The importance of a valid UK address for service for trade marks and designs

The UK Intellectual Property Office (UK IPO) has issued a new Tribunal Practice Notice (TPN 2/2023) with a potentially significant impact upon UK rights acquired through the Madrid Protocol (for trade marks) or Hague Agreement (for designs).

TPN 2/2023 has the good intention of looking out for rights holders based outside the UK, who might have their rights challenged by third parties but do not promptly become aware of that because they have no valid UK address for service recorded for their UK designations in International registrations. However, as explained below, the same TPN brings about an even shorter period for reaction than previously, if rights holders are to be able to defend their UK rights in the face of such a challenge.

A “valid UK address for service” is one in the UK, Gibraltar, or the Channel Islands. Previously, for challenges to registered/protected UK designations in International registrations without a valid UK address for service, the UK IPO would issue documents to the non-UK address for the holder and would deem such action to constitute “effective service” for the setting of an inextensible period to file a defence (with this period being two months to submit a defence in response to a challenge upon a trade mark designation).

The MARCO POLO case

TPN 2/2023 has been issued by the UK IPO as a result of the decision of Geoffrey Hobbs KC, sitting as the Appointed Person in Tradeix Ltd v New Holland Ventures Pty Ltd (BL O/681/22) – the MARCO POLO case.

The MARCO POLO trade mark was protected in the UK as a designation in an International registration secured through the Madrid Protocol. A declaration of invalidity of that UK designation initially succeeded because the trade mark holder did not file a timely defence. The trade mark holder did not have any UK address for service recorded, so the invalidity application was communicated by post from the UK IPO to the trade mark holder’s registered office in Australia. The Australian address was that of the holder’s accountants and due to COVID restrictions and work from home requirements, the holder did not become aware of the challenge on its UK designation in time to submit a defence. Absent a timely defence, the UK IPO declared the UK designation invalid and directed that it be removed from the Register of Trade Marks and deemed never to have been made.

The holder appealed to the Appointed Person, who found that posting of documents to a non-UK address, as had been the UK IPO’s previous practice, had not constituted valid service of those documents upon the trade mark holder. This has led to the change of UK IPO practice described below.

The new UK IPO practice – TPN 2/2023

TPN 2/2023 sets out the changes of practice in the Registrar’s service of documents in inter partes trade mark invalidation, revocation, rectification and opposition proceedings, and registered design invalidation proceedings. It is most relevant to UK designations in International registrations, but does not impact ex parte proceedings, such as new UK designations under examination, where a UK address for service will not be required unless a notice of provisional refusal is issued to which the holder wishes to respond.

There are two new approaches, dependent on the type of proceeding before the UK IPO:

(1) Invalidation, revocation on the grounds of non-use, revocation on grounds other than non-use, and rectification

Absent a valid UK address for service, a preliminary letter will be issued by the UK IPO in the above types of proceeding, requiring the holder to provide a valid UK address for service within one month, together with confirmation that it intends to defend its right. Said letter will be posted by Royal Mail Signed-For service, using whichever non-UK contact details are available to the UK IPO at that time. This could be to the holder themselves but, if a non-UK representative address is given, the UK IPO will use those representative details in preference to the holder’s address.

If the holder provides a valid UK address for service within the set period, the action will be served to the address of the (newly recorded) valid UK address for service, then the usual period for defence, e.g. of two-months to defend a trade mark right, will run from the date of effective service to the UK address. If the holder does indicate a wish to defend the right within the initial one month set but does not provide a UK address for service in that time, they will be given one month to record a UK address for service.

If no valid UK address for service is provided within one month and no indication of a wish to defend, then the UK IPO will issue a letter confirming their intent to treat the right as undefended and to invalidate or revoke it. Again, this letter would be sent to the non-UK address, with a fourteen-day period for reply. Failure to respond would result in the UK IPO issuing a short decision on the undefended application and could lead to invalidation or revocation.

(2) Trade Mark oppositions against published International Registrations (UK)

In oppositions to UK designations in International trade mark registrations, a notice of provisional refusal will be sent by the UK IPO to the World Intellectual Property Organisation (WIPO), who will in turn notify the holder. The transmission to WIPO is deemed effective service of the opposition and would not at that stage require the holder to appoint a UK address for service. Additionally, the UK IPO will issue a letter to the holder using any non-UK address for service details provided by WIPO: this will require a defence within an already activated two-month period and will also confirm that a valid UK address for service will be required to contest the opposition and engage beyond submission of an initial defence. If a defence is filed, but with no valid UK address for service, the UK IPO will then require appointment of such an address for services within one month.

