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UKIPO practice changes: Important cost and process changes now in effect

So far in 2023 the UKIPO has issued two practice notices regarding changes to tribunal practice for trade marks, patents, and design rights.

The notices involve:

  1. A change in practice to costs in patents, trademark and design proceedings.
  2. A change in practice in the registrar’s service of documents in trademark and registered design inter partes proceedings.

Increases in the scale of costs to be awarded in UKIPO proceedings

General practice at the UKIPO is that costs are determined by reference to a scale, with an underlying “contribution-not-compensation” approach. This provides transparency to parties about potential costs liabilities.

In January 2023 the UKIPO announced a new scale with increased costs applying to trademark, patent and design proceedings commenced on or after 01 February 2023. The new scale can be found at Annex A of Tribunal Practice Note 1/2023.

Notably, in some circumstances the scale will not apply, for example:

1. Unreasonable behaviour

The UKIPO has the discretion to award costs “off the scale” to deal proportionately with unreasonable behaviour. Generally, the amount will be commensurate to the additional expenditure a party has incurred as a result. Examples of unreasonable behaviour include unreasonably rejecting efforts to settle a dispute before an action was launched.

2. Unrepresented parties

Generally, unrepresented parties incur lower costs because they do not pay legal fees. If the scale of costs were applied to unrepresented parties they may receive costs in excess of what they reasonably incurred, undermining the “contribution-not-compensation” approach. Consequently, at the end of proceedings unrepresented parties are sent a proforma. If an award is to be made in favour of an unrepresented party hearing officers will consider the proforma when determining the sum to be awarded.

Related article

For further details, and guidance on costs in specific scenarios, please refer to our article “Increases on the scale of costs to be awarded in UKIPO proceedings”, published 09 February 2023:

Read more

Requirement for UK address for service

With immediate effect, in relation to certain intellectual property rights, the UKIPO will seek to obtain a UK address for service (AFS) before any formal serving of documents. Failure to comply may result in a loss of rights.

The notice will most commonly affect international registrations for trade marks and designs that designate the UK, where the World Intellectual Property Organisation (WIPO) representative is based outside the UK. The new practice impacts inter partes proceedings and differs depending on the nature of the proceedings:

Invalidation, revocation and rectification proceedings against trade marks, and invalidation proceedings against designs

  • On receipt of an application to invalidate, revoke or rectify a trade mark, or to invalidate a design registration without a UK address for service, the UKIPO will direct the registered proprietor to provide a UK address for service within one month
  • The request will be sent by post. In light of recent overseas mailing delays this may leave little or no time for the registered proprietor to respond.
  • Failure to provide a UK address for service may be construed as the registered proprietor not opposing the application, and may result in the registration being declared invalid, revoked or rectified.

Trade mark oppositions against international registrations designating the UK without an address for service

  • On receipt of a notice of opposition against an international registration designating the UK, WIPO will communicate the notice of provisional refusal to the holder.
  • This transmission by WIPO constitutes effective service of the opposition.
  • At the same time, the UKIPO will direct the holder, using its non-UK address, to provide a TM8 and counterstatement within two months, as well as a valid UK address for service.
  • At this point, the holder need only submit a completed TM8 and counterstatement.
  • If the holder fails to provide a UK address for service the UKIPO will issue a second direction by post and email, and ask that a valid UK address for service be provided within one month.
  • Failure to provide a UK address for service within one month will result in the UK designation being deemed withdrawn.

There is real merit to, and arguably some urgency in, listing a UK firm as representative against international registrations designating the UK. To avoid any potential loss of rights we strongly recommend listing a UK firm against any UK designation from the outset.

Related article

For further information and a list of Q&As in relation to the address for service requirement, please refer to article “UKIPO confirms requirement for UK address for service with immediate effect” published 01 February 2023:

Read more

Useful links

Tribunal Practice Note 1/2023: dycip.com/TribunalPracticeNotice12023
Increases on the scale of costs to be awarded in UKIPO proceedings: dycip.com/IncreasesscalecostsUKIPO
UKIPO confirms requirement for UK address for service with immediate effect: dycip.com/UKIPOaddressforservice

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