The Risk of the new UK Rule on Contested IRs

The UK Intellectual Property Office just announced it is changing the rules around how it handles opposed or challenged designations of the UK under International Registrations. In short, rather than simply sending the papers and giving the owner around 3 months to file a defence, they will give them 1 month to indicate they intend to defend and appoint an attorney. If they dont reply then there will be a letter sent out saying the UKIPO shall proceed on the basis that it is not defending it (with 14 days to reply).

Attorneys are saying this is a mistake. I can tell you for sure it is one.. as I have been on the other side of an analogous situation - let me tell you more.

Back in 2010(ish) I acted for a company looking to revoke the registered trade marks of an Indian company called Scooters India Limited (SIL) in the UK and EU. Their existing trade mark attorneys FieldFisher withdrew representation and provided SIL with a copy of their portfolio. Boult Wade Tennant (BWT) took over, taking the EU trade marks onto their books. For some unknown reason the UK rights were not taken on by BWT, and this meant the UKIPO had to write to Scooters India Limited to say they needed to appoint an attorney to represent them before the UKIPO. Just as is now proposed:

• The UKIPO sent a letter by post telling them this (with I think a 1-month deadline), which SIL say they didn't receive;
• The UKIPO sent a letter by post (with I think a 14-day deadline) telling them they intended to treat the revocation action as non-defended, which SIL say they didn't receive;
• The UKIPO sent a letter telling them that they had treated the trade mark action as undefended and SIL had lost its trade marks, which SIL received very late.

This led to an appeal, where SIL argued against the decision. The Appointed Person Geoffrey Hobbs rejected the idea that the appeal was well-founded (they simply followed the practice), but told SIL's barrister that he thought what they really wanted was a retrospective extension of time. After a short period of reflection (and the realisation they were not going to win the appeal) they indicated that yes, indeed, what they wanted was a retrospective extension of time. The appeal was therefore suspended, the matter reverted to the UKIPO and.. after much expense to everyone, the UKIPO indicated that they were minded to allow the late EOT.

This is the kind of situation which is likely to arise repeatedly now.. so please, please, please DO appoint a UK attorney for your UK designations of your IRs.