The Trade Marks (Amendment) Rules 2004
| Jurisdiction | UK Non-devolved |
| Citation | SI 2004/947 |
| Year | 2004 |
2004No. 947
TRADE MARKS
The Trade Marks (Amendment) Rules 2004
28thMarch2004
31stMarch2004
The Secretary of State, in exercise of the powers conferred upon her by sections 38(2), 39(3), 41, 44(3), 65, 76(1) and 78 of the Trade Marks Act 1994( 1) , after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 1992( 2), hereby makes the following Rules:
Citation and commencement
1. - (1) These Rules may be cited as the Trade Marks (Amendment) Rules 2004.
(2) These Rules shall come into force on 5th May 2004 immediately after the Trade Marks (Proof of Use, etc.) Regulations 2004( 3) have come into force.
Amendments to the Trade Marks Rules 2000
2. The Trade Marks Rules 2000( 4) shall be amended as follows.
3. In rule 5 (applications for registration) paragraphs (2) to (4) shall be omitted.
4. In rule 8 (application may relate to more than one class and shall specify the class) for paragraphs (2) and (3) there shall be substituted -
" (2) Every application shall specify -
(a) the class in Schedule 4 to which it relates; and(b) the goods or services which are appropriate to the class and they shall be described in such a way as to indicate clearly the nature of those goods or services and to allow them to be classified in the classes in Schedule 4.(3) If the application relates to more than one class in Schedule 4 the specification contained in it shall set out the classes in consecutive numerical order and the specification of the goods or services shall be grouped accordingly.".
5. After rule 8 there shall be inserted -
"8ADetermination of classification
(1) Where an application does not satisfy the requirements of rule 8(2)(b) or 8(3), the registrar shall send notice thereof to the applicant.
(2) A notice sent under paragraph (1) shall specify a period, of not less than two months, within which the applicant must satisfy those requirements.
(3) Where the applicant fails to satisfy those requirements before the expiry of the period specified under paragraph (2) his application shall be treated as abandoned.".
6. In rule 11 (deficiencies in application) for the word "8(2)", in both places it occurs, there shall be substituted "8(2)(a)".
7. For rule 13 (opposition proceedings) there shall be substituted -
"13Opposition proceedings: filing of notice of opposition; s38(2) (Form TM7)
(1) Any person may, within three months of the date on which the application was published, give notice to the registrar of opposition to the registration on Form TM7 which shall include a statement of the grounds of opposition.
(2) Where the opposition is based on a trade mark which has been registered, there shall be included in the statement of the grounds of opposition a representation of that mark and -
(a) the details of the authority with which the mark is registered;(b) the registration number of that mark;(c) the classes in respect of which that mark is registered;(d) the goods and services in respect of which - (i) that mark is registered; and(ii) the opposition is based; and(e) where the registration procedure for the mark was completed before the start of the period of five years ending with the date of publication, a statement detailing whether during the period referred to in section 6A(3)(a)( 5) the mark has been put to genuine use in relation to each of the goods and services in respect of which the opposition is based or whether there are proper reasons for non-use (for the purposes of rule 13C this is the "statement of use").(3) Where the opposition is based on a trade mark in respect of which an application for registration has been made, there shall be included in the statement of the grounds of opposition a representation of that mark and those matters set out in paragraph (2)(a) to (d), with references to registration being construed as references to the application for registration.
(4) Where the opposition is based on an unregistered trade mark or other sign which the person opposing the application claims to be protected by virtue of any rule of law (in particular, the law of passing off), there shall be included in the statement of the grounds of opposition a representation of that mark or sign and the goods and services in respect of which such protection is claimed.
(5) The registrar shall send a copy of Form TM7 to the applicant and the date upon which this is done shall, for the purposes of rule 13A, be the "notification date".
13AOpposition proceedings: filing of counter-statement and cooling off period (Forms TM8, TM9c & TM9t)
(1) The applicant shall, within the relevant period, file a Form TM8, which shall include a counter-statement, otherwise his application for registration shall be deemed to be withdrawn.
(2) Unless either paragraph (3) or (4) applies, the relevant period shall begin on the notification date and end three months after that date.
(3) This paragraph applies where -
(a) the applicant and the person opposing the registration agree to an extension of time for the filing of Form TM8;(b) within the period of three months beginning on the notification date, either party files Form TM9c requesting an extension of time for the filing of Form TM8; and(c) during the period beginning on the date Form TM9c was filed and ending twelve months after the notification date, no notice to continue on Form TM9t is filed by the person opposing the registration,and where this paragraph applies the relevant period shall begin on the notification date and end twelve months after that date.
(4) This paragraph applies where -
(a) a request for an extension of time for the filing of Form TM8 has been filed on Form TM9c; and(b) the person opposing the registration has filed a notice to continue on Form TM9t,and where this paragraph applies the relevant period shall begin on the notification date and end one month after the date on which Form TM9t was filed or three months after the notification date, whichever is the later.
(5) The registrar shall send a copy of Form TM8 to the person opposing the registration and, unless rule 13B applies, the date upon which this is sent shall, for the purposes of rule 13C, be the "initiation date".
13BOpposition proceedings: preliminary indication (Form TM53)
(1) This rule applies if -
(a) the opposition or part of it is based on the relative grounds of refusal set out in section 5(1) or (2); and(b) the registrar has not indicated to the parties that she thinks that it is inappropriate for this rule to apply.(2) After considering the statement of the grounds of opposition and the counter-statement the registrar shall notify the parties whether it appears to her that the mark should or should not be registered in respect of the goods and services listed in the application.
(3) The date upon which such notification is sent shall be the "indication date".
(4) Where it appeared to the registrar under paragraph (2) that -
(a) the mark should be registered for all the goods and services listed in the application, the person opposing the registration shall, within one month of the indication date, file notice of intention to proceed on Form TM53, otherwise he shall be deemed to have withdrawn his opposition;(b) the mark should be registered for some, but not all, of the goods and services listed in the application, unless - (i) within the period of one month of the indication date, the applicant or the person opposing the registration files a notice of intention to proceed on Form TM53; or(ii) within the period of one month beginning immediately after the end of the period mentioned in paragraph (i), the applicant requests the amendment of his application so that it relates only to the goods and services which the registrar notified the parties to be goods and services for which it appeared the mark should be registered;the applicant shall be deemed to have withdrawn his application for registration in its entirety; or
(c) the mark should not be registered for any of the goods and services listed in the application, the applicant shall, within one month of the indication date, file notice of intention to proceed on Form TM53, otherwise he shall be deemed to have withdrawn his application for registration.(5) The registrar need not give reasons why it appears to her that the mark should or should not be registered, nor shall her view be subject to appeal.
(6) If a notice of intention to proceed has been filed by either party then the registrar shall send a copy of that notice to all the other parties and the date upon which this is sent shall, for the purposes of rule 13C, be the "initiation date".
13COpposition proceedings: evidence rounds (Form TM54)
(1) The person opposing the registration, within three months of the initiation date -
(a) shall file any evidence he considers necessary to adduce in support of his grounds of opposition; and(b) where - (i) the opposition is based on an earlier trade mark;(ii) the registration procedure for the earlier trade mark was completed before the start of the period of five years ending with the date of publication; and(ii) the truth of a matter set out in the statement of use is either denied or not admitted by the applicant,shall file evidence supporting the statement of use.
(2) Where the person opposing the registration files no evidence under paragraph (1), he shall, unless the registrar otherwise...
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