Statutory guidance

Tribunal Practice Notice 2/2023: Effective service in proceedings against trade marks and registered designs without a valid UK address for service

Published 25 January 2023

What is changing?

1. 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.

2. Following the Appointed Person’s decision in Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22), this practice is being discontinued. With immediate effect, the Registrar will now seek to obtain a UK AFS before any formal serving of documents. That includes proceedings which have been suspended since the Appointed Person’s decision. Via the introduction of a new communication posted to the non-UK address held by the Registrar, the applicant or proprietor/holder (hereafter referred to as ‘the holder’) will be asked to confirm its intention to defend the proceedings and to provide a valid UK AFS within a period of one month from the date of the communication[footnote 2]. The Registrar will specify the consequences of failure to comply, which may result in the registration being declared invalid, revoked or rectified, or the application being treated as withdrawn. Full details of the Registrar’s new practice, and the legal bases on which it relies, are set out at paragraphs 7-20 below.

3. In most cases, registered/protected rights which are not accompanied by a valid UK AFS are likely to be those obtained through the International (Madrid Protocol and Hague Agreement) routes. Similarly, applications without a valid UK AFS facing opposition are likely to be UK designations of International Registrations (‘IRs’) that have been published by the IPO. The new procedures set out below will, therefore, be most commonly applied to Tribunal proceedings involving International Registrations that designate the UK. Further details about how and where specific interactions with the World Intellectual Property Organisation (‘WIPO’) occur are referenced at paragraphs 12, 13, 14, 17 and 20 below.

4. It should be noted that this new approach regarding UK AFS has no impact or effect upon ex parte proceedings. Our practice in relation to new UK designations, received from WIPO and intended for examination under UK law, will remain exactly as it currently stands. We will not request a UK AFS on receipt of an IR(UK) from WIPO. We will receive it, examine it, and will only require a valid UK AFS if objections are raised which result in a notice of provisional refusal to which the holder wishes to respond.

Why are we changing?

5. In Tradeix Ltd v New Holland Ventures Pty Ltd, the Appointed Person determined that the Registrar has no power to serve outside of jurisdiction, and cannot validly effect service without having first obtained a valid UK AFS for the challenged right. With reference to powers conferred on the Registrar by Rule 62 of the Trade Mark Rules 2008, the decision envisages a different approach involving the establishment of a valid UK AFS prior to any service being undertaken. This notice confirms that the Registrar is now adopting such an approach and extending it to analogous proceedings concerning registered designs using the powers conferred by Rule 19 of the Registered Designs Rules 2006.

6. 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.

New approach (1): Invalidation, revocation on the grounds of non-use, revocation on grounds other than non-use, and rectification

Issuing of Rule 62 (trade marks) / Rule 19 (registered designs) directions requesting a valid UK AFS

7. On receipt of a Form TM26(I), TM26(N), TM26(O), TM26(R) or DF19A (hereafter referred to as ‘the application form’), the caseworker will examine the pleadings in the normal manner and check that the challenged registration holds a valid UK AFS. Where one has not been recorded (and where the Registrar is satisfied that the applicant’s pleadings are acceptable), the caseworker will issue a preliminary letter directing that, within a period of one month from the date of the letter, the holder shall provide the Registrar with a valid UK AFS along with confirmation of its intention to oppose the application for invalidation/revocation/rectification. Where the challenged registration is a trade mark, these directions will be made under Rule 62(1); where it is a registered design, they will be made under Rule 19(3). For information purposes only, the letter will also enclose a copy of the application form.

8. This letter will be posted using Royal Mail’s Signed-For service, using whichever contact details are available to the Registrar at that time. Where an IR(UK) or design registered under the Hague Agreement is involved, such details will be either the (non-UK) address of an overseas representative as held in the WIPO record or the holder’s own address. Where representative details are available, they shall be used in preference to the holder’s address.

