Trade Marks Rules 1994

JurisdictionUK Non-devolved
CitationSI 1994/2583

1994No. 2583

TRADE MARKS

The Trade Marks Rules 1994

5thOctober1994

7thOctober1994

31stOctober1994

ARRANGEMENT OF RULES

Preliminary

1 Citation and commencement

2 Interpretation

3 Forms and directions of the registrar under s. 66

4 Requirement as to fees

Application for registration

5 Application for registration; s. 32

6 Claim to priority; ss. 35 & 36

7 Classification of goods and services; s. 34

8 Application may relate to more than one class and shall specify the class

9 Prohibition on registration of mark consisting of arms; s. 4

10 Address for service

11 Deficiencies in application: s. 32

Publication, observations, opposition and registration

12 Publication of application for registration; s. 38(1)

13 Opposition proceedings; s. 38(2)

14 Decision of registrar in opposition proceedings

15 Observations on application to be sent to applicant; s. 38(3)

16 Publication of registration; s. 40

Amendment of application

17 Amendment of application; s. 39

18 Amendment of application after publication; s. 39

Division, merger and series of marks

19 Division of application; s. 41

20 Merger of separate applications or registrations; s. 41

21 Registration of a series of trade marks; s. 41

Collective and certification marks

22 Filing of regulations for collective and certification marks; Schs. 1 & 2

23 Amendment of regulations of collective and certification marks; Sch. 1 para. 10 & Sch. 2 para. 11

Disclaimers, limitations and alteration or surrender of registered trade mark

24 Registration subject to disclaimer or limitation; s. 13

25 Alteration of registered trade mark; s. 44

26 Surrender of registered trade mark; s. 45

Renewal and restoration

27 Reminder of renewal of registration; s. 43

28 Renewal of registration; s. 43

29 Delayed renewal and removal of registration; s. 43

30 Restoration of registration; s. 43

Revocation, invalidation and rectification

31 Procedure on application for revocation, declaration of invalidity and rectification of the register; ss. 46, 47 & 64

The register

32 Form of register; s. 63(3)

33 Entry in register of particulars of registered trade marks; s. 63

34 Entry in register of particulars of registrable transactions; s. 25

35 Application to register or give notice of transaction; ss. 25 & 27(3)

36 Public inspection of register; s. 63(3)

37 Supply of certified copies, etc; s. 63(3)

38 Request for change of name or address in register; s. 64(4)

39 Removal of matter from register; s. 64(5)

Change of classification

40 Change of classification; ss. 65(2) & 76(1)

41 Opposition to proposals; ss. 65(3) & 76(1)

Request for information, inspection of documents and confidentiality

42 Request for information; s. 67(1)

43 Information available before publication; s. 67(2)

44 Inspection of documents; ss. 67 & 76(1)

45 Confidential documents

Agents

46 Proof of authorisation of agent may be required; s. 82

47 Registrar may refuse to deal with certain agents; s. 88

Decision of registrar, evidence and costs

48 Decisions of registrar to be taken after hearing

49 Evidence in proceedings before registrar; s. 69

50 Making and subscription of statutory declaration or affidavit

51 Registrar's power to require documents, information or evidence

52 Registrar to have power of an official referee; s. 69

53 Hearings before registrar to be in public

54 Costs of proceedings; s. 68

55 Security for costs; s. 68

56 Decision of registrar

Appeals

57 Appeal to person appointed; s.76

58 Determination whether appeal be referred to Court; s. 76(3)

59 Hearing of appeal; s. 76(4)

Correction of irregularities, calculation and extension of time

60 Correction of irregularities of procedure

61 Calculation of times and periods

62 Alteration of time limits

Filing of documents, hours of business, Trade Marks Journal and translations

63 Filing of documents by electronic means

64 Directions on hours of business; s. 80

65 Trade Marks Journal; s. 81

66 Translations

Transitional provisions and revocations

67 Pending applications for registration; Sch. 3, para. 10(2)

68 Form for conversion of pending application; Sch. 3, para. 11(2)

69 Revocation of previous Rules

Schedules

Schedule 1 - Revocations

Schedule 2 - Form of Notice under Sch.3, para. 11

Schedule 3 - Classification of goods (pre-1938)

Schedule 4 - Classification of goods and services

The Secretary of State, in exercise of the powers conferred upon him 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, 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, paragraph 7(2) of Schedule 2 to, and paragraphs 10(2), 11(2), 12 and 14(5) of Schedule 3 to, the Trade Marks Act 1994 ( a), after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 1992 ( b), hereby makes the following Rules:-

Preliminary

Citation and commencement

1. These Rules may be cited as the Trade Marks Rules 1994 and shall come into force on 31st October 1994.

Interpretation

2.-(1) In these Rules, unless the context otherwise requires-

"the Act" means the Trade Marks Act 1994;

"the Journal" means the Trade Marks Journal published in accordance with rule 65 below;

"the Office" means the Patent Office;

"old law" means the Trade Marks Act 1938 ( c) (as amended) and any rules made thereunder existing immediately before the commencement of the Act;

"proprietor" means the person registered as the proprietor of the trade mark;

"publish" means publish in the Journal;

"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;

"United Kingdom" includes the Isle of Man.

(2) In these Rules, except where otherwise indicated, a reference to a section is a reference to that section in the Act, a reference to a rule is a reference to that rule in these Rules, a reference to a Schedule is a reference to that Schedule to these Rules and a reference to a form is a reference to that form as published by the registrar under rule 3 below.

(3) In these Rules references to the filing of any application, notice or other document are to be construed as references to its being sent or delivered to the registrar at the Office.

(a) 1994 c.26.

(b) 1992 c.53.

(c) 1938 c.22.

Forms and directions of the registrar under s. 66

3.-(1) Any forms required by the registrar to be used for the purpose of registration of a trade mark or any other proceedings before him under the Act pursuant to section 66 and any directions with respect to their use shall be published and any amendment or modification of a form or of the directions with respect to its use shall be published ( a).

(2) 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.

Requirement as to fees

4.-(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) ( b).

(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

Applications for registration; s. 32 (Form TM3)

5. An application for the registration of a trade mark shall be filed on Form TM3 and shall be subject to the payment of the application fee and such class fees as may be appropriate.

Claim to priority; ss. 35 & 36

6.-(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, particulars of that claim shall be included in the application for registration under rule 5 above and, where no certificate as is referred to in paragraph (2) below is filed with the application, such particulars shall include the country or countries and the date or dates of filing.

(2) Unless it has been filed at the time of the filing of the application for registration, there shall be filed, within three months of the filing of the application under rule 5, a certificate by the registering or other competent authority of that country certifying, or verifying to the satisfaction of the registrar, the date of the filing of the application, the country or registering or competent authority, the representation of the mark, and the goods or services covered by the application.

Classification of goods and services; s. 34

7.-(1) For the purposes of trade mark registrations in respect of goods dated before 27th July 1938, goods are classified in accordance with Schedule 3 to these Rules, except where a specification has been converted, whether under the old law or under rule 40 below, to Schedule 4.

(2) For the purposes of trade mark registrations in respect of goods dated on or after 27th July 1938 and for the purposes of any registrations dated before that date in respect of which the specifications were converted under the old law, and for the purposes of trade mark registrations in respect of services, goods and services are classified in accordance with Schedule 4, which sets out the current version of the classes of the International Classification of Goods and Services ( c).

Application may relate to more than one class and shall specify the class (Form TM3A)

8.-(1) An application may be made for registration in more than one class of Schedule 4.

(2) Every application shall specify the class in Schedule 4 to which it relates; and if the application...

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