Change to the UKIPO procedure for International TM and Design Applications

On 25 January 2023, the UKIPO issued an alert concerning their handling procedures in trade mark invalidation, revocation, rectification and opposition proceedings, and registered design invalidation proceedings. These changes which require a UK address for service effect international marks that are designating the UK or marks filed directly by overseas owners.

As a consequence of these changes we recommend you appoint a UK representative at the time of designating the UK in an International Application for trade marks or designs. In some circumstances failure to appoint a UK representative as an address for service can lead to partial or full cancellation of UK rights that are the subject of a third-party challenge.

Further information on the changes

• Until now, applicants and proprietors of contested UK rights have been issued with documents via delivery to non-UK addresses. This practice has now been discontinued. The UKIPO will now seek to obtain a UK address for service (AFS) before any formal serving of documents.
• If no UK representative is showing on WIPO’s files, the request for a UK AFS will be sent to WIPO representative by post only. The notice will give the holder a one-month period to appoint a UK representative. Failure to do so in this time period will result in any prior cancellation actions or revocations to be classed as undefended and could potentially result in a partial or full cancellation of rights in the UK.
• Where an opposition is made against a published International Registration designating UK it is still possible to file a defence and counterstatement without a UK AFS. However, if further action is needed, the UKIPO will now require a UK address for service. If the defence and counterstatement is non-complaint with UKIPO procedure, and no UK AFS has been provided there is a risk it will be rejected leading to a default decision being entered against the holder. We therefore recommend a UK representative is appointed for all UK designated marks subject to opposition procedure.
• A UK address for service is not needed to update the register when proceeding with administrative updates such as renewing or surrendering a registration or requests by the rights holder to change the registered address.
  
  

How can TLT help

TLT would be happy to help by appointing us as representatives for any UK designating international marks. If you wish to talk this through with us, please contact us: