Home Insights Overseas Trade Mark Update – December 2022

Overseas Trade Mark Update – December 2022

Read time
3  minute read
Date published
21 December 2022
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Nicola Scheepers addresses new developments for attorneys registering trade marks in the United States and the United Kingdom.

Reduced response deadlines in the United States

A recent amendment to United States trade mark law will fast-track prosecution timelines by reducing the window of time in which to respond to office actions. Trade marks attorneys should take note that the deadline to respond to office actions issued on or after 3 December 2022 has been shortened from six months to three months.

The United States Patent and Trademark Office (‘USPTO’) will allow the deadline to be extended by an additional three months, however the request must be made before the expiry of the initial three-month period and accompanied by a USD$125 extension fee. Failure to meet the deadline may be seen as abandonment of the trade mark application and additional fees will apply to revive an abandoned application.

The new rule applies only to national applications and does not apply to applications filed under the Madrid Protocol, where the existing 6-month response deadline continues to apply.

The amendment is intended to improve the efficiency of the system and address the backlog of trade mark applications at the USPTO, where thousands of applications are yet to be examined and the average time to register a trade mark has increased to 18 months.

With the introduction of the shortened deadline, and the requirement to seek an extension before its expiry, it is more important than ever for applicants and attorneys to seek and provide early instructions, to monitor prosecution timelines and seek extensions, if required, before deadlines pass.

Increased need for local representatives in the United Kingdom

A recent decision of the United Kingdom Intellectual Property Office (‘UKIPO’) has overturned a Declaration of Invalidity on the basis of improper service.

In New Holland Ventures Pty Ltd v Tradeix Ltd O/681/22, the UKIPO attempted to serve notification of invalidity proceedings on the owner of a UK designation at its Australian office as there was no address for service in the United Kingdom on record. However, the notification was not received because the Australian office was closed owing to COVID-19 lockdowns. Accordingly, the owner was not aware of the proceedings and the two-month deadline to file a defence lapsed.

With no defence filed, the UKIPO issued a Declaration of Invalidity which was again sent to Australian office, though this was again not received. Fortunately, the UKIPO also notified the International Bureau and the owner was informed of the situation by its WIPO representative. A UK representative was appointed and the owner filed an appeal against the invalidity decision.

The Appointed Person set aside the decision of the Hearing Officer on the basis that the registrar does not have authority to serve documents outside the jurisdiction and accordingly, the invalidity application was not validly served on the trade mark owner.

The Appointed Person observed that parties to proceedings under the Trade Marks Act 1994 (UK) are required to provide the UKIPO with an address for service in the United Kingdom. However, if there is no address for service on file, and the Registrar has sufficient information to contact the person, the Registrar must direct the person to file an address for service. As the Registrar had not done so, the appeal was allowed, and the invalidity application was remitted to the Registrar for fresh consideration. 

Following this decision, the UKIPO has suspended the review of newly-filed disputes concerning UK designations of international registrations to enable it to assess its rules and procedures. We consider it likely that the Trade Marks Rules 2008 (UK) will be amended to require a local address for service in the near future. It remains best practice to appoint a UK representative to ensure all notifications from the UKIPO can be dealt with promptly.

Key takeaways and practice tips

  • The response deadline for office actions in the United States has been shortened from 6-months to 3-months.
  • Extensions for an additional three months are available, provided a request is filed during the initial 3-month period and accompanied by a fee.
  • The UKIPO is reviewing its procedures with respect to the requirement to file an address for service.
  • Appointing an UK representative is highly recommended.