The UKIPO International Trademark Registration Process May Change

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A United Kingdom (UK) direct trademark application to the United Kingdom Intellectual Property Office (UKIPO) contains the requirement to name a UK address for the service. In contrast, UKIPO has a permanent practice of processing international trademark registrations via the Madrid Protocol designating the UK without requiring a UK service address. UKIPO would only require specifying a UK service address in cases where objections or oppositions are raised in relation to international trademark registrations during prosecution. However, the recent MARCO POLO decision (O/681/22) has challenged this UKIPO practice.

The case

The owner of the MARCO POLO brand, New Holland Ventures Pty Ltd, is an Australian company. The mark was entered on the International Register in 2020 and subsequently obtained a UK registration in 2021. As no objections or oppositions to the mark were raised upon registration, UKIPO does not has not required the Holder to provide a UK address for the Service. The only addresses available in the UKIPO records were those of the owner and the WIPO representative.

Tradeix Ltd has filed invalidity proceedings against the designation of MARCO POLO in the UK. Notification of this action has been mailed to the Holder’s offices in Australia. However, due to the COVID-19 lockdown in Australia, the Trademark Holder’s offices were closed and as a result the notification was not received or responded to within the applicable two month period. In the absence of a defence, UKIPO issued a declaration of invalidity. It was again mailed to the holder’s Australian address, but not received by him, and was also delivered to the International Bureau, which informed the holder’s representative at WIPO. The trademark proprietor then appointed a UK representative and appealed against UKIPO’s invalidity decision.

decision

The named person concluded that the invalidity claim had not been properly served on the holder, as UKIPO does not have the power to serve documents outside the jurisdiction. The UKIPO could only validly serve a notification asking to specify an address in the United Kingdom to the owner of the Australian trademark, which would impose a time limit of one month. As such, the declaration of invalidity was quashed and the proceeding was forwarded for further processing.

lessons to learn

Following the MARCO POLO judgment, it is highly likely that UKIPO practice will be reviewed. However, in the meantime, we strongly recommend that you appoint a UK representative for all international trade mark registrations designating the UK as soon as possible.

Copyright 2022 K&L GatesNational Law Review, Volume XII, Number 279

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