The Trade Marks (International Registration) (Amendment) Order 2004

Explanatory Note

(This note is not part of the Order)

This Order amends the Trade Marks (International Registration) Order 1996 (SI 1996/714) (“the 1996 Order”). That Order gave effect in the United Kingdom to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks adopted at Madrid on 27th June 1989 which the United Kingdom ratified on 6th April 1995.

Article 3 of this Order amends article 3 of the 1996 Order. This amendment is consequential on the insertion of a new rule 8A into the Trade Marks Rules 2000 (SI 2000/136) (“the 2000 Rules”) by the Trade Marks (Amendment) Rules 2004 (SI 2004/947) (“the 2004 Rules”).

Article 4 of this Order inserts a new article 9A into the 1996 Order. The effect of this new article is to allow the registrar to give notice of provisional refusal to the International Bureau where any term used to indicate any of the goods and services in the International application is vague, incomprehensible or linguistically incorrect.

Article 5 of this Order substitutes new articles 10 to 10C for article 10 of the 1996 Order. The amendments reflect changes made to the opposition proceedings in respect of domestic applications for the registration of a trade mark by rules 13 to 13C of the 2000 Rules which were substituted for the previous rule 13 by the 2004 Rules.

Article 6 of this Order amends article 11 of the 1996 Order. This amendment is consequential on other changes made by this Order.

Article 7 of this Order amends article 13 of the 1996 Order. These amendments add a requirement for an address for service to be filed in invalidity and revocation cases. Further, they change references to the 2000 Rules so as to reflect the substitution of rules 31 to 33B of the 2000 Rules by the 2004 Rules.

Article 8 of this Order provides transitional provisions.

The Madrid Protocol is published as Cm 1601 Miscellaneous Series No. 14 (1991).

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.