The Trade Marks Rules 2008

EXPLANATORY NOTE

(This note is not part of the Rules)

These Rules revoke and replace the Trade Marks Rules 2000 (SI 2000/136), (“the 2000 Rules”). They re-enact, with modifications and amendments of a drafting nature, the 2000 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)

the period for filing opposition proceedings has been reduced from three months to two months with a right to extend the period to three months subject to filing Form TM7A (rule 17);

2)

the period for filing a counter-statement in actions for opposition to registration of a trade mark has been reduced from three months to two months and the “cooling-off” period has been reduced to an initial period of nine months but extendible to eighteen months subject to the agreement of both parties (rule 18);

3)

in actions for revocation (on non-use grounds) the period for filing a counter-statement has been reduced from three months to two months and the proprietor will now have a single opportunity to file evidence of use (or proper reasons for non-use) which the proprietor intends to rely on in order to defend the registration. The period for filing evidence which shall be specified by the registrar shall be not less than two months (rule 38);

4)

in actions for revocation (on grounds other than non-use) and invalidation of a trade mark the period for filing a counter-statement has been increased from six weeks to two months (rules 39 and 41);

5)

provision has been made for the registrar to set aside cancellation of an application for registration or the revocation or invalidation of a trade mark registration if the applicant demonstrates that the failure to challenge the proceedings was due to a failure to receive notice of the proceedings. The application to set aside must be made within six months of the relevant decision (rule 43);

6)

in any dispute between two or more parties an appeal against a decision (other than a decision awarding costs to any party) which is made at any point of the proceedings prior to a “final decision” may only be made independently of any appeal against a final decision with the leave of the registrar (rule 70);

7)

where an applicant for or proprietor of a trade mark has failed to comply with a time period for the doing of any act (except in relation to proceedings before the registrar involving a second party, or the filing of an appeal to the Appointed Person or in the cases listed in schedule 1) the applicant/proprietor will have the right to an extension of time within which to complete the action provided a request for extension has been made within two months of the date when the relevant time period expired. This provision is required in order to comply with the requirements of the Singapore Treaty on the Law of Trademarks (adopted in Singapore on 27 March 2006 to which the United Kingdom is a signatory and available on the WIPO website) (rule 77);

8)

where there are deficiencies in an application for registration of a trade mark the period for remedying those deficiencies has been reduced from two months to a period of not less than one month as specified by the registrar (rule 13);

9)

the period for correction of queries relating to the classification of a trade mark has been reduced from two months to a period of not less than one month as specified by the registrar (rule 9);

10)

where a right to priority is claimed by reason of an application for protection filed in a Convention country (as defined in Section 55(1)(b) of the Act) the registrar may determine what documentation shall be filed in support of the application (rule 6);

11)

provision has been made for the registrar to set a timetable for the parties to file evidence in proceedings and to direct the form in which evidence must be filed and the taking of oral evidence which follow equivalent provisions relating to proceedings with respect to patents and registered designs (rule 62 and 64);

Subject to the exceptions in rule 83(4) where a new step is to be taken on or after 1st October 2008 in relation to any proceedings commenced under the 2000 Rules, these Rules shall apply to such proceedings from that date.

A full impact assessment of the effect that this instrument will have on the costs of business and the voluntary sector is available from the UK Intellectual Property Office, Trade Marks Law Section, Concept House, Cardiff Road, Newport NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside the instrument on the OPSI website. Copies have also been placed in the libraries of both Houses of Parliament.