The UK intellectual Property Office (IPO) has implemented a significant change to the rules concerning the representation of trade marks and design rights in inter partes contentious proceedings. The new rules, outlined in the IPO’s Tribunal Practice Notice 2/2023, requires rights holders without a UK-based Address for Service (AFS) to provide one as the first step after official notification of the action. They must confirm their intention to defend the proceedings and provide a valid UK AFS within one month. Failure to do so will result in the UKIPO treating the action as undefended, resulting in loss of rights through refusal of opposed applications and cancellation of challenged registrations.
This update primarily affects inter partes proceedings involving UK designations of international trade marks. This change came about because previously, when a challenged trade mark registration had an AFS located outside the UK, notification was sent by the UK IPO to the holder rather than to their WIPO representative and a deadline for two moths set for a response which was required to be filed with a UK AFS. Read more