The IPO has confirmed that it will no longer serve documents relating to intellectual property disputes to non-UK addresses.
This includes trade mark invalidation, revocation, rectification and opposition proceedings and registered design invalidation.
What has changed?
When applying for a registered trade mark or registered design with the IPO, an applicant must specify an address for service and has the option to appoint a legal representative. Upon successful registration of the trade mark or design, this address will feature on the Trade Marks or Designs Journal.
Before the change in practice, parties seeking to register trade marks or registered designs could specify an address for service outside of the UK. If those applications were challenged or the registrations subsequently became the subject of an intellectual property dispute then documents could be served on those parties outside of the UK. However, the IPO will now seek to obtain a UK address for service before the formal service of any documents.
What does this mean for my registered trade marks and registered designs?
The applicant or owner of a registered trade mark or design will be asked to confirm its intention to defend proceedings and provide a valid UK address for service within a period of one month from the date of communication. Failure to respond within the strict deadline may result in the trade mark/design application being treated as withdrawn or, in the case of a challenge, the registered trade mark/registered design being declared invalid, revoked or rectified.
The effect of this change is that a trade mark or design owner without a UK address for service risks losing their IP rights.
How can Tozers help?
You should immediately appoint a UK legal representative to be the point of contact for existing UK national registrations, comparable registrations and UK designations of international rights.
We suggest that a UK representative is appointed as soon as possible for recently filed applications for international trade marks or designs with the World Intellectual Property Organization (WIPO).
Protect your UK intellectual property rights by appointing Tozers as your legal representative.
Find out more
The law surrounding the protection of trade marks in the UK is complex. If you would like help or support with trade marks then contact our expert team.