A UK address for service should preferably be recorded against IRs (UK), comparable UK marks and re-registered designs to avoid potential loss of rights

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Following the recent decision in the Marco Polo case, we recommend that a UK address for service be immediately recorded against all:

UK designations of International trade marks and designs (IRs (UK)),
comparable UK trade marks (deriving from EUTMs), and
re-registered designs (deriving from RCDs).

Even though it is still permissible to have a non-UK address for service for these marks and designs, we do not recommend it. This is because of the increased risk of an important communication from the UK IP Office not being seen or acted on where there is a non-UK address for service. This is what happened in the Marco Polo case, which has highlighted the risk. A notice of invalidity sent by the UK IP office to the holder of an IR (UK) in Australia was not seen in time resulting – at least initially - in the registration being invalidated for failure to file a defence (see more here). Where a defence is not filed in UK IP Office inter partes proceedings, the application/registration is nearly always deemed withdrawn/invalid/revoked/rectified (as appropriate), by default – and this happens quickly.

The risk of that happening has now yet further increased following a recent change in UK IP Office procedure. The holders of registered IRs (UK) with a non-UK address for service will now only be given one month in which to respond to a request to appoint a UK address for service where inter partes proceedings have been commenced against the registration in question. Previously, they were given two months in which to appoint a UK address for service and file a defence. (This change in practice also follows the Marco Polo ruling which held that the UK IP Office cannot validly serve proceedings outside the UK jurisdiction. It must now request a UK address for service and only if such an address is appointed can it validly serve proceedings.) The new practice will apply immediately, including to all proceedings suspended since the Marco Polo ruling.

Whilst this change of practice does not apply to comparable UK trade marks (except those deriving from IRs designating the EU) and re-registered designs, it is still worth appointing a UK address for service against these rights given the risk of an important communication not being seen or acted on where there is a non-UK address for service. In any event, these registrations will require a UK address for service if inter partes proceedings are commenced against them from 1 January 2024 onwards.

We therefore recommend that clients review all IRs (UK), comparable UK trade marks and re-registered designs to ensure that a UK address for service is appointed against them. Taylor Wessing can help with this process.