Post-registration challenges at the UKIPO

In UKIPO post-registration matters of revocation, invalidity and rectification proceedings, if the registered proprietor of the UK designation does not have a UK address for service (UK AFS) - an address in the United Kingdom which includes the Isle of Man, Channel Islands and Gibraltar - then they will be sent a Notice requiring them to appoint a UK AFS. The Notice will provide a short period of only 1 month to make this appointment, starting from the date on the Notice. The Notice will be posted to either the recorded representative for the IR or, if there is no such representative, to the registered proprietor.

If a UK AFS is appointed within the 1 month deadline, then the UKIPO will serve the cancellation action upon them, setting a 2 month deadline for a defence to be filed.

However, if no UK AFS is appointed within the 1 month deadline, then the UKIPO will treat the challenge as undefended which will result in partial or complete loss of rights (depending on the claims made in the challenge). Further, if the UK designation is abandoned, and due notice of the potential cancellation proceedings was sent, then the proprietor could also be liable for a costs award against it of between £250-£750.

Action needed

In view of the time that will be lost during transit and processing of the postal correspondence sent by the UKIPO, there is a high risk that proprietors of UK designations may lose registered rights. It is our strong recommendation that clients should appoint a UK AFS for their protected UK designations, with immediate effect.

If this change might affect your clients, then we would be happy to advise further and please do not hesitate to approach your usual contact in the firm. If your clients would like us to take responsibility for their UK designations, then we would be happy to do so. In line with our usual policy, we do not charge for this service.