As of January 2023, there has been an important, immediately implemented practice change by the UKIPO for rights where no UK or EEA based representative has been appointed – our recent article on this topic can be found here.
Which rights are affected?
All trade mark and design registrations effective in the UK which do not have either a UK-based owner or representative. This includes UK designations of International Registrations, and comparable (‘cloned’) rights deriving from EU designations of International Registrations with no representative appointed in the UK.
There is a temporary exception however for comparable rights deriving from direct EU TM and design registrations which currently have an EEA-based representative. The Withdrawal Agreement between the EU and UK means that the UKIPO cannot require owners of comparable trade marks to provide a UK address for service during the period of three years following 1 January 2021 i.e. up to 1 January 2024.
Impact of change
This change means that when the affected rights are challenged, right owners will have short deadline to appoint representation in the UK, otherwise they run the risk of losing protection.
As a result, appointing a UK representative for UK registrations is more beneficial than ever. Read on for further details on the specific changes and possible implications for right owners.
Previous practice
In some cases, registered UK trade marks and designs may not have a local representative appointed.
For example, the owners of International Registrations are not obliged to appoint a UK-based representative by the UKIPO unless or until an objection or third party challenge is raised.
Likewise, the owners of International Registrations are not obliged to appoint a EU-based representative by the EUIPO unless an objection or third party challenge is raised. Consequently, when protected EU trade marks and designs designated under the Madrid Protocol system were cloned onto the UK Register following Brexit, numerous new registrations appeared on the UK Register without a representative based in the EEA or UK.
Until now, when receiving an opposition or cancellation against International Registrations in the UK, the UKIPO would issue their usual notification to the right owner or their WIPO representative. This would advise them of the challenge by post and provide a 2 month deadline to appoint a UK-based representative and submit a defence. If no defence was filed the UKIPO deemed the International Registration abandoned in the UK.
In a recent Appointed Person decision, handled by Marks & Clerk’s Gareth Jenkins and Kirsten Gilbert discussed here, it was decided this process did not constitute effective service of official documentation. Consequently, the UKIPO has now amended its practice with immediate effect in respect of cancellation actions and oppositions respectively.
Going forward
Cancellation actions
From now on, where a cancellation action is received against one of the affected rights discussed above, where no UK-based representative has been appointed the UKIPO will write to the owner and/or their WIPO representative by post and provide a 1-month deadline to appoint representation in the UK. The next steps would then be as follows:
- If no UK address for service is provided and no response is filed, the designation may be deemed abandoned (though the UKIPO will provide a short time frame to contest the provisional decision to deem the registration abandoned).
- If a response is filed but no representative appointed, the holder will be given a further month to appoint a representative failing which the designation may be deemed abandoned.
- If a representative is appointed but no response is filed, the UKIPO will proceed to set the 2-month defence deadline.
Oppositions to pending UK designations of Madrid Protocol registrations
The UKIPO will follow its current practice and will notify the holder or WIPO representative of a pending UK designation of a Madrid Protocol Registration of the filing of an opposition directly and via WIPO. The Holder will be allowed 2 months to submit a defence and appoint a representative.
- If no defence is submitted the designation will be deemed abandoned.
- If a defence is submitted but no representative is appointed the UKIPO will write to holder of the mark or their representative directly (and not WIPO) to provide a 1 month deadline in which the Applicant must appoint a representative. Failure to do so may result in the designation being deemed abandoned.
Main implications
For rights holders, these changes mean increased numbers of deadlines to manage and, in the case of cancellation actions in particular, that there may be very short deadlines to meet to avoid loss of rights. In practice, these already short windows may be even shorter if there were to be any delays in the national or international post.
As such, for the owners of registered rights there are increased benefits to appointing UK representatives.
For challengers to UK rights, those seeking to cancel UK trade mark or design rights where no representative has been appointed could find that the process for cancellation is sped up, particularly for International Registrations designating the UK.
We therefore advise trade mark owners to:
- Be aware of the requirements to appoint UK representation
- Consider appointing UK representation for designations of Madrid Protocol and Hague Agreement Registrations as soon as possible to ensure timeliness of communication
- Review existing portfolios of protected UK designations of International Registrations and consider appointing UK representation now given the shorter time frames for responding to cancellation actions
- Bear in mind the address for service requirements when considering strategy for challenging existing protected designations and pending designations of Madrid Protocol and Hague Agreement Registrations designating the UK
It is clear that while you may obtain UKTM rights without appointing a UK representative, you will need to appoint one to deal with objections to your filings, defend your registrations, and challenge conflicting rights of others.
Marks & Clerk can appoint ourselves as your representative on the UKIPO register at no charge and if you wish to discuss this or have any questions then please contact us.