NOTE – for UK trade marks or registered designs cloned from an EU right at the end of the Brexit transition period:

If the target of challenge is a comparable trade mark or design created out of an EU right which was in force at the end of the Brexit transition period, and if proceedings are launched prior to 1 January 2024, the above new practice will not apply, and service will be effected via any EU address for service provided in the data imported from the original EU right.

Comment and recommendations

This new practice, though well-intentioned, sets an even shorter period than previously for the holder of a UK designation to react, should a challenge be made to their registration, and if they do not have a valid UK address for service. Although preference would be given by the UK IPO to sending initial notification of the challenge to a representative recorded at WIPO, rather than to the holder themselves, a single month is a very short period for that notification to reach a representative outside the UK and be acted upon, with them to quickly arrange appropriate UK representation.

Risks posed by the TPN could be easily mitigated, and future requirements promptly satisfied, by appointing a valid UK address for service as early as possible, rather than waiting for any challenge to be encountered where vital deadlines might be missed.

Wherever questions are raised relating to validity of a right in the UK, local advice and representation is crucial, and Two IP’s Chartered UK trade mark attorneys are well qualified to help you. Get in touch here or email hello@two-ip.com.

Navigating career choices with confidence

Working hard for something we don’t care about is called stress: working hard for something we love is called passion
Simon Sinek

The beginning of a new year is a great time to take stock of your work life.  How was work in 2022 – were you happy or unhappy?  What would you like to change?

In this blog, long-time Two IP friend and career coach, Pamela Macphee of CareerShift, shares her insights into what areas are useful to think about if a change in career or work situation is on your mind.

A lot has changed in the world of work since the emergence of COVID-19 three years ago but at the same time a lot has stayed the same You may have enjoyed the benefits of remote working during the pandemic but you’ve probably still had to work extensive hours to meet your billing targets.

Or maybe you’ve realised that although you’ve been at home more, this hasn’t resulted in more family time and you’ve realised how important that is to you.

Regardless of your circumstances , many peoples’ relationship with work itself has changed over the past three years.

Our work makes up a large part of our identity – much of our time is spent working, preparing for work, and recovering from work.  The location of our working lives may have shifted, but for many in the IP profession, the demands of work in a traditional firm continues to be all consuming and dominates our focus and time, leading to unhealthy habits and little time to devote to anything else.

It’s important to evaluate where things are in your career as we start off 2023, because how you feel at work has such a big influence on how you feel in all other parts of your life.  When you’re happy from a work perspective, the knock-on effect to better health and a happier personal  life is evident.

Sometimes a change is needed.A change in role, a change in organisation, or a change in lifestyle.  A career coach can help you work through these options and then help you implement the changes you require to make that change a reality. There are five key steps we would encourage you to take if you are not happy with your current work situation:

What is really driving this feeling of ‘needing a change’?

We would encourage you to be honest with yourself about what specifically is making you feel like this. Is it the work you are doing, the people you are surrounded by, or maybe the working arrangements or hours you’re needing to work? It can of course be a combination of factors, but it is important to be honest with yourself about what is driving this feeling of dissatisfaction. Talking to an external party such as career coach can help with this process.

What are your transferable skills and competencies?

Examining what you’re good at and what you enjoy are great places to start when thinking about what you might want to do next. Think about scenarios when you feel you are operating at your best. What skills are you using or what situations are you in? Maybe you get a buzz from meeting and building relationships with clients or maybe you enjoy the technical work in your expert field but not the line management side of your role. By identifying what you like (and don’t like!) and what you do best you are better equipped to find situations where you can do this more.

Research your options

Even in the IP Profession there are a range of options open to you. Two IP featured on a CIPA webinar last year which explored different working models in the profession. If you’ve been in private practice for a while you might feel that moving to another similar practice is your only option but there are many different avenues to explore. Don’t be afraid to reach out and talk to your network or contacts as well. People are usually very willing to share their experiences and provide you with a picture of what different ways of working look like in reality.

Market yourself

Once you have a clearer idea of what is important to you and what option might be best suited then you can use the power of Linkedin to make yourself visible and connect with people in that field or company. Again, a career coach can help with that but an up-to-date and compelling LinkedIn profile allows you to connect with people and spark conversations which can help flag up opportunities.

Keep the end destination in mind

In an environment where there is a ‘war for talent’ it can be easy (and tempting!) to take a comfortable option offer whether that is a promotion, a move to a similar firm or even an in-house role. I would encourage you though to keep reminding yourself why you are doing this. What was it that initially made you rethink your career and what option has the highest likelihood of addressing that for you? Creating a picture of what you want your future life to look like can really help with that. Keep coming back to that vision and checking in that you are getting closer to achieving it.

