Fail to Prepare; Prepare to Fail: a discussion about representation issues at the UK IPO

The UK IPO has recently introduced an important change to the rules on representation of certain kinds of trade mark rights (and indeed design rights^[1]) that have effect in the UK when they are subject to inter partes contentious proceedings^[2]. The new regime, implemented by the UK IPO’s Tribunal Practice Notice (‘TPN’) 2/2023, introduces a requirement for rights’ holders without a UK-based Address for Service (‘AFS’) to provide one as an initial step in the proceedings, before the action is formally notified. They will be asked to confirm their intention to defend the proceedings and, if so, to provide a valid UK AFS within one month. Failure to respond may result in the registration being declared invalid, revoked or rectified, or the application being treated as withdrawn.

This updated practice impacts all types of inter partes proceedings that target most kinds of rights without a valid UK AFS, although it is likely that, in practice, UK designations of international registrations will be the most common type of rights that are affected. Prior to the change, problems were encountered when a trade mark right under attack had an AFS that was not in the UK – be that the owner’s own address or that of its representative – meaning that there were doubts over whether or not there had been effective service of the notification of the action by the UK IPO.

The Appointed Person’s decision in MARCO POLO

The subject of UK representation and effective service came to the fore in the Appointed Person’s Decision in Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22), which concerned the mark MARCO POLO. It was decided that the UK IPO has no power to serve outside of its own jurisdiction and so cannot, therefore, validly effect service without having first obtained a valid UK AFS for the challenged right.

The MARCO POLO case involved a situation where an invalidity action was sent by the UK IPO directly to the owner of the challenged UK designation in Australia. Ultimately, Geoffrey Hobbs KC (sitting as the Appointed Person) held that he did “not agree that ‘service’ can be validly affected if and while there is no…[UK] “address for service”. The UK Trade Marks Rules 2008 (the ‘Rules’) do not grant the UK IPO discretion to serve documents outside the jurisdiction, which resulted in a situation in MARCO POLO where the notification of the invalidity application that was mailed to the proprietor in Australia did not trigger the statutory two-month deadline for filing a defence; that deadline to file a defence should have only started running once the owner provided the UK IPO with a valid UK AFS. Instead, the UK IPO was only empowered to write to the Australian address to set a one-month deadline for appointing a UK AFS, and not to actually serve the application for invalidity. As such, the owner’s deadline for filing a defence to the invalidity action was not missed and so the right holder was not in default.

The Appointed Person also clarified in his decision that the requirement for an application for a trade mark to provide a UK AFS (under Rule 11(1)(a) of the Rules) applies equally to owners of international registrations who wish to designate the UK, although we understand that there are currently no plans to require a UK AFS to be appointed at the time that a new international application or subsequent designation is submitted at WIPO.

Future practice after MARCO POLO: defensive cancellation and rectification actions against protected UK designations

Going forwards, where a UK AFS is not already in place for the challenged UK designation, the UK IPO will write by mail to the WIPO representative (or directly to the owner of the right if a WIPO representative has not been appointed) to seek confirmation of whether there is an intention to defend the proceedings and, if so, to require that a valid UK AFS is provided within an unextendible time period of one month.

Whilst the initial letter from the UK IPO will be sent by signed-for mail, since the UK IPO does not have access to any correspondence email addresses held by WIPO for the international registration in question, the response may be submitted to the UK IPO by email, with a UK IPO reply email address being indicated in the letter.

If it receives a satisfactory response from the rights holder or its representative, the UK IPO will then formally serve the cancellation or rectification action on the newly-recorded UK AFS. This will begin the unextendible two-month time period for the filing of a defence (known as a ‘TM8 and counterstatement’). On the other hand, failure to comply with these requirements ought to result in the registration being declared invalid, revoked or rectified, although – somewhat frustratingly for the party behind the cancellation or rectification action – the rights holder will first be given a short opportunity to raise any exceptional extenuating circumstances that might genuinely explain the default.

There is also a further scenario that is rather unsatisfactory for the cancellation or rectification applicant, whereby the rights holder responds to the initial letter from the UK IPO by indicating its intention to defend the proceedings but does not appoint a UK AFS. Under this situation, the UK IPO will again write to the rights holder to set a further one-month period in which to provide a UK AFS, else the designation will face the sanctions outlined above. There seems to be a possibility that this could be exploited in order to drag out and frustrate the proceedings.

