The Trade Marks (Amendment) Rules 2004

Amendments to the Trade Marks Rules 2000

13.  For rules 31 to rule 33 there shall be substituted—

“Application for revocation (on the grounds of non-use); s 46(1)(a) or (b) (Forms TM8 & TM26(N)

31— (1) An application to the registrar for revocation of a trade mark under section 46, on the grounds set out in section 46(1)(a) or (b), shall be made on Form TM26(N) and be accompanied by a statement of the grounds on which the application is made.

(2) The registrar shall send a copy of Form TM26(N) and the statement of the grounds on which the application is made to the proprietor.

(3) The proprietor shall, within three months of the date on which he was sent a copy of Form TM26(N) and the statement by the registrar, file a Form TM8, which shall include a counter-statement, and be accompanied by—

(a) two copies of evidence of use of the mark; or

(b) reasons for non-use of the mark,

otherwise the registrar may treat him as not opposing the application.

(4) The evidence of use of the mark shall—

(a) cover the period of non-use alleged by the applicant on Form TM26(N), or

(b) where the proprietor intends to rely on section 46(3), show that use of the mark commenced or resumed after the end of that period but before the application for revocation was made.

(5) The reasons for non-use of the mark shall cover the period of non-use alleged by the applicant on Form TM26(N).

(6) The registrar shall send a copy of Form TM8 and any evidence of use, or reasons for non-use, filed by the proprietor to the applicant and the date upon which this is sent shall, for the purposes of rule 31A, be the “initiation date”.

Application for revocation (on the grounds of non-use): evidence rounds (Form TM54)

31A— (1) The applicant may, within three months of the initiation date, file any evidence he may consider necessary to adduce in support of the grounds on which the application was made.

(2) Where the applicant files no evidence under paragraph (1), the registrar shall notify the proprietor that no evidence was filed.

(3) The proprietor may, within the relevant period, file such evidence as he may consider necessary to adduce in support of his case.

(4) The relevant period—

(a) where the applicant files evidence under paragraph (1), is the period beginning on the date on which a copy of the evidence is filed and ending three months after that date; or

(b) where the applicant does not file evidence under paragraph (1), is the period beginning on the date on which the registrar sent the proprietor a notification under paragraph (2) that no evidence was filed and ending three months after that date.

(5) Where the proprietor files evidence under paragraph (3), the applicant may, within three months of such evidence being filed, file any evidence in reply; such evidence shall be confined to matters strictly in reply to the proprietor’s evidence.

(6) The registrar may, at any time if she thinks fit, give leave to either party to file evidence upon such terms as she thinks fit.

(7) Under this rule, evidence shall only be considered filed when—

(a) it has been received by the registrar accompanied by Form TM54; and

(b) it has been sent to all other parties to the revocation proceedings.

(8) Where the periods for filing evidence under paragraphs (1) and (3) and, if relevant, paragraph (5) have expired, the registrar shall request that the parties give written notice of whether they wish to be heard.

(9) Where any party requests to be heard, the registrar shall send to the parties notice of a date for the hearing.

Decision of registrar in revocation (on the grounds of non-use) proceedings

31B— (1) When the registrar has made a decision on the application she shall send the parties to the proceedings written notice of it, stating the reasons for her decision.

(2) For the purposes of any appeal against the registrar’s decision the date when the notice of the decision is sent shall be taken to be the date of the decision.

Application for revocation (on grounds other than non-use); s 46(1)(c) or (d) (Forms TM8 & TM26(O)

32— (1) An application to the registrar for revocation of a trade mark under section 46, on the grounds set out in section 46(1)(c) or (d), shall be made on Form TM26(O) and be accompanied by a statement of the grounds on which the application is made.

(2) The registrar shall send a copy of Form TM26(O) and the statement of the grounds on which the application is made to the proprietor.

(3) The proprietor shall, within six weeks of the date on which he was sent a copy of Form TM26(O) and the statement by the registrar, file a Form TM8 which shall include a counter-statement, otherwise the registrar may treat him as not opposing the application.

(4) The registrar shall send a copy of Form TM8 to the applicant and the date upon which this is sent shall, for the purposes of rule 32A, be the “initiation date”.

