These Rules revoke and replace the Trade Marks Rules 1994 (S.I. 1994/2583, as amended). They re-enact, with modifications and amendments of a drafting nature, the 1994 Rules as amended and make several changes of substance in order to give better effect to the provisions of the Trade Marks Act 1994 (“the Act”).

The changes of substance are as follows– 1 with the consent of both of the parties the registrar may grant a “ cooling-off” period in actions for opposition to registration of a trade mark (rule 13); 2 certain time limits in actions for revocation (on grounds other than non-use) and invalidation have been reduced from three months to six weeks (rules 32 and 33); 3 the time limit for appeal to the appointed person has been reduced from one month to 28 days (rule 63); 4 an application for a trade mark now requires more detailed information regarding the specification of the class of goods or services in Schedule 4 to which it relates (rule 8); 5 provision has been made for “filing” of a document with the registrar to mean delivery of that document to the registrar at the Office (rule 2); 6 nothing in section 67(2) of the Act relating to publication of information is to be construed as preventing the publication of decisions of cases relating to trade marks decided by the registrar (rule 49); 7 provision has been made for the registrar to call case management conferences and pre-hearing reviews (rules 36 and 37); 8 where the Rules provide for the use of an affidavit or statutory declaration, a witness statement verified by a statement of truth may now be used as an alternative (rule 55); 9 provision has been made for the calling and cross-examination of persons in proceedings where a party has adduced evidence of a statement made by a person otherwise than while giving oral evidence in those proceedings and does not call that person as a witness (Rule 55).

Any proceeding commenced before the registrar before the entry into force of these Rules shall proceed under the Trade Mark Rules 1994 as amended or old law as appropriate, but where a new step is to be taken on or after 26th April 2000 in relation to any proceedings commenced under the Trade Mark Rules 1994 these Rules shall apply to such proceedings from that date.

A regulatory impact appraisal is available, copies of which have been placed in the libraries of both Houses of Parliament. Copies of the assessment are also available from the Trade Marks Directorate of the Patent Office, Room 2.005, Concept House, Cardiff Road, Newport NP10 8QQ.