EXPLANATORY NOTE
(This note is not part of the Rules)
These Rules amend the Trade Mark Rules 2000 (SI 2000/136 as amended) (“the 2000 Rules”).
Rule 3 inserts a new rule 11A into the 2000 Rules. This new rule is consequential on the changes to the registration procedure under the Trade Marks Act 1994 (“the Act”) made by the Trade Marks (Relative Grounds) Order 2007 (SI 2007/1976) (“the 2007 Order”) under which the registrar shall no longer refuse to register a trade mark on relative grounds under section 5 of the Act unless the proprietor of the earlier trade mark or other earlier right objects on any such ground in opposition proceedings. Under this rule the registrar is required to notify the applicant and the proprietor of any earlier trade mark where it appears from a search of earlier trade marks that the requirements for registration under section 5 of the Act are not met. However, the registrar is not required to notify a proprietor of an earlier registered trade mark or international trade mark (UK) who has confirmed that he does not wish to receive notifications and is only required to notify a proprietor of an earlier Community trade mark or international trade mark (EC) if he has opted to receive notifications by electronically filing a request on form TM6.
Rule 4 amends rule 13 of the 2000 Rules and is consequential on the changes made by the 2007 Order. It also removes the requirement to specify in a notice of opposition (form TM7) the classes in respect of which the mark is registered.
Rule 5 inserts a new rule 14A into the 2000 Rules. This new rule permits the licensee of an earlier trade mark or the authorised user of an earlier collective mark or certification mark to apply to the registrar for leave to intervene in opposition proceedings where such proceedings are based on the relative grounds for refusal in section 5 of the Act.
Rule 6 deletes the definition of “proprietor” from the 2000 Rules so as to render references to the proprietor in the 2000 Rules consistent with its usage in the Act.
Rule 7 provides transitional provisions.
A full regulatory impact assessment of the effect that this instrument will have on the costs of business and the voluntary sector is available from the UK Intellectual Property Office, Room 2B36, Concept House, Cardiff Road, Newport, NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside the instrument on the OPSI website.