Cost-Savings and Pitfalls in New U.K. Practice on Invalidity

The IPO has amended its procedures so that undefended invalidity actions against U.K. registered trademarks are granted by default.

Previously, a challenger had to prove invalidity, even if the registered proprietor did not defend. This normally meant incurring costs in evidence preparation.

Under the new practice, a U.K. registration will be declared invalid automatically where a proprietor fails to respond to an action, provided the grounds pleaded would, if true, form a legal basis for invalidation. The IPO will send notice to the proprietor’s address for service giving 14 days for submissions or a request to be heard on the proposed default judgment.

The change will result in substantial cost-savings in undefended invalidity actions before the IPO. This is in contrast to the OHIM procedure where costs are still front-loaded, with evidence falling due when the action is filed.

A protective measure is planned to allow the IPO to set aside default decisions in appropriate cases, such as where a proprietor did not receive actual notice of the action. Details are still under consideration, however, and set-aside may not be available where it is sought very late or where third parties have acted in reliance on a registration having been declared invalid.

Consequently, for brand owners it remains critical to update the U.K. Register promptly with changes of address and attorney. The CTM Register should be likewise updated to avoid OHIM proceedings being undertaken and concluded without a proprietor’s knowledge or involvement.

If you have any questions about whether recordals are advisable in a given case, please contact the Jenkins trademark team.