9. Pursuant to Trade Marks Rule 62(3) and Registered Designs Rule 19(5), the letter will also stipulate the consequences of failure to comply. In the case of trade mark and registered design invalidation/revocation proceedings, the directions will state that the Registrar may treat the holder as not opposing the application, and that registration of the mark/design may be declared invalid or revoked. In the case of rectification, the holder may be treated as not objecting to the correction of the error or omission.

10. Notwithstanding that the express purpose of these directions is to satisfy the requirements of Rule 11(1) of the Trade Mark Rules and Rule 42 of the Registered Design Rules, which require a valid UK AFS (and which may then be used for future postal communication including effective service), the holder may initially wish to use email in order to provide the Registrar with the information sought within the one-month period. With that in mind, the directions letter will include an IPO email address that can be used by the holder to provide the necessary UK AFS. Alternatively, the holder may choose to post its response to the IPO.

Outcomes following compliance/non-compliance with Rule 62 directions

11. Where the holder complies with the directions by providing a valid UK AFS within the one-month period, the Registrar shall deem it to have expressed an intent to defend the proceedings, and will serve the application form in the normal manner i.e. via Royal Mail’s Signed-For service, and addressed to the (newly-recorded) valid UK AFS. In this scenario, where a completed Form TM8 and counterstatement are still required in order to defend the proceedings, it should be noted that the two-month period for filing such a defence will commence from the date of effective service, not the earlier date on which the Rule 62/Rule 19 directions were issued.

12. Where the holder fails to provide a valid UK AFS, the consequences shall be those set out in the directions under Rule 62(3)/Rule 19(5). The Registrar will treat the right as it does in any other proceeding where no defence is filed i.e. a letter will be issued to the holder, confirming the Registrar’s intent to treat the application as undefended and to declare the trade mark/registered design invalid or revoked. This letter will be posted and, where possible, emailed, to the (non-UK) postal and email address(es) held on file, and the standard fourteen-day period set for reply. The holder may, within that short period, request a hearing, whilst failure to respond will result in the Registrar issuing a short decision on the undefended application. On expiry of the appeal period, the trade mark/design shall be declared invalid, revoked or rectified and, where the challenge was directed against a protected International Registration (UK), WIPO shall be informed accordingly.

13. Where the holder responds to directions by confirming their intent to defend the proceedings but does not provide a valid UK AFS, the Registrar shall treat them as having met the criteria set by Trade Marks Rule 11(1)(d)/Registered Designs Rule 42(1)(c) i.e. they shall be treated as “a proprietor of the registered mark/design who opposes such an application”. As such, and with reference to Trade Marks Rule 12(2)/Registered Designs Rule 43(2), the Registrar will issue a second letter requesting a valid UK AFS. As with the first communication, this letter will be posted to the (non-UK) address using Royal Mail’s Signed-For service and, where possible, emailed. This will provide the holder with a further one-month period in which to provide the required information. Failure to do so will result in the consequences set out in Rule 12(4)(d)/43(4)(c) and the Registrar will issue a short decision as above. Again, where the challenge was directed against a protected International Registration, WIPO shall be informed accordingly.

New Approach (2): Trade Mark opposition against published International Registration (UK)

Service of opposition effected by WIPO

14. On receipt of a Form TM7 opposing a published IR(UK), the Registrar will continue to act in accordance with the requirements of the Madrid Agreement and associated Common Regulations. A ‘notice of provisional refusal based on an opposition’ will immediately be sent to WIPO, who will then transmit those grounds to the holder of the international registration. This transmission by WIPO constitutes effective service of the opposition, and does not - at this stage - require the holder to deposit a valid UK AFS at the IPO.

15. Notwithstanding WIPO’s primary role as effective server of the opposition notice, the IPO will continue its current practice of issuing a letter to the IR(UK) holder using the (non-UK AFS) address details provided by WIPO. Duplicating information already communicated to the holder via WIPO’s transmission, this IPO letter will confirm that a counterstatement is required inside of the (activated) two-month period in order to initiate a defence. It will also confirm that a valid UK AFS will be required, via submission of a completed Form TM33, in order to contest the opposition and engage beyond initial submission of the TM8 and counterstatement.

