The Trade Marks Rules 2008
| Jurisdiction | UK Non-devolved |
| Citation | SI 2008/1797 |
2008No. 1797
Trade Marks
The Trade Marks Rules 2008
Made7thJuly2008
Laid before Parliament8thJuly2008
Coming into force1stOctober2008
The Secretary of State makes the following rules in exercise of the powers conferred upon the Secretary of State by sections 4(4), 13(2), 25(1), (5) and (6), 34(1), 35(5), 38(1) and (2), 39(3), 40(4), 41(1) and (3), 43(2), (3), (5) and (6), 44(3), 45(2), 63(2) and (3), 64(4), 65(1) and (2), 66(2), 67(1) and (2), 68(1) and (3), 69, 76(1), 78, 80(3), 81, 82 and 88 of, paragraph 6(2) of Schedule 1 to, and paragraph 7(2) of Schedule 2 to, the Trade Marks Act 1994 1.
In accordance with section 8 of the Tribunals and Inquiries Act 1992 2, the Secretary of State has consulted the Administrative Justice and Tribunals Council before making these Rules.
Preliminary
1 Citation and commencement
1. These Rules may be cited as the Trade Marks Rules 2008 and shall come into force on 1st October 2008.
2 Interpretation
(1) In these Rules—
“the Act” means the Trade Marks Act 1994;
“the Journal” means the Trade Marks Journal published in accordance with rule 81;
“the “Nice Agreement” means the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15th June 1957 3, which was last amended on 28th September 1979;
“the “Nice Classification” means the system of classification under the Nice Agreement 4;
“the Office” means the Patent Office which operates under the name “the UK Intellectual Property Office”;
“send” includes give;
“specification” means the statement of goods or services in respect of which a trade mark is registered or proposed to be registered;
“transformation application” means an application to register a trade mark under the Act where that mark was the subject of an international registration prior to that registration being cancelled.
(2) In these Rules a reference to a section is a reference to that section in the Act and a reference to a form is a reference to that form as published under rule 3.
(3) In these Rules references to the filing of any application, notice or other document, unless the contrary intention appears, are to be construed as references to its being delivered to the registrar at the Office.
3 Forms and directions of the registrar; section 66
(1) Any forms required by the registrar to be used for the purpose of registration of a trade mark or any other proceedings before the registrar under the Act pursuant to section 66 and any directions with respect to their use shall be published on the Office website and any amendment or modification of a form or of the directions with respect to its use shall also be published on the Office website.
(2) Except in relation to Forms TM6 and TM7A a requirement under this rule to use a form as published is satisfied by the use either of a replica of that form or of a form which is acceptable to the registrar and contains the information required by the form as published and complies with any directions as to the use of such a form.
4 Requirement as to fees
(1) The fees to be paid in respect of any application, registration or any other matter under the Act and these Rules shall be those (if any) prescribed in relation to such matter by rules under section 79 (fees).
(2) Any form required to be filed with the registrar in respect of any specified matter shall be subject to the payment of the fee (if any) prescribed in respect of that matter by those rules.
Application for registration
5 Application for registration; section 32 (Form TM3)
(1) An application for the registration of a trade mark shall be filed on Form TM3 (except where the application is a transformation application in which case the application for registration shall be filed on Form TM4) and shall be subject to the payment of the application fee and such class fees as may be appropriate.
(2) Where an application is for the registration of a single trade mark, an applicant may request the registrar to undertake an expedited examination of the application.
(3) A request for expedited examination shall be made on Form TM3 which shall be filed electronically using the filing system provided on the Office website, or by such other means as the registrar may permit in any particular case, and shall be subject to payment of the prescribed fee.
(4) Where an applicant makes a request for expedited examination, the application fee and any class fees payable in respect of the application shall be payable at the time the application is made and accordingly rule 13 shall not apply insofar as it relates to the failure of an application to satisfy the requirements of section 32(4).
(5) In this rule and rule 15 a “request for expedited examination” means a request that, following an examination under section 37, the registrar notify the applicant within a period of ten business days (as specified in a direction given by the registrar under section 80) beginning on the business day after the date of filing of the application for registration whether or not it appears to the registrar that the requirements for registration are met.
6 Claim to priority; sections 35 & 36
(1) Where a right to priority is claimed by reason of an application for protection of a trade mark duly filed in a Convention country under section 35 or in another country or territory in respect of which provision corresponding to that made by section 35 is made under section 36 (an “overseas application”), the application for registration under rule 5 shall specify—
(a)
(a) the number accorded to the overseas application by the registering or other competent authority of the relevant country;
(b)
(b) the country in which the overseas application was filed; and
(c)
(c) the date of filing.
(2) The registrar may, in any particular case, by notice require the applicant to file, within such period of not less than one month as the notice may specify, such documentary evidence as the registrar may require certifying, or verifying to the satisfaction of the registrar, the date of the filing of the overseas application, the country or registering or competent authority, the representation of the mark and the goods or services covered by the overseas application.
7 Classification of goods and services; section 34
(1) The prescribed system of classification for the purposes of the registration of trade marks is the Nice Classification.
(2) When a trade mark is registered it shall be classified according to the version of the Nice Classification that had effect on the date of application for registration.
8 Application may relate to more than one class and shall specify the class (Form TM3A)
(1) An application may be made in more than one class of the Nice Classification.
(2) Every application shall specify—
(a)
(a) the class in the Nice Classification to which it relates; and
(b)
(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 the Nice Classification.
(3) If the application relates to more than one class in the Nice Classification 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.
(4) If the specification contained in the application lists items by reference to a class in the Nice Classification in which they do not fall, the applicant may request, by filing Form TM3A, that the application be amended to include the appropriate class for those items, and upon the payment of such class fee as may be appropriate the registrar shall amend the application accordingly.
9 Determination of classification
(1) Where an application does not satisfy the requirements of rule 8(2) or (3), the registrar shall send notice to the applicant.
(2) A notice sent under paragraph (1) shall specify a period, of not less than one month, within which the applicant must satisfy those requirements.
(3) Where the applicant fails to satisfy the requirements of rule 8(2) before the expiry of the period specified under paragraph (2), the application for registration, insofar as it relates to any goods or services which failed that requirement, shall be treated as abandoned.
(4) Where the applicant fails to satisfy the requirements of rule 8(3) before the expiry of the period specified under paragraph (2), the application for registration shall be treated as abandoned.
10 Prohibition on registration of mark consisting of arms; section 4
10. Where having regard to matters coming to the notice of the registrar it appears to the registrar that a representation of any arms or insignia as is referred to in section 4(4) appears in a mark, the registrar shall refuse to accept an application for the registration of the mark unless satisfied that the consent of the person entitled to the arms has been obtained.
11 Address for service
(1) For the purposes of any proceedings under the Act or these Rules, an address for service shall be filed by—
(a)
(a) an applicant for the registration of a trade mark;
(b)
(b) any person who opposes the registration of a trade mark in opposition proceedings;
(c)
(c) any person who applies for revocation, a declaration of invalidity or rectification under the Act;
(d)
(d) the proprietor of the registered trade mark who opposes...
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