The UKIPO has issued a notice on 25^th January 2023 advising of a change in practice regarding serving documents relating to any cancellation, rectification or opposition proceedings on UK designations of International Registrations (IRs)

Where no UK address for service is recorded against the UK designation of an IR, before any documents are considered to be formally served, the UKIPO will notify the WIPO representative, or the holder of the IR directly by post only, that a UK address for service will be required in the UK within one month of the issuance of the notification and to confirm the intention to defend the action.

This highlights the importance for overseas holders of IRs designating the UK to have a UK address for service in place and, in view of the tight deadline of such notices from the UKIPO, we would strongly recommend that a UK representative be appointed as early as possible.

The recent United Kingdom Intellectual Property Office (UKIPO) Marco Polo decision highlights the risks of the owners of International Registrations not appointing a UK address for service for the UK designations.

In this case, the mark was cancelled after the owner did not respond to a notice issued by the UKIPO because the office in Australia was closed due to the COVID-19 pandemic.

Current practice of the UKIPO, where no UK address for service is recorded, is to directly notify the proprietor and not the WIPO representative.  There was no UK address for service in the Marco Polo case and as such, the invalidity notice was sent directly to the owner.  The owner failed to file a defence to both the first and second notices and consequently, the mark was cancelled.

The owner appointed a UK address for service and appealed the decision.

The matter is currently being reviewed by the UKIPO and we expect to receive guidance on this issue in the near future.