The Trade Marks Rules 1994

Publication, observations, oppositions and registration

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

12.  An application which has been accepted for registration shall be published.

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.

Decision of registrar in opposition proceedings

14.—(1) When the registrar has made a decision on the acceptability of an application for registration following the procedure under rule 13, he shall send the applicant and the person opposing the application written notice of it, stating the reasons for his decision.

(2) For the purpose of any appeal against the registrar’s decision the date of the decision shall be the date when notice of the decision is sent under paragraph (1) above.

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

15.  The registrar shall send to the applicant a copy of any documents containing observations made under section 38(3).

Publication of registration; s. 40

16.  On the registration of the trade mark the registrar shall publish the registration, specifying the date upon which the trade mark was entered in the register.