What about oppositions against pending UK designations?

The UK IPO’s TPN 2/2023 confirms that there is essentially no change to the current practice with regards to notification and effective service of oppositions filed against pending UK designations of international registrations. A ‘notice of provisional refusal based on an opposition’ will immediately be sent to WIPO upon receipt of an opposition by the UK IPO, who will then transmit those grounds to the holder of the international registration. This transmission by WIPO constitutes effective service of the opposition. The rights holder is not required to appoint a valid UK AFS at the UK IPO at this stage.

At the same time, the UK IPO will continue its current practice of also sending a notification about the receipt of an opposition directly to the rights holder, using the non-UK contact information held by WIPO. This duplicate letter will confirm that a defence must be filed within the already-activated and unextendible two month period and that a valid UK AFS will be required in order to contest the opposition beyond initial submission of the defence papers.

Importantly, a UK AFS is not required for filing the defence itself. If that is what happens, the UK IPO will then write (likely to again be by mail) to the rights holder to indicate that a valid UK AFS must be provided within an unextendible time period of one month, or else a notice of final refusal of the designation will be issued to WIPO.

What about defensive cancellation actions against Brexit ‘clone’ UK trade mark registrations?

The Brexit Withdrawal Agreement between the EU and UK means that the UK IPO cannot require owners of ‘clone’ trade mark registrations to provide a UK AFS for these rights during a period of three years following 1 January 2021.

The new practices set out by the UK IPO’s TPN 2/2023 will not therefore apply to cancellation actions against Brexit ‘clone’ UK trade mark registrations that are launched before 1 January 2024. For any such cases, the UK IPO will be able to effect service via an AFS in the European Economic Area (‘EEA’) that was inherited from the ‘parent’ EUTM registration – whether that is the EEA address of the rights holder itself or its EU representative – unless of course a UK AFS has since been appointed.

What about future representation of the Brexit ‘clone’ UK trade mark registrations themselves?

While there is no statement yet from the UK IPO, it is largely expected that the standard rules on representation and addresses for service for UK trade mark applications and registrations, namely that owners based outside of the UK must provide a valid UK AFS (which includes the Isle of Man, Gibraltar or the Channel Islands), will also apply to Brexit ‘clone’ registrations from 1 January 2024, but only when those rights are involved in contentious proceedings. Rights holders are advised to anticipate this change ahead of time by appointing a UK representative / AFS as soon as possible.

And what about defensive cancellation actions against normal UK trade mark registrations?

If a ‘normal’ UK trade mark registration is newly challenged, and the owner’s AFS is outside the UK, a UK AFS will need to be provide in order for it to be able to engage in those proceedings. If this is not done, then the proceedings against the registered mark may succeed without the owner’s involvement.

What is the AFS requirement for offensive oppositions and cancellation actions?

Currently, opponents and cancellation applicants who commence (or have commenced) proceedings between 1 January 2021 and 1 January 2024 must provide a UK AFS, unless the opposition or cancellation action is based on a Brexit ‘clone’ UK registration, in which case an AFS in the EEA will be sufficient.

However, the UK IPO has announced that, with effect from 1 January 2024, a UK AFS will also be required when new contentious proceedings are launched based on those Brexit ‘clone’ registrations as well.

Are there any changes to rules on representation of UK designations of international registrations?

The UK IPO will not request a UK AFS on receipt of an UK designation of an international registration from WIPO. However, a valid UK AFS will be required if objections are raised which result in a notice of provisional refusal being issued to which the holder wishes to respond.

What is the position with regards to representation at the EUIPO and German trade mark office (‘DPMA’)?

Representation at the EUIPO

Rights holders located or established in the EEA do not require to be professionally represented in any proceedings before the EUIPO, although this is usually recommended.

However, foreign rights owners (those located or established outside of the EEA) must, in general, be represented by a representative based within the EEA. Potential consequences of not having the requisite representative appointed include the refusal of an EUTM application or an EU designation of an international registration and the inadmissibility of an opposition or cancellation action.

