IPO issues Tribunal Practice Notice on undefended invalidity applications

United Kingdom

The UK Intellectual Property Office (IPO) has published a Tribunal Practice Notice (TPN 2/2007) on undefended applications for a declaration of invalidity (trademark registrations), which amended with immediate effect Rule 33 of the Trademarks Rules 2000.

From September 26 2007, if the proprietor of record of a trademark against which a declaration of invalidity has been filed does not file a counterstatement, the registrar will set in writing a term of 14 days by a notification that no counterstatement has been filed and that the registration in suit will be declared invalid and shall be deemed never to have been made (Section 47(6) of the Trademarks Act 1994) unless the proprietor files a request for a hearing or written submissions. If the applicant's grounds provide a legal basis for invalidating the registration and no defence is filed, the registrar will consider that the proprietor does not dispute the grounds of invalidation.

The legal basis for invalidation of UK trademark registrations are the absolute and relative grounds of invalidity as listed in Section 47 of the Trademarks Act.

The practical ramifications of this change are significant for trademark owners and their representatives. It is now even more important that the address for service and the proprietor's address on the Trademark Register are correct. If either or both are not, an application for a declaration of invalidity may be served to the wrong address; this will nonetheless constitute service. Moreover, any changes in trademark ownership must be recorded to ensure that all correspondence is directed to the correct recorded owner (eg, if it has no external address for service).

If a trademark applicant faces objections based on earlier registrations, the option of an application for a declaration of invalidity is now more attractive as a means of overcoming such an objection. Despite the change in practice at the IPO with regard to notification (ie, it no longer raises ex officio objections based on earlier marks), there is still a strong argument for clearing 'dead wood' from the register. This change in practice will make it easier to do so.

Emilie Scheffer, Hammonds, London

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