The Trade Marks Rules 1994

Opposition proceedings; s. 38(2) (Forms TM7 & TM8)

13.—(1) Notice of opposition to the registration of a trade mark shall be sent to the registrar on Form TM7 within three months of the date on which the application was published under rule 12, and shall include a statement of the grounds of opposition; the registrar shall send a copy of the notice and the statement to the applicant.

(2) Within three months of the date on which a copy of the statement is sent by the registrar to the applicant the applicant may file, in conjunction with notice of the same on Form TM8, a counter-statement; the registrar shall send a copy of the Form TM8 and the counter-statement to the person opposing the application.

(3) Within three months of the date on which a copy of the counter-statement is sent by the registrar to the person opposing the registration, that person shall file such evidence by way of statutory declaration or affidavit as he may consider necessary to adduce in support of his opposition and shall send a copy thereof to the applicant.

(4) If the person opposing the registration files no evidence under paragraph (3) above, he shall, unless the registrar otherwise directs, be deemed to have abandoned his opposition.

(5) If the person opposing the registration files evidence under paragraph (3) above or the registrar otherwise directs under paragraph (4) above, the applicant shall, within three months of the date on which either a copy of the evidence or a copy of the direction is sent to the applicant, file such evidence by way of statutory declaration or affidavit as he may consider necessary to adduce in support of his application, and shall send a copy thereof to the person opposing the application.

(6) Within three months of the date on which a copy of the applicant’s evidence is sent to him, the person opposing the application may file evidence in reply by statutory declaration or affidavit which shall be confined to matters strictly in reply to the applicant’s evidence, and shall send a copy thereof to the applicant.

(7) No further evidence may be filed, except that, in relation to any proceedings before him, the registrar may at any time if he thinks fit give leave to either party to file evidence upon such terms as he may think fit.

(8) Upon completion of the evidence the registrar shall, if a hearing is requested by any party to the proceedings, send to the parties notice of a date for the hearing.