Trade Marks and Service Marks Rules 1986

JurisdictionUK Non-devolved
CitationSI 1986/1319

1986 No. 1319


The Trade Marks and Service Marks Rules 1986

28thJuly 1986

30thJuly 1986

1stOctober 1986



1. Citation and commencement.

2. Revocation.

3. Interpretation.

4. Forms.


5. Classification of goods and services.

6. Application for conversion.

7. Proposal for amendment.

8. Registration of conversions.

General points of procedure

9. Size, etc, of documents.

10. Signature of documents.

11. Service of documents.

12. Furnishing of address.

13. Address for service.

14. Agents.


15. Marks subject to statutory restriction.

16. Marks requiring particular consideration.

17. Arms of city, etc.

18. Persons living or recently dead.

19. Goods or services described on a mark.

20. Preliminary advice.

Application for registration

21. Application for registration and request for amendment.

22. Address for applications.

23. Separate applications.

24. Representation of mark.

25. Additional forms and representations.

26. Physical requirements.

27. Cases of difficulty.

28. Retention of specimen or copy.

29. Series of marks.

30. Transliteration and translation.

31. Search.

32. Acceptance and objection.

33. Response to objections.

34. Conditions, etc.

35. Decision of Registrar.

36. Disclaimer.

37. Application for defensive trade mark.

Certification trade marks

38. Application for certification trade mark.

39. Address of applicant.

40. Case and draft regulations.

41. Directions by Secretary of State.

Advertisement and opposition

42. Advertisement of application.

43. Representation for advertisement.

44. Advertisement of series.

45. Advertisement under section 18 or 35.

46. Notice of opposition.

47. Contents of notice.

48. Counter-statement.

49. Evidence in support of opposition.

50. Evidence in support of application.

51. Evidence in reply.

52. Further evidence.

53. Exhibits.

54. Hearing.

55. Subsequent extension of time.

56. Security for costs.

57. Costs in uncontested cases.

58. Opposition to certification trade marks.

Registration and renewal

59. Non-completion.

60. Entry in register.

61. Associated marks.

62. Death of applicant; assignment after application.

63. Certificate of registration.

64. Reminder of renewal.

65. Renewal.

66. Authority for renewal.

67. Late renewal.

68. Removal and restoration.

69. Record of removal.

70. Notice and advertisement of renewal or restoration.

Assignments and transmissions

71. Application for entry of assignment or transmission.

72. Joint applications.

73. Particulars to be stated and copies of documents.

74. Case accompanying application.

75. Proof of title.

76. Assignment without goodwill.

77. Entry of assignment or transmission in register.

78. Separate registrations.

79. Registrar's certificate or approval.

80. Advertisement of assignment without goodwill.

Alteration and rectification of the register

81. Alteration of address.

82. Application for rectification or removal.

83. Further procedure.

84. Intervention by third parties.

85. Request for alteration of the register.

86. Evidence for alteration.

87. Advertisement of request to enter disclaimer or memorandum.

88. Certificates of validity.

89. Application for alteration of registered mark.

90. Advertisement before decision.

91. Alteration of mark.

92. Advertisement of altered mark.

93. Rectification in respect of certification trade marks.

94. Variation of regulations.

Sheffield marks

95. Metal goods.

96. Notice from Cutlers' Company.

97. Objection by Registrar.

98. Advertisement by Registrar.

99. Notice to Cutlers' Company.

100. Application of Rules.

Textile marks

101. Textile goods.

102. Collection of refused cotton marks.

103. Discontinuance of refused cotton mark.

104. Notice of discontinuance.

105. Certificate by the Keeper.

106. Copy of mark in certificate.

Registered users

107. Application for entry of registered user.

108. Entry of registered user.

109. Application to vary entry.

110. Application by proprietor or user to cancel entry.

111. Application by any person to cancel entry.

112. Notification and hearing.

113. Cancellation and striking out.


114. Extension of time.

115. Calculation of times or periods.

116. Adverse exercise of discretion.

117. Request for hearing.

118. Notice of hearing.

119. Hearing and decision.

120. Dispensing with evidence.

121. Amendments and irregularities.

122. Certificates by Registrar.

123. Marks registered without limitation of colour.

124. Certificates for registration abroad.

125. Statutory declarations.

126. Inspection of documents.

127. Confidentiality.

128. Excluded days and hours of business.


129. Appeal to Secretary of State.

130. Notice of appeal.

131. Grounds for appeal.

132. Directions by Secretary of State.

133. Hearing of appeal.

134. Time limit for appeal.

135. Withdrawal of appeal.

136. Application to Court.

137. Order of Court.

138. Publication of order.


Schedule 1—Revocations.

