• Rosie Burbidge

Do IR holders need a UK representative?

In a decision that arose from the combined impact of Brexit and the COVID-19 pandemic on International Registrations (IR) designating the UK, Mr Geoffrey Hobbs KC has found that an invalidity application was not validly served by the UK IPO. The decision could have implications for all holders of IRs designating the UK.


The case concerned an IR designating the UK for MARCO POLO for goods in class 36. The IR is held by New Holland Ventures Pty Ltd in Melbourne, Australia, which is represented by an Australian law firm.


On 31 December 2020, the UK IPO accepted the request for extension of protection to the UK. On 5 January 2021 it sent a statement of grant of protection to WIPO, which was forwarded to the Australian law firm.


On 18 May 2021, a declaration for invalidity was filed based on a conflict with an earlier UK registration. A copy was sent to the proprietor’s registered address in Melbourne, but not copied to the representative.


While a UK address for service is required for UK trade mark applications filed after the Brexit transition period, this is not the case for IRs unless there are further proceedings. In this case, the proprietor did not provide an address for service in the UK. Moreover, the UK IPO did not issue a direction under Rule 12(1) requiring the proprietor to file an address for service.


The proprietor claimed that the letter regarding the invalidity application was never received, as its offices were not attended during the strict lockdown during the pandemic in Australia. Consequently, it did not file a defence.


The UK designation was declared invalid on 29 March 2022. When New Holland’s representative received a copy of the declaration of invalidity via WIPO, it appointed a UK representative and appealed the decision.


Three questions

In his decision, Mr Hobbs KC said the decision to effect service of the invalidity application on the proprietor raised three questions.


First, he considered that Section 7 of the Interpretation Act 1978 applies to the service of invalidity applications by post, and service takes place when the document is deemed to have been physically delivered. However, Section 7 does not serve to determine whether the letter containing the invalidity application was “properly addressed”.


The second question concerned the permissibility of using an address that does not comply with the requirements of Rule 11(4) of the Trade Marks Rules 2008 as an address for service. The Registrar argued that there is nothing in the Rules preventing the Registrar from serving an application for invalidity on the proprietor’s address when no address for service is available. But Mr Hobbs QC did not accept that, saying that Rule 41(5) of the 2008 Rules “does not by reason of the generality of the words in which it is expressed empower the Registrar to effect service of invalidity proceedings outside the jurisdiction”. More specifically, the legislation intended that service be “achieved by other means”.


The third question concerned the need for the requirements of Rules 11 and 12 of the 2008 Rules to be completed prior to service. Mr Hobbs KC said that “service” cannot be validly effected if and while there is no address for service in place for the purposes of proceedings. Where there is an invalidity application, the Registrar should send a letter to the proprietor directing them to provide an address for service. They have one month to do so, and then the two-month period to file a defence starts.


Consequences for IR holders

The result of the Appointed Person’s decision was that the proprietor’s Melbourne address was not an address for service, and both the invalidity application and default notice were not validly served. The invalidity application was remitted for further processing on the basis that the procedural irregularity has been rectified.


Further guidance from the UK IPO is expected, including on whether a UK address for service must be designated for IRs. In the meantime, holders of IRs designating the UK would be well advised to appoint a UK representative to ensure that no important communications are missed.


To appoint a UK representative for your IRs and find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


#IR #representative #service

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