The Trade Marks Rules 2000

The register

Form of register; s. 63(1)

38.  The register required to be maintained by the registrar under section 63(1) need not be kept in documentary form.

Entry in register of particulars of registered trade marks; s. 63(2) (Form TM24)

39.  In addition to the entries in the register of registered trade marks required to be made by section 63(2)(a), there shall be entered in the register in respect of each trade mark registered therein the following particulars–

(a) the date of registration as determined in accordance with section 40(3) (that is to say, the date of the filing of the application for registration);

(b) the actual date of registration (that is to say, the date of the entry in the register);

(c) the priority date (if any) to be accorded pursuant to a claim to a right to priority made under section 35 or 36;

(d) the name and address of the proprietor;

(e) the address for service (if any) as furnished pursuant to rule 10 above;

(f) any disclaimer or limitation of rights under section 13(1)(a) or (b);

(g) any memorandum or statement of the effect of any memorandum relating to a trade mark of which the registrar has been notified on Form TM24;

(h) the goods or services in respect of which the mark is registered;

(i) where the mark is a collective or certification mark, that fact;

(j) where the mark is registered pursuant to section 5(5) with the consent of the proprietor of an earlier trade mark or other earlier right, that fact;

(k) where the mark is registered pursuant to a transformation application,

(a) the number of the international registration, and

(b) either:

(i) the date accorded to the international registration under Article 3(4), or

(ii) the date of recordal of the request for extension to the United Kingdom of the international registration under Article 3ter,

as the case may be, of the Madrid Protocol;

(l) where the mark arises from the conversion of a Community trade mark or an application for a Community trade mark, the number of any other registered trade mark from which the Community trade mark or the application for a Community trade mark claimed seniority and the earliest seniority date.

Entry in register of particulars of registrable transactions; s. 25

40.  Upon application made to the registrar by such person as is mentioned in section 25(1)(a) or (b) there shall be entered in the register the following particulars of registrable transactions, that is to say–

(a) in the case of an assignment of a registered trade mark or any right in it–

(i) the name and address of the assignee,

(ii) the date of the assignment, and

(iii) where the assignment is in respect of any right in the mark, a description of the right assigned;

(b) in the case of the grant of a licence under a registered trade mark–

(i) the name and address of the licensee,

(ii) where the licence is an exclusive licence, that fact,

(iii) where the licence is limited, a description of the limitation, and

(iv) the duration of the licence if the same is or is ascertainable as a definite period;

(c) in the case of the grant of any security interest over a registered trade mark or any right in or under it–

(i) the name and address of the grantee,

(ii) the nature of the interest (whether fixed or floating), and

(iii) the extent of the security and the right in or under the mark secured;

(d) in the case of the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it–

(i) the name and address of the person in whom the mark or any right in or under it vests by virtue of the assent, and

(ii) the date of the assent; and

(e) in the case of a court or other competent authority transferring a registered trade mark or any right in or under it–

(i) the name and address of the transferee,

(ii) the date of the order, and

(iii) where the transfer is in respect of a right in the mark, a description of the right transferred;

and, in each case, there shall be entered the date on which the entry is made.

Application to register or give notice of transaction; ss. 25 & 27(3) (Forms TM16, TM24, TM50 & TM51)

41.—(1) An application to register particulars of a transaction to which section 25 applies or to give notice to the registrar of particulars of a transaction to which section 27(3) applies shall be made, subject to paragraph (2) below,

(a) relating to an assignment or transaction other than a transaction referred to in sub-paragraphs (b) to (d) below, on form TM16;

(b) relating to a grant of a licence, on form TM50;

(c) relating to an amendment to, or termination of a licence, on form TM51;

(d) relating to the grant, amendment or termination of any security interest, on form TM24; and

(e) relating to the making by personal representatives of an assent or to an order of a court or other competent authority, on form TM24.

(2) An application under paragraph (1) above shall–

(a) where the transaction is an assignment, be signed by or on behalf of the parties to the assignment;

(b) where the transaction falls within sub-paragraphs (b), (c) or (d) of paragraph (1) above, be signed by or on behalf of the grantor of the licence or security interest;

or be accompanied by such documentary evidence as suffices to establish the transaction.

(3) Where the transaction is effected by an instrument chargeable with duty, the application shall be subject to the registrar being satisfied that the instrument has been duly stamped.

(4) Where an application to give notice to the registrar has been made of particulars relating to an application for registration of a trade mark, upon registration of the trade mark, the registrar shall enter those particulars in the register.

Public inspection of register; s. 63(3)

42.—(1) The register shall be open for public inspection at the Office during the hours of business of the Office as published in accordance with rule 70 below.

(2) Where any portion of the register is kept otherwise than in documentary form, the right of inspection is a right to inspect the material on the register.

Supply of certified copies etc; s. 63(3) (Form TM31R)

43.  The registrar shall supply a certified copy or extract or uncertified copy or extract, as requested on Form TM31R, of any entry in the register.

Request for change of name or address in register; s. 64(4) (Forms TM21 & TM33)

44.—(1) The registrar shall, on a request made on Form TM21 by the proprietor of a registered trade mark or a licensee or any person having an interest in or charge on a registered trade mark which has been registered under rule 40, enter any change in his name or address as recorded in the register.

(2) The registrar may at any time, on a request made on Form TM33 by any person who has furnished an address for service under rule 10 above, if the address is recorded in the register, change it.

Removal of matter from register; s. 64(5) (Form TM7)

45.—(1) Where it appears to the registrar that any matter in the register has ceased to have effect, before removing it from the register–

(a) she may, where she considers it appropriate, publish her intention to remove that matter, and

(b) where any person appears to her to be affected by the removal, she shall send notice of her intention to that person.

(2) Within three months of the date on which her intention to remove the matter is published, or notice of her intention is sent, as the case may be–

(a) any person may file notice of opposition to the removal on form TM7; and

(b) the person to whom a notice is sent under paragraph (1)(b) above may file, in writing–

(i) his objections, if any, to the removal, or

(ii) a request to have his objections heard orally;

and where such opposition or objections are made, rule 54 shall apply.

(3) If the registrar is satisfied after considering any objections or opposition to the removal that the matter has not ceased to have effect, she shall not remove it.

(4) Where there has been no response to the registrar’s notice she may remove the matter; where representations objecting to the removal of the entry have been made (whether in writing or orally) the registrar may, if she is of the view after considering the objections that the entry or any part thereof has ceased to have effect, remove it or, as appropriate, the part thereof.