MARCO POLO Decision Confirms Importance of Data Integrity for Owners of U.K. IP

The U.K. Intellectual Property Office’s (UKIPO) policy with regard to service of documents in contentious trade mark and design proceedings has recently changed following the decision of the Appointed Person in the MARCO POLO case (Tradeix Ltd v New Holland Ventures Pty Ltd). As a result, the time frame for owners of challenged U.K. rights to record a domestic address for service and express an intention to defend has been cut to just one month in certain situations. For those owners who have an outdated owner or representative address on record, the consequences could be an irretrievable loss of rights.

The decision and the UKIPO reaction

The MARCO POLO decision found that the Registrar has no power to serve outside of jurisdiction, and cannot validly effect service without an address (owner address or representative address) in the U.K., Gibraltar or Channel Islands (U.K. AfS) for the challenged right.

As a consequence, the UKIPO has introduced a new practice for handling matters where there is no U.K. AfS.

New, one-month window with respect to applications for invalidation, revocation on the grounds of non-use, revocation on grounds other than non-use and rectification

Following the change in the UKIPO’s policy, where there is no U.K. AfS, a letter will be posted to whichever contact details are available to the Registrar at that time. Where an international registration (IR) (U.K.) or design registered under the Hague Agreement is involved, such details will be either the (non-U.K.) address of an overseas representative as held in the World Intellectual Property Organization (WIPO) record or the holder’s own address. Where representative details are available, they will be used in preference to the holder’s address.

In response the IP owner will need to provide a U.K. AfS and express an intention to defend the challenged right within one month of the date on the letter.

Failure to respond in this one-month window may result in the Registrar treating the invalidation or revocation application as undefended and subsequently declaring the challenged right to be invalid or revoked. Similarly, failure to respond to the letter reporting on a third-party rectification application may result in the Registrar deeming the IP owner not to object to the Register rectification being requested.

In contrast, if there is a U.K. AfS, the proprietor has two months to respond to the first communication from the UKIPO.

Exclusion of U.K. comparable trade marks from the new policy

Where the challenged right is a comparable trade mark derived from a European Union trade mark (EUTM) due to Brexit, the procedure set out above will not apply and service will be effected via the European Economic Area (EEA) address provided in the data inherited from the European Union Intellectual Property Office. Assuming the correct details have been carried over to the corresponding U.K. right, the time available for the IP owner, who may need to confer with the EEA addressee notified and potentially also U.K. representation, will be cut.

Trade mark oppositions against a WIPO International Registration designating the U.K.

For trade mark oppositions against U.K. applications designated via WIPO’s International Registration system, the procedure is different, as notification via WIPO is deemed effective notification. A two-month period for responding to the opposition and appointing a U.K. AfS will apply. Given that opposition will happen shortly after filing, the risk of wrong addresses is much diminished.

Summary

IP owners without a U.K. AfS for U.K. rights are urged to check that portfolio details are up to date to ensure any letter from the UKIPO reaches them with time to spare.

Owners of U.K. comparable trade marks derived from an EUTM are also reminded that a U.K. AfS will be required for contentious matters that commence after 1 January 2024.

For owners of International Registrations of trade marks designating the U.K., while appointment of a U.K. address for service will not be required unless a mark is opposed, it may be prudent to appoint a U.K. address for service once the mark is protected in the U.K., as this mitigates the risk of being faced with a shortened period for response if there is subsequent attack.

In short, appointing a U.K. AfS in all cases provides a reasonable default position.