The Trade Marks (Amendment) Rules 2004

Explanatory Note

(This note is not part of the Rules)

These Rules amend the Trade Marks Rules 2000 (SI 2000/136) (“the 2000 Rules”).

Rule 3 revokes rules 5(2) to (4) of the 2000 Rules. This means that it will no longer be a requirement in Rules that certain elements of a trade mark must be claimed.

Rule 4 amends rule 8 of the 2000 Rules. This amendment makes it clear that the description of the goods and services to which the application relates must be worded in a clear fashion.

Rule 5 inserts a new rule 8A into the 2000 Rules. This new rule provides a sanction to ensure that applicants comply with the amended rule 8.

Rule 6 amends rule 11 of the 2000 Rules. This amendment is consequential on the amendment of rule 8 and the insertion of new rule 8A.

Rule 7 substitutes new rules 13 to 13C for rule 13 of the 2000 Rules. This introduces a new opposition procedure, where in certain cases, before evidence has been filed, the registrar will notify the parties if it appears to her that a particular mark should or should not be registered. Further, it amends the procedure surrounding the cooling off period and introduces the requirement to show use of certain earlier trade marks which a person opposing the registration of a trade mark uses as the basis of his opposition.

Rules 8 and 9 amend rules 14 and 18 of the 2000 Rules respectively. These amendments are consequential on the changes made to the rules relating to opposition proceedings and various forms.

Rule 10 amends rule 21 of the 2000 Rules. These amendments clarify the circumstances in which an application can be divided. Further, they make it clear that where a mark is deleted from the application, that application, in so far as it relates to the deleted mark shall be treated as withdrawn.

Rules 11 and 12 amend rules 23 and 25 of the 2000 Rules respectively. These amendments are consequential on the changes made to the rules relating to opposition proceedings and various forms.

Rule 13 substitutes new rules 31 to 33B for rules 31 to 33 of the 2000 Rules. These amendments make a number of changes to revocation and invalidation proceedings and the filing of evidence. In particular, where the proprietor of a trade mark is required to show use to avoid revocation, that proof of use must cover the period of alleged non-use as set out on the appropriate form. Further, rule 33 is amended to reflect the new requirements on an applicant to show use of certain earlier trade marks which he uses as the basis of his application for invalidation.

Rule 14 amends rule 34 of the 2000 Rules. This amendment reflects the new arrangements for filing evidence.

Rule 15 amends rule 35 of the 2000 Rules. This amendment is consequential on the new rules 31 to 33B.

Rule 16 amends rule 47 of the 2000 Rules. This amendment is consequential on the changes made to the relevant form.

Rule 17 amends rule 63 of the 2000 Rules. This amendment means that an appeal to the person appointed shall in future be filed on a form.

Rule 18 substitutes a new rule 65 into the 2000 Rules. This substituted rule allows the appointed person to hear and determine appeals on the basis of written representations, where all parties to the proceedings agree.

Rule 19 amends rule 68 of the 2000 Rules. These amendments are consequential on the changes made to rule 13 and rules 31 to 33B.

Rules 20 to 24 provide transitional provisions.

A Regulatory Impact Assessment 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, The Patent Office, Concept Office, Cardiff Road, Newport, NP10 8QQ.