Important Changes for Owners of International Trade Mark Registrations

Author: Ian Aldridge, Progressive Legal

Owners of International Trade Mark Registrations are now strongly advised to appoint a local address for service to their overseas trade marks as soon as possible. 

Amendments to the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks have recently entered into force. These amendments lead several popular designated countries including Australia and the United Kingdom to alert the WIPO representative (or the holder of trade mark rights directly if it has no WIPO representative) by post only.  

This notice reinforces the importance of having a local-based address for service in place for your international trade mark designations at the earliest opportunity to minimise the risk that important, time-sensitive notices from the local Trade Marks Offices are not actioned by the holder and lead to loss of rights. 

International Trade Mark Registrations, if not represented by a local attorney, may lead to a loss of registered trademark rights because the trade mark owner has not received (within time) notifications or documents delivered by the trademark offices of the designated country asking for counter-arguments or relevant evidences against opposition/cancellation actions filed by a third party in that country. 

The UK Intellectual Property Office (UKIPO) has recently emphasised local address for service requirements to protect international trade mark registrations. As of 25 January 2023, any cancellation or rectification against a granted UK designation will prompt alert letters by post only. With only one month given to file an address in the UK and affirm defence strategy intentions, there is potential that these alerts could be missed without proper preparation. Safeguarding intellectual property integrity requires diligent efforts today! 

Key Takeaways

While any owner may be able to obtain international trade mark rights without appointing a local representative, it’s still important to appoint a local address for service to your designations as soon as possible to prosecute your filings, defend your registrations, and challenge conflicting rights of others. 

International trade mark owners may face a short deadline in some of the designated jurisdictions to respond to any challenges its international trade mark rights may be faced with after the application process is finalised, or they run the risk of losing protection. 

Appointing a local representative for international registrations is therefore more beneficial than ever, and we advise international trade mark owners to review existing portfolios of designations of International Registrations and consider appointing local representation now where necessary. 

Need any help with the management your trade mark portfolio? Contact our experienced team of trade mark lawyers, attorneys and specialists today on 1800 820 083 or by filling out the form on this page.