The Trade Marks Rules 2008

Renewal and restoration U.K.

Reminder of renewal of registration; section 43 U.K.

34.—(1) Subject to paragraph (2) below, [F1 at least six months] before the expiration of the last registration of a trade mark, the registrar shall F2 ... send to the registered proprietor notice of the approaching expiration and inform the proprietor at the same time that the registration may be renewed in the manner described in rule 35.

(2) If it appears to the registrar that a trade mark may be registered under section 40 at any time within six months before or at any time on or after the date on which renewal would be due (by reference to the date of application for registration), the registrar shall be taken to have complied with paragraph (1) if the registrar sends to the applicant notice to that effect within one month following the date of actual registration.

[F3 (2A) The registrar is not subject to any liability by reason of any failure to notify the proprietor in accordance with paragraph (1) and no proceedings lie against any officer of the registrar in respect of any such failure.]

Textual Amendments

F1 Words in rule 34(1) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 40(2)(a) (with Pt. 5)

F2 Words in rule 34(1) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 40(2)(b) (with Pt. 5)

F3 Rule 34(2A) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 40(3) (with Pt. 5)

Commencement Information

I1 Rule 34 in force at 1.10.2008, see rule 1

Renewal of registration; section 43 (Form TM11) U.K.

35.  Renewal of registration shall be effected by filing a request for renewal on Form TM11 at any time within the period of six months ending on the date of the expiration of the registration [F4 or following receipt of a notice from the registrar pursuant to rule 34(1)].

Textual Amendments

F4 Words in rule 35 inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 41 (with Pt. 5)

Commencement Information

I2 Rule 35 in force at 1.10.2008, see rule 1

Delayed renewal and removal of registration; section 43 (Form TM11) U.K.

36.—(1) If on the expiration of the last registration of a trade mark the renewal fee has not been paid, the registrar shall publish that fact.

(2) If, within six months from the date of the expiration of the last registration, a request for renewal is filed on Form TM11 accompanied by the appropriate renewal fee and additional renewal fee, the registrar shall renew the registration without removing the mark from the register.

(3) Where no request for renewal is filed, the registrar shall, subject to rule 37, remove the mark from the register.

(4) Where a mark is due to be registered after the date on which it is due for renewal (by reference to the date of application for registration), the request for renewal shall be filed together with the renewal fee and additional renewal fee within six months after the date of actual registration.

(5) The removal of the registration of a trade mark shall be published on the Office website.

Commencement Information

I3 Rule 36 in force at 1.10.2008, see rule 1

Restoration of registration; section 43 (Form TM13) U.K.

37.—(1) Where the registrar has removed the mark from the register for failure to renew its registration in accordance with rule 36, the registrar may, following receipt of a request filed on Form TM13 within six months of the date of the removal of the mark accompanied by the appropriate renewal fee and appropriate restoration fee —

(a) restore the mark to the register; and

(b) renew its registration,

[F5 if the registrar is satisfied that the failure to renew was unintentional].

[F6 (1A) Where a mark is restored to the register, the proprietor of the mark may not bring an action for infringement against a third party who, in good faith, has put goods on the market or supplied services under a sign which is identical with or similar to the mark in respect of the period beginning with the date of expiration of the registration and ending on the date its restoration is published in accordance with paragraph (2).]

(2) The restoration of the registration, including the date of restoration, shall be published on the Office website.

Textual Amendments

F5 Words in rule 37(1) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 42(2) (with Pt. 5)

F6 Rule 37(1A) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 42(3) (with Pt. 5)

Commencement Information

I4 Rule 37 in force at 1.10.2008, see rule 1

[F7 Restoration of a European Union trade mark; Schedule 2A, paragraph 28 U.K.

37A   A request for the registration of a comparable trade mark (EU) following the restoration of a European Union trade mark under paragraph 28 of Schedule 2A must include—

(a) a representation of the European Union trade mark;

(b) the registration number of that mark;

(c) the name and address of the proprietor;

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

(e) the priority date (if any) accorded pursuant to a claim of priority filed in respect of that mark pursuant to the European Union Trade Mark Regulation and the information specified in rule 6(1)(a) to (c) in respect of that priority claim;

(f) the number of the registered trade mark or international trade mark (UK) from which that mark claimed seniority (if any) and the seniority date.]

Textual Amendments

F7 Rule 37A inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 10; 2020 c. 1, Sch. 5 para. 1(1)