The Trade Marks (International Registration) (Amendment) Order 2004
| Jurisdiction | UK Non-devolved |
| Citation | SI 2004/948 |
| Year | 2004 |
2004 No. 948
TRADE MARKS
The Trade Marks (International Registration) (Amendment) Order 2004
Made 28th March 2004
Laid before Parliament 31th March 2004
Coming into force in accordance with article 1(2).
The Secretary of State, in exercise of the powers conferred on her by section 54 of the Trade Marks Act 19941, after consulting with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 19922, hereby makes the following Order:
1.—(1) This Order may be cited as the Trade Marks (International Registration) (Amendment) Order 2004.
(2) This Order shall come into force on 5th May 2004 immediately after the Trade Marks (Amendment) Rules 20043have come into force.
2. The Trade Marks (International Registration) Order 19964shall be amended as follows.
3. In article 3 (entitlement to protection) for the words “5 to 8” there shall be substituted “5 to 8A”.
4. After article 9 there shall be inserted—
S-9A “Notifications by the International Bureau of vague, incomprehensible or linguistically incorrect terms
9A.—(1) Where the International Bureau notifies the registrar, under Rule 13(2)(b) of the Common Regulations, that a particular term used to indicate any of the goods and services included in the international registration is too vague for the purposes of classification or is incomprehensible or is linguistically incorrect then the registrar may give notice of provisional refusal to the International Bureau in respect of that term.
(2) Notice of provisional refusal shall specify a period within which the holder may make representations.
(3) A holder making representations shall file an address for service in the United Kingdom on Form TM33.”.
5. For article 10 (publication, opposition proceedings and observations) there shall be substituted—
“Publication, notice of opposition and observations
10.—(1) Where following examination under article 9 it appears to the registrar that the requirements of article 3 (entitlement to protection) are met in relation to all or some of the goods or services included in the international registration, the registrar shall publish a notice specifying particulars of the international registration and specifying the goods and services for which protection ought to be conferred.
(2) Any person may, within three months of the date on which the notice was published under paragraph (1), give notice to the registrar of opposition to the conferring of protection.
(3) Where a notice has been published under paragraph (1), any person may, at any time before protection has been conferred on the trade mark in accordance with article 12, make observations in writing to the registrar as to whether the trade mark should be protected; and the registrar shall inform the holder of any such observations.
A person who makes observations does not thereby become a party to proceedings in relation to the request for protection.
Opposition proceedings: filing of notice of opposition
10A.—(1) Notice of opposition to the conferring of protection given under article 10(2) shall be on Form TM7 which shall include—
(a)
(a) a statement of the grounds of opposition; and
(b)
(b) an address for service in the United Kingdom.
(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)
(a) the details of the authority with which the mark is registered;
(b)
(b) the registration number of that mark;
(c)
(c) the classes in respect of which that mark is registered;
(d)
(d) the goods and services in respect of which—
(i) that mark is registered; and
(ii) the opposition is based; and
(e)
(e) where the registration procedure for the mark was completed before the start of the period of five years ending with the date the notice was published under article 10(1), a statement detailing whether during the period referred to in section 6A(3)(a)5it 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 13C6(which has effect by virtue of article 10C(2)) 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) Where notice of opposition has been given, the registrar shall, within four months of the notice being published under article 10(1), give notice of provisional refusal to the International Bureau stating the grounds on which the opposition to the conferring of protection is based.
(6) The registrar shall send a copy of Form TM7 to the holder and the date upon which this is done shall, for the purpose of article 10B, be the “notification date”.
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