 

If you would appreciate an external, expert perspective to help you work through this process then you can contact Pamela on admin@pamelaconsulting.co.uk and you can explore how Two IP aims to solve the work/life balance for experienced Patent and Trade Mark here.

 

Information on the unitary patent and the benefits for UK businesses.

The European Patent system is about to undergo a significant change, introducing the “Unitary Patent” and a new “Unified Patents Court”. 

This short video provides more information on the unitary patent and how it will provide time and cost benefits to UK businesses. 

A Unitary Patent is a European patent with unitary effect in a sub-set of the current European Patent Convention member states. A Unitary Patent provides uniform protection and equal effect in all the UP states. It may only be limited, transferred or revoked, or lapse, in respect of all the UP states. It may be licensed in respect of the whole or part of the territories of the UP states. 

There are 17 EPC member states which are participating in the UP: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. 

The UK is not participating in the UP, so the classic European patent validation process will still be followed for the UK. 

The advantages of the UP include removal of national validation procedures and reduction of costs at EP grant, and reduced renewal fees (the UP has a single annual renewal fee for the 17 UP states – the UP renewal fee is equivalent to the total of the renewal fees in the four most popular UP states). 

A potential disadvantage of the UP is that any patent litigation for infringement or validity of a UP will be handled centrally by a new Unified Patents Court (UPC), which has exclusive jurisdiction over UPs 

The Unitary Patent (UP) is expected to come into operation on 1st June 2023.

Top trademark tips for new brands and products

New year, new product? Or just looking to refresh your brand? Be sure to follow these tips to ensure a smooth process from brand selection to launch and avoid costly challenges and disputes along the way. 

1. Start early  

Clear names, logos and branding for use at the outset, and as early as possible ahead of your planned launch (ideally 6 months+). Engage your design or marketing team in the brand clearance process before they start work on a new name, logo or style. So often clearance is an afterthought when the brand has been chosen, with teams wedded to it and rollout already underway. At this stage if a challenge is encountered the time and expenditure already incurred may go to waste, and even if the challenge is manageable, the associated cost and delay to your launch may not be.  

2. Long-list to Short-list 

We offer fast-turnaround ‘knockout’ searches for ‘long-lists’ of potential names/logos, to quickly discount any which look problematic. A short-list can then be prepared and additional searches considered.  

3. Full clearance searches

Once you have a short-list of perhaps 1-3 preferred names or logos, conduct full clearance searches of the relevant trade mark registers as well as common law or ‘in-use’ searches.  

These searches can be staggered according to preference of name/logo, geographical scope and in line with your budget. Although anyone can conduct identical searches of many trade mark registers, and look for identical names/logos currently in use by using search engines, similar trade marks can be equally problematic and specialist searching software and professionals are required for this.  

Once the search data is received, we will analyse the results to provide a clear and concise assessment of the risks posed by any identical or similar trade marks. Trade marks registers are extremely crowded and it can be difficult to come up with an entirely original name or brand, but understanding what the risks are and if those risks are manageable for your business is key to the success of your brand launch.  

4. File Applications  

With our help you have selected a name or logo and you should now file applications in all relevant territories to protect that trade mark from third party use or misappropriation. If your brand will span multiple territories, this stage can be staggered using the six-month ‘priority’ afforded by your first application. This helps to manage budget by spreading cost and can be used to draw out potential challenges that may have been identified by the searches. 

We will advise on the most cost-effective and comprehensive registration strategy for your brand and budget; different positioning of words and logos, colour variations and other versions of your trade mark may be used in practice, and with separate applications usually required for each, the costs can mount up. We will ensure that you secure the broadest possible protection for your business within your budget. 

If your brand launch is highly confidential, we can advise how you can shield your application from public view for as long as possible whilst having your all-important ‘flag in the sand’.  

5. Swiftly deal with objections or challenges 

Unfortunately, objections from trade mark offices and third parties are common, but if you have followed the steps above these should be minimised. In the event of an objection, we are on hand to quickly and efficiently guide you through the process of overcoming the challenge and navigate towards a successful registration.   

6. Additional Considerations.  

You may have a new product or packaging design, or need a new domain name for your product or brand. We can advise on the registration of designs and registration or acquisition of domain names. 

You will also want to ensure that once your brand is selected third parties do not encroach on your rights. A trade mark watch can be put in place providing early notification of any identical or similar third party trade mark applications that you may wish to challenge. We can also provide online monitoring for your product or brand to alert us to unauthorised use of your trade mark online.  

If you are thinking about launching or refreshing your brand and would like our help, our trade mark attorneys are happy to have an initial chat. Get in touch here or email hello@two-ip.com