16. At the point of receiving the WIPO notice and IPO letter, the holder need only submit a completed Form TM8 and counterstatement within the two-months reply period. It may choose to accompany its Form TM8 with a Form TM33 recording a valid UK AFS, but it is not required to do so. A Form TM8, submitted inside of the deadline, is sufficient notice to the Registrar that the holder intends to defend the challenge.

17. Regardless of whether a valid UK AFS has been forwarded to the IPO, failure to submit a completed Form TM8 and counterstatement within the relevant period will result in the application being treated as abandoned in respect of those goods/services against which the opposition was directed, pursuant to Rule 18(2). In accordance with standard procedure relating to non-defence, a confirmatory letter will be posted to the non-UK address recorded in the WIPO data, and a fourteen-day period set for reply. During that period, the holder may request a hearing. Otherwise, a notice of final refusal shall be issued to WIPO.

Subsequent issuing of Rule 12 directions (where necessary)

18. Where, in response to the WIPO notice and IPO letter, the holder submits both a counterstatement/Form TM8 and a valid UK AFS/Form TM33 at the same time, proceedings will continue in accordance with normal practice i.e. the defence will be examined by the caseworker, and proceedings may subsequently progress into evidence rounds.

19. Where the holder submits a counterstatement/Form TM8 but fails to provide a UK AFS/Form TM33, the Registrar shall issue directions under Rule 12(1). As with the approach described above for invalidations, revocations and rectifications, these directions will be issued via a letter posted and emailed directly to the address(es) held in the WIPO data, and will require that a valid UK AFS be provided within a period of one month. Using powers conferred by Rule 12(4)(a), the Registrar will specify that failure to comply will result in the application (in this case, the UK designation) being treated as withdrawn.

20. Where the holder fails to provide a valid UK AFS, the Registrar shall issue WIPO with a notice of final refusal. As is the case where no counterstatement/Form TM8 has been provided, these consequences will apply only in respect of those goods/services against which the opposition was directed.

Additional Notes

21. Where problems with a Form TM26(I), TM26(N), TM26(O), TM26(R), TM7 or DF19(A) are identified by the caseworker, and related correspondence is sent to the applicant for invalidity/revocation or the opponent, the Registrar will continue to provide a copy to the holder. This copy will be sent before any consideration is given to the need for a UK AFS and/or Rule 62/Rule 19 directions letter, and so may be sent to a non-UK address. In the interests of expediency, any such copy letter sent to the holder will include reference to the absence of a valid UK AFS and confirm that, if or when outstanding issues related to the pleadings are resolved by the applicant/opponent, the Registrar shall then seek the holder’s confirmation of intent to defend and receipt of a valid UK AFS. Such action may encourage early provision of a valid UK AFS and thereby avoid the need for directions to be issued and enforced later in the proceedings.

22. Where the target of an invalidation or revocation proceeding is a comparable trade mark derived from an EUTM created at the end of the transition period, and such proceedings are launched at any time prior to 1 January 2024, the new practices described above will not apply i.e. service will be effected via the EU AFS as provided in the data inherited by IPO from the original EU Trade Mark. This is consistent with practice and impacts as set out in Tribunal Practice Notice 2/2020.

23 In Yeti Coolers LLC v Yetigel International S.A. (BL O/1128/22) (issued after Tradeix Ltd v New Holland Ventures Pty Ltd), the Appointed Person determined that at least in the context of comparable marks, a single address that (a) meets the geographical requirements for an address for service, and (b) is recorded in the register, can serve as both the address of the proprietor and the address for service. This decision is consistent with the Registrar’s current practice in scenarios where the particulars of a registration include (only) a single postal address and that address meets the criteria set out in Rule 11(4). In such circumstances, the Registrar shall continue to use the address for the purpose of effecting service in proceedings relating to comparable marks and other UK-registered trade marks.

Timing

24. This practice will be implemented with immediate effect, including to all proceedings suspended since the Appointed Person’s decision in Tradeix Ltd v New Holland Ventures was issued.

  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. 

  2. A UK address for service can be recorded via submission of a completed Form TM33