MARCO POLO lost in the post in the CARIBBEAN


By: Gabriela Bodden

If your company of your clients currently hold trade mark registrations in Bermuda, Guyana or Montserrat I invite you to quickly read this article as your portfolio could be affected.

The background here is that since the Brexit transition period ended, the indication of a UK address for service is required when faced with the filing of a UK trade mark application directly at the UK IPO.

Based on the UK statutory rules it has not been understood that this local address for service requirement was also applicable to International Registrations designating the UK, UNLESS they face objections on the part of the UKIPO or other proceedings such as an opposition action, invalidity procedure, or a cancellation action in which the trade mark holder wishes to engage.
Therefore, many UK designations were granted and just sit on the UK register without a UK address for service, given that the designations did not encounter objections or oppositions during the prosecution process.

This situation changes with the recent decision of the Appointed Person in the case Marco Polo (O/681/22. Many UK practitioners are recommending that IP rights holders of International Trade Marks designating the United Kingdom should appoint a UK-based address for service.

But for us mortals that do not practice UK IP law, how do we understand this?

I’ve read through the Decision and here’s my take on this famous case that is revolutionizing trade mark practice in the UK as this is of special interest to me as a Caribbean IP practitioner.

Here goes.

But what is the Marco Polo case?

It consists of an Invalidity Application No. 503859 filed by TRADEIX LTD against the International Registration of (UK) No. WO1541304 in the name of NEW HOLLAND VENTURES PTY LTD.

New Holland Ventures Pty Ltd (“New Holland”) had obtained an International Registration for a trade mark granted in June 2020 designating the UK. At the time the UKIPO had notified the International Bureau that the mark was indeed protected, and such notice was also sent to the WIPO address for service for New Holland Ventures Pty Ltd.

When in May of 2021, Tradeix Ltd filed an application for the declaration of invalidity against the UK designation, the notice of the invalidity action was sent to New Holland by mail. It was not sent to the International Bureau or the WIPO address for service (as above). This notice had set a 2-month deadline for appointing a UK-based address for service and defence. As you would imagine New Holland did not receive the notice given that its offices were closed due to the COVID-19 pandemic and also the address pertained to their accountant (as is my understanding), and other associated lockdowns in Australia at the time.

When New Holland failed to file a defence, the UKIPO sent a second notice to New Holland by mail, which naturally was not received by them due to reasons indicated above.

Following this, in March 2022, the UKIPO issued a decision declaring the UK designation invalid and a copy of the same this time was forwarded to the International Bureau, who indeed notified the WIPO address for service for New Holland. It is until then that New Holland was notified and quickly appointed local representation and appealed the decision.

What decision was made?

The decision states that the Appointed Person held that the application for invalidity had not been properly served on the Australian proprietor, namely New Holland. That the UK IPO was only empowered to write to the Australian address to set a 1-month deadline for appointing a UK address, not to serve the invalidity. The Appointed Person held that the rules do not grant the IPO discretion to serve documents outside the jurisdiction, such that the notification of the invalidity application posted to the proprietor in Australia did not trigger the statutory 2-month deadline for filing a defence. The default decision declaring the designation invalid was set aside, and the invalidity proceedings were returned to the UKIPO for prosecution.

What does this mean? Most importantly, the decision indicates:

  1.  Where a trade mark proprietor or applicant has not filed a valid address for service in the UK, Gibraltar or the Channel Islands, the UKIPO is not entitled to serve proceedings out of the jurisdiction.
  2.  The UKIPO may nonetheless send a letter to the applicant/proprietor informing them of the opposition/invalidity action, requesting them to provide an address for service within one month, and specifying the consequences of failure to provide a valid address of service, which include deeming the proprietor/applicant to have withdrawn from proceedings (Rule 12(4)(d)).
  3.  If the applicant/proprietor then provides a valid address for service, the proceedings may be validly served and the applicant/proprietor given two months in which to defend the proceedings.

Action points in the UK

UK practitioners are widely recommending that holders of International Trade Marks designating the UK should ensure that their address on the register is appoints a local trademark practitioner in order to ensure that any correspondence sent by the UKIPO is received.

As such the UKIPO is not mandated to send notifications by mail for all correspondence that it issues to the International Bureau.

How does the Marco Polo case affect Caribbean trade marks, if at all?

Currently many of the Caribbean Islands have shed off the UK dependency, however, the extension of UK trade mark registrations is still possible in Bermuda, Montserrat, and Guyana.

The norm is that national UK registrations can be extended to Bermuda, Montserrat and Guyana.
However, in my experience with IP law in the Caribbean (that spans over 24 years), there have been instances where International Registrations designation the UK have in fact been extended to certain Caribbean Islands. Based on this, if the UKIPO can issue the Certified Copy then it can be extended to the Caribbean islands as applicable.

Therefore, if you are a trade mark holder in the UK and have extended such rights to these three Caribbean Islands (Bermuda, Montserrat, and Guyana) it is important that you not only check your portfolio but that you also ensure that your trade marks are in in good standing before the UKIPO since if at any point your mark is placed in abeyance or struck off the UKIPO for any given reason then the Caribbean extension on which it is based will be lost (as it is dependent on the UK registration).

My recommendation is to always appoint a local address for service in the UK.

If you have any queries about the Caribbean side of your trade mark practice, please contact me for assistance:

I will be happy to help!

Tags: bermuda, bermudaip, brandprotection, CaribbeanIP, caribbeantrademarks, CentralAmericaIP, Eproint, gabrielabodden, guyanaip, intellectualproperty, ip, ipmadesimple, Marcopolocase, montserratip, searches, strategy, trademarkinfringement, trademarks, womeninbusiness, womenleaders
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