EXPLANATORY NOTE
(This note is not part of the Rules)
These Rules amend The Trade Marks Rules 2008 (S.I. 2008/1797) (the “2008 Rules”) to provide for an additional fast track opposition procedure under the Trade Marks Act 1994 (the “Act”).
A new definition of fast track opposition is inserted in Rule 2 of the 2008 Rules. The definition has four elements so that a fast track opposition is brought solely on grounds under section 5(1) or 5(2) of the Act, is based on no more than 3 earlier trade marks, each of which is registered in the UK or in the EU, or is protected in one or another of those territories as an international trade mark (UK) or (EU), where proof of use of the earlier marks can be provided with the notice of opposition, and which the opponent considers can be determined without the need for further evidence and without an oral hearing.
The new Rule 17A sets out the procedure for filing a notice of fast track opposition on Form TM7F which is to be filed electronically.
Rules19 and 20(1)–(3) are disapplied from fast track oppositions but Rule 20(4), which provides that the registrar may at any time give leave to either party to file evidence upon such terms as the registrar thinks fit, does apply.
Rules 62(1)(e) and (g) set out rules concerning the amendment of the statement of case and the consolidation of proceedings for fast track oppositions.
A new Rule 62(5) provides that a dispute relating to a fast track opposition may be heard before the registrar only if the Office requests it or if either party to the proceedings requests it and the registrar considers that oral proceedings are necessary in that case.
A new Rule 62(6) provides that where no oral hearing is held, the registrar shall give the parties an opportunity to set out their arguments in writing before reaching a decision.
Rule 63 is disapplied from fast track oppositions.
Rule 71 provides that when an appeal arises in proceedings between two or more parties then the notice of appeal to the person appointed shall be filed on Form TM55P.
A full impact assessment of the effect that this instrument will have on the costs of business and the voluntary sector is available from the Intellectual Property Office, Concept House, Cardiff Road, Newport NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside the instrument on www.legislation.gov.uk. Copies have also been placed in the libraries of both Houses of Parliament.