation). The second specifically addresses opposition proceedings against published IR(UK) trade mark designations.
Footnote 1
Criteria for a valid UK address for service are set out in Rule 11(4) of the Trade Marks Rules 2008 and Rule 42(4) of the Registered Designs Rules 2006, as amended by The Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020. Where an applicant or proprietor does not have legal representation, its own postal address will qualify as a valid UK AFS provided that it is in the United Kingdom, Gibraltar or the Channel Islands. ↩