Facts
New Holland Ventures Pty Ltd (the "Proprietor") is an Australian company and holder of International Trade Mark no. WO1541304 (MARCO POLO) which designated the UK. In May 2021, Tradeix Ltd (the "Applicant") applied for a declaration of invalidity against the UK trade mark. The UKIPO sent notice of the invalidity application to the Proprietor by registered post to its address in Melbourne. The covering letter set a 2-month deadline for defending the invalidity action. The same letter directed the Proprietor to provide a UK address for service within the same 2-month period.
However, the Proprietor did not receive the notice as its office was closed during COVID-19 lockdowns in Australia, nor did it receive the UKIPO's follow-up letter in August 2021 indicating a preliminary decision to declare the registration invalid in the absence of any defence being filed. The UKIPO issued a declaration of invalidity on 29 March 2022, which the Proprietor received on 26 April 2022. The Proprietor immediately filed a Form TM33 (Appointment or change of representative) with a UK address for service and later appealed the UKIPO's decision, arguing that they did not have a proper opportunity to defend the invalidity application.
Held
The invalidity proceedings were not validly served under the Trade Mark Rules 2008. A proprietor must file an address for service in the UK, Gibraltar or Channel Islands to enable service of documents for the purposes of any proceedings (Rule 11(1) and 11(4)). Thus, the Proprietor’s Melbourne address was not to be treated as a valid address for service of the invalidity application.
To comply with the service requirements, the UKIPO should have:
- Informed the Proprietor of the invalidity application which had been commenced in respect of its registered trade mark;
- Directed the Proprietor to notify the Registrar in writing whether the invalidity application is opposed and, if so, directed the Proprietor to provide an address for service for the purposes of the further conduct of the invalidity proceedings; and
- Comprehensively specified the consequences of failure to comply with the directions thus given.
(See paragraphs [67]-[68] of the decision.)
Instead, the UKIPO's original letter to the Proprietor merely contained the following statement which Mr Hobbs KC deemed inadequate to fulfil the above requirements:
“The holder of the International Registration must provide us with an address for correspondence in the United Kingdom (which for the purposes of the Act includes the Isle of Man, the Channel Islands and Gibraltar) on a form TM33 ‘Appointment or change of agent or contact address’ … within this two month period.” (as quoted at paragraph [32])
Further, Mr Hobbs KC held that due to the invalidity of service, the 2-month period for filing a TM8 and counterstatement only began to run from 24 May 2022 when the UKIPO sent the Proprietor a copy of the invalidity application by email (see paragraph [81]).
Comment
The decision indicates that where a trade mark proprietor or applicant has not filed a valid address for service in the UK, Gibraltar or the Channel Islands, the UKIPO is not entitled to serve proceedings out of the jurisdiction. The UKIPO may nonetheless send a letter to the applicant/proprietor informing them of the opposition/invalidity action, requesting them to provide an address for service within one month, and specifying the consequences of failure to provide a valid address of service, which include deeming the proprietor/applicant to have withdrawn from proceedings (Rule 12(4)(d)). If the applicant/proprietor then provides a valid address for service, the proceedings may be validly served and the applicant/proprietor given two months in which to defend the proceedings.
The UKIPO is suspending certain proceedings while it considers the impact of the decision. If service of opposition or invalidity proceedings was found to be invalid following MARCO POLO, the UKIPO may give the applicant/proprietor an opportunity to provide a UK address for service and then to file a defence to the opposition. However, it may be possible to argue that a case should be distinguished from MARCO POLO depending on whether the notice sent by the UKIPO to the applicant/proprietor meets the requirements set out above and in paragraph [67] of the decision.
Authored by Sheyna Cruz and Emily Sharkey
