Invalidity case highlights importance of a UK address for service for WIPO registrations

About the authors: 

Robert Cumming: Robert is a partner, dual-qualified trade mark attorney and solicitor, and manages large international portfolios and complex multi-jurisdictional disputes for market-leading businesses.

Robert’s expertise lies in the strategic positioning of a brand. His experience managing international trade mark portfolios and complex cross-border litigation, complements his background working on large corporate transactions. 

Lisa Thomson is a trainee trade mark attorney. Lisa works with a wide range of clients, from start-ups to SMEs, all the way through to large household names in a number of different sectors.

Risk of cancellation where there is no UK address for service

A recent United Kingdom Intellectual Property Office (UK IPO) decision, Marco Polo (O/681/22), shows the dangers of not appointing a UK address for service for World Intellectual Property Office (WIPO) trade mark registrations. In that case, the mark was cancelled after the UK IPO sent the invalidity documents directly to the owner, who failed to respond because the office was closed during the pandemic.

The UK IPO’s current practice where there is no UK address for service is to notify only the proprietor directly, not the WIPO representative. In the Marco Polo case, there was no UK address for service and so when an invalidity action was filed against the applicant’s mark, it was sent to the proprietor’s address in Australia and got lost on the way. Consequently, there was no reply from the proprietor and the mark was cancelled. This has been overturned on appeal (for now anyway).

The UK IPO is currently reviewing this issue internally and will hopefully issue guidance on the matter soon. However, it appears likely that in the future the UK IPO will require a UK address for service from as early on as the examination process of an IR designating the UK. The safest measure is therefore to appoint a UK representative for the UK designation. This does not affect the WIPO representative nor the renewal process.

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