The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013

JurisdictionUK Non-devolved
CitationSI 2013/2235

2013 No. 2235

Trade Marks

The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013

Made 4th September 2013

Laid before Parliament 6th September 2013

Coming into force 1st October 2013

The Secretary of State makes the following rules in exercise of the powers conferred upon the Secretary of State by sections 38(2) and 78 of the Trade Marks Act 19941.

S-1 Citation and commencement

Citation and commencement

1. These Rules may be cited as the Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 and shall come into force on 1st October 2013.

S-2 Amendments to the Trade Marks Rules 2008

Amendments to the Trade Marks Rules 2008

2.—(1) The Trade Marks Rules 20082shall be amended as follows—

(2) In Rule 2(1), after the definition of “the Act” insert—

““fast track opposition” means an opposition—

(a) brought solely on grounds under section 5(1) or 5(2) of the Act,

(b) based on no more than 3 earlier trade marks, each of which is registered in the UK or in the EU, or is protected in one or another of those territories as an international trade mark (UK) or (EU),

(c) where proof of use of the earlier marks can be provided with the notice of opposition, and

(d) which the opponent considers may be determined without the need for further evidence and without an oral hearing.”

(3) At the beginning of Rule 17(1) omit “Any” and insert “Subject to Rule 17A, any”.

(4) After Rule 17, insert Rule 17A as follows—

S-17A

Opposition proceedings: filing of notice of fast track opposition; section 38(2) (Form TM7F))

17A.—(1) A notice to the registrar of fast track opposition to the registration, including the statement of the grounds of opposition, may be filed on Form TM7F.

(2) A notice of fast track opposition to the registration filed on Form TM7F and a notice of opposition to the registration filed on Form TM7 shall constitute alternatives and an opponent shall not maintain more than one opposition against the same trade mark application.

(3) Unless paragraph (4) applies, the time prescribed for the purposes of section 38(2) shall be the period of two months beginning immediately after the date on which the application was published.

(4) This paragraph applies where a request for an extension of time for the filing of Form TM7 or TM7F has been made on Form TM7A, before the expiry of the period referred to in paragraph (3) and where this paragraph applies, the time prescribed for the purposes of section 38(2) in relation to any person having filed a Form TM7A (or, in the case of a company, any subsidiary or holding company of that company or any other subsidiary of that holding company) shall be the period of three months beginning immediately after the date on which the application was published.

(5) Forms TM7F and TM7A shall be filed electronically using the filing system provided on the Office website or by such other means as the registrar may permit.

(6) There shall be included in the statement of the grounds of opposition a representation of that mark and—

(a)

(a) the details of the authority with which the mark is registered or protected;

(b)

(b) the registration number of that mark;

(c)

(c) the goods and services in respect of which—

(i) that mark is registered, and

(ii) the opposition is based;

(d)

(d) the date of completion of the registration procedure or of granting protection to an international trade mark (UK) or (EU); and

(e)

(e) where the registration or protection 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)3the mark has been put to genuine use in relation to each of the goods and services in respect of which the opposition is based.

(7) Where the earlier mark is subject to proof of use under section 6A of the Act, the proof of use that the opponent wishes to rely upon shall be provided with the notice of fast track opposition.

(8) The registrar shall send a copy of Form TM7F to the applicant and the date upon which this is sent shall, for the purposes of rule 18, be the “notification date”.

(9) In this rule “subsidiary” and “holding company” have the same meaning as in the Companies Act 20064.”

(5) In Rule 19, insert after paragraph (1)—

S-1A

“1A This rule shall not apply to fast track oppositions.”

(6) In Rule 20, insert after paragraph (4)—

S-5

“5 Paragraphs (1)–(3) of this Rule shall not apply to fast track oppositions but paragraph (4) shall...

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