Schedule 2—Certificate of registration.

Schedule 3—Classification of goods (pre-1938).

Schedule 4—Classification of goods and services.

Whereas in pursuance of the requirements of section 40(3) of the Trade Marks Act 1938(a) the Secretary of State has, before making the following Rules under that Act, published notice of his intention to make such Rules and of the place where copies of the draft Rules might be obtained by advertising such notice in the Trade Marks Journal on 21st May 1986 and 28th May 1986 and the Official Journal (Patents) on 21st May 1986 and 28th May 1986, being the manner which he considered most expedient so as to enable persons affected to make representations to him before the Rules were finally settled:

Now, therefore, the Secretary of State, in exercise of the powers conferred by sections 36, 40 and 40A of the Trade Marks Act 1938(b) and now vested in him(c) and after consultation with the Council on Tribunals pursuant to section 10(1) of the Tribunals and Inquiries Act 1971(d) hereby makes the following Rules:—


Citation and commencement

1. These Rules may be cited as the Trade Marks and Service Marks Rules 1986 and shall come into operation on 1st October 1986.


2. The Rules specified in Schedule 1 to these Rules are hereby revoked.


3.— (1) In these Rules, unless the context otherwise requires—

"the 1938 Act" means the Trade Marks Act 1938(e) as it has effect with respect to trade marks;

"the modified 1938 Act" means the Trade Marks Act 1938(f) as it has effect with respect to service marks;

"assignment" includes assignation;

"the Journal" means the Trade Marks Journal;

"the Office" means the Trade Marks Registry of the Patent Office;

"the Manchester Branch" means the Manchester Branch of the Office;

"the Keeper" means the Keeper of the Manchester Branch;

(a) 1938 c.22; the Act was applied, with modifications, to service marks by the Trade Marks (Amendment) Act 1984 (c.19), section 1, as amended by the Patents, Designs and Marks Act 1986 (c.39), section 2(1) and Schedule 3.

(b) Section 40A was added by the Statute Law (Repeals) Act 1986 (c.12), Schedule 2, paragraph 2.

(c) S.I. 1970/1537.

(d) 1971 c.62.

(e) 1938 c.22, as amended by the Trade Marks (Amendment) Act 1984 (c.19), section 1(5) and Schedule 2, and the Patents, Designs and Marks Act 1986 (c.39), Schedule 1, paragraphs 1 and 2, Schedule 2, paragraphs 3, 4, 5 and 6 and Schedule 3.

(f) 1938 c.22, as amended, applied and modified by the Trade Marks (Amendment) Act 1984 (c.19), section 1 and Schedule 1, amended by the Patents, Designs and Marks Act 1986 (c.39), section 2(1), Schedule 2, paragraphs 9, 10, 11 and 12 and Schedule 3.

"send" includes give;

"specification" means the designation of goods or (as the case may be) services in respect of which a trade mark or service mark, or a registered user of a trade mark or service mark, is registered or proposed to be registered.

(2) In these Rules, references to something being filed at a place or with a person are to be construed as references to its being sent to that place or person or made or left at that place or given or made to or left with that person, or to that person being furnished with it; and, subject to Rule 22(4) below, references to the filing of any thing without an indication of the place at which or person with whom it is to be filed are to be construed as references to its being filed with the Registrar at the Office.


4.— (1) The forms mentioned in these Rules are forms prescribed by rules.

(2) The prescribed form of certificate of registration required by section 19(2) of the 1938 Act and of the modified 1938 Act shall be as set out in Schedule 2 to these Rules.


Classification of goods and services

5.— (1) For the purposes of trade mark registrations dated before 27th July 1938 and of registrations of registered users thereunder, goods are classified in accordance with Schedule 3 to these Rules except in the case of a specification converted to Schedule 4 in accordance with Rule 6 below.

(2) For the purpose of trade mark registrations dated on or after 27th July 1938 and of registrations of registered users thereunder, and for the purposes of any registrations dated before that day in respect of which the specifications have been converted in accordance with Rule 6 below, goods are classified in accordance with Part I of Schedule 4 to these Rules.

(3) For the purpose of service mark registrations, services are classified in accordance with Part II of Schedule 4 to these Rules.

Application for conversion

6.— (1) Where the specification of a registered trade mark is founded on Schedule 3 to these Rules, the registered proprietor may, by filing form TM 45, apply for the conversion of that specification so that it may be founded on Schedule 4 to these Rules, with or without the striking-out of goods therefrom, but so that the registration shall retain its original date.

(2) The registered proprietor shall include in the application a request for the like conversion of the...

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