Following Brexit, and the United Kingdom’s exit from the European Union (and EEA), UK trade mark professionals are no longer be able to represent EUTMs or EU designations. At Mewburn Ellis though, partner Jan Rether leads a team of German attorneys-at-law, based in our Munich office, that is expert at handling matters before the EUIPO and ensures that we can continue to represent, enforce and defend our clients’ EU trade mark rights.

Representation at the DPMA (the German PTO)

The situation at the DPMA is essentially the same as at the EUIPO:

• For domestic rights owners, namely entities that are located or established in Germany, it is not mandatory to be represented before DPMA.
  
  
• For foreign rights owners (namely rights holders who do not have a domicile or establishment in Germany) local representation is required to take part in proceedings before the DPMA. A local representative must be a German or EU patent attorney or attorney-at-law. Potential disadvantages of not appointing a local representative include the refusal of an application or a German designation of an international registration or the inadmissibility of an appeal filed. In contentious matters, possible disadvantages include the inadmissibility of an opposition or an appeal.

Practical guidance and recommendations

Regardless of the differences in practice between different kinds of UK trade mark rights and different types of action, and also regardless of whether it is strictly required, the best advice for rights holders is to proactively appoint a UK AFS (and preferably a qualified UK IPO representative), including in order to safeguard the timely and safe service of documents and notifications by the UK IPO. Doing so will help to ensure that a range of possible problems are avoided, such as the following which are all real examples that we have encountered:

• Official deadlines being missed, due to the slow delivery of UK IPO correspondence by mail to international addresses (we have recently seen evidence that a UK IPO letter took two weeks to be received by the addressee in Toulouse, France);
  
  
• Late receipt of UK IPO notifications about conflicting applications (triggered by the examination search report), that could hamper a potential opponent from taking action;
  
  
• Non-UK representatives filing incorrect forms in proceedings before the UK IPO, which may result in extra costs being incurred by the rights holder; and/or
  
  
• Recipients of UK IPO official correspondence simply misinterpreting what’s required.

The general advice, to proactively review UK trade mark rights in order to ensure that there is a UK AFS already in place, seems particularly pertinent for UK designations of international registrations in view of the changes to the UK IPO’s practice, although the principle would also appear apply to other forms of UK trade mark rights too. It would equally seem to be best practice to ensure that any EUTM registrations, EU designations and/or German designations are also locally represented.

We can help you review all of your relevant marks in four ways:

1. Identifying which UK designations, Brexit ‘clone’ UK registrations or normal UK registrations do not currently have a UK AFS already in place. We could, for example, send you the results of a search of the WIPO register based on ‘Holder’ or ‘WIPO Representative’ name, where the UK is designated;
   
   
2. Similarly, we can also assist with the identification of any EUTM registrations or EU designations for which an EUIPO representative is not appointed, plus any German designations that are not locally represented at the DPMA;
   
   
3. Checking for existing local representation at the UK IPO, EUIPO or DPMA for any trade mark lists that you supply to us; and/or
   
   
4. Appointing ourselves as UK IPO representative for your UK designations that do not currently have a valid UK AFS in place, as well as appointing ourselves to represent any other relevant trade mark rights at the UK IPO, EUIPO or DPMA, thereby helping to prevent the problems outlined above from arising.

Please contact us if you would like more information about these services that we can provide.

Finally, whilst the UK IPO does not seem to be going down the route of many Madrid Protocol member states of requiring holders to appoint a local representative upon designation of the territory under an international registration, such as we understand is required by the USPTO (as we have discussed in a previous blog article), it would nevertheless still seem to be wise for holders of UK designations to appoint a bona fide UK AFS on filing of the international registration (or subsequent designation), so that any actions that arise during the prosecution of the case by the UK IPO are reported and handled expeditiously.

At an absolute minimum, rights holders and their non-UK representatives / AFS must ensure that the correspondence address is kept up to date on the UK register. They should also regularly monitor for receipt of any incoming UK IPO correspondence, as there may be quite short deadlines associated with it, particularly once delays in delivery by mail are considered.

References

1. This article focuses on the changes as applicable to trade mark rights. Please contact us for more information regarding the impact on design rights.
2. Namely defensive trade mark invalidation, revocation, rectification and opposition proceedings.