How are proceedings against trade marks and registered designs without a valid UK address for service affected by the UK Intellectual Property Office’s (UKIPO) change of Tribunal Practice Notice 2/2023?

In invalidation, revocation, and rectification proceedings relating to registered designs and trade marks, the UKIPO will now check that the challenged registration holds a valid UK AFS. Where a UK AFS has not been recorded, the caseworker will issue a preliminary letter requesting that, within a period of one month from the date of the letter, the holder provides the UKIPO with a valid UK AFS alongside confirmation of their intention to respond to the office action. Therefore, in invalidation, revocation, and rectification proceedings the holder must now provide a valid UK AFS prior to filing their defence.

Furthermore, upon the UK designation of an international registration being opposed, the proprietor of the opposed mark will still be required to file a defence, but will now also receive further correspondence from the UKIPO which will confirm that a valid UK AFS is required in order to engage beyond the initial submission of their defence. Therefore, in opposition proceedings the proprietor must provide a valid UK AFS after filing a defence but prior to engaging in any proceedings following their defence.

To ensure that no communication from the UKIPO is missed, and to therefore ensure that rights are not declared invalid, revoked, rectified, or withdrawn, we recommend that a UK address for service is provided when filing an application in the UK, or, in respect of international registered trade mark applications which designate the UK, that the holder or representative of this application instructs us to become the recorded representative as soon as possible. We would of course be glad to take over representation of any existing UK registered trade marks or designs.