Application for revocation (on grounds other than non-use): evidence rounds (Form TM54)

32A— (1) The applicant shall, within six weeks of the initiation date, file any evidence he may consider necessary to adduce in support of the grounds on which the application was made.

(2) Where the applicant files no evidence under paragraph (1), he shall, unless the registrar otherwise directs, be deemed to have withdrawn his application.

(3) The registrar shall notify the proprietor of any direction given under paragraph (2).

(4) The proprietor may file any evidence he may consider necessary to adduce in support of his case—

(a) within six weeks of the evidence being filed under paragraph (1); or

(b) within six weeks of the registrar sending him a notification that a direction has been given under paragraph (2).

(5) Where the proprietor files evidence under paragraph (4), the applicant may, within six weeks of such evidence being filed, file any evidence in reply; such evidence shall be confined to matters strictly in reply to the proprietor’s evidence.

(6) The registrar may, at any time if she thinks fit, give leave to either party to file evidence upon such terms as she thinks fit.

(7) Under this rule, evidence shall only be considered filed when—

(a) it has been received by the registrar accompanied by Form TM54; and

(b) it has been sent to all other parties to the revocation proceedings.

(8) Where the periods for filing evidence under paragraphs (1) and (4) and, if relevant, paragraph (5) have expired, the registrar shall request that the parties give written notice of whether they wish to be heard.

(9) Where any party requests to be heard, the registrar shall send to the parties notice of a date for the hearing.

Decision of registrar in revocation (on grounds other than non-use) proceedings

32B— (1) When the registrar has made a decision on the application she shall send the parties to the proceedings written notice of it, stating the reasons for her decision.

(2) For the purposes of any appeal against the registrar’s decision the date when the notice of the decision is sent shall be taken to be the date of the decision.

Application for invalidation: filing of application and counter-statement; s 47 (Forms TM8 & TM26(I))

33— (1) An application to the registrar for a declaration of invalidity under section 47 shall be made on Form TM26(I) and be accompanied by a statement of the grounds on which the application is made.

(2) Where the application is based on a trade mark which has been registered, there shall be included in the statement of the grounds on which the application is made a representation of that mark and—

(a) the details of the authority with which the mark is registered;

(b) the registration number of that mark;

(c) the classes in respect of which that mark is registered;

(d) the goods and services in respect of which—

(i) that mark is registered; and

(ii) the application is based; and

(e) where neither section 47(2A)(a) nor (b)(1) applies to the mark, a statement detailing whether during the period referred to in section 47(2B)(a) it has been put to genuine use in relation to each of the goods and services in respect of which the application is based or whether there are proper reasons for non-use (for the purposes of rule 33A this is the “statement of use”).

(3) Where the application is based on a trade mark in respect of which an application for registration has been made, there shall be included in the statement of the grounds on which the application is made a representation of that mark and those matters set out in paragraph (2)(a) to (d), with references to registration being construed as references to the application for registration.

(4) Where the application is based on an unregistered trade mark or other sign which the applicant claims to be protected by virtue of any rule of law (in particular, the law of passing off), there shall be included in the statement of the grounds on which the application is made a representation of that mark or sign and the goods and services in respect of which such protection is claimed.

(5) The registrar shall send a copy of Form TM26(I) and the statement of the grounds on which the application is made to the proprietor.

(6) The proprietor shall, within six weeks of the date on which he was sent a copy of Form TM26(I) and the statement by the registrar, file a Form TM8, which shall include a counter-statement, otherwise the registrar may treat him as not opposing the application.

(7) The registrar shall send a copy of Form TM8 to the applicant and the date upon which this is sent shall, for the purposes of rule 33A, be the “initiation date”.

Application for invalidation: evidence rounds (Form TM54)

33A— (1) The applicant, within six weeks of the initiation date—

(a) shall file any evidence he may consider necessary to adduce in support of the grounds on which the application was made; and

(b) where—

(i) the application is based on an earlier trade mark;

(ii) neither section 47(2A)(a) nor (b) applies to the mark; and

(iii) the truth of a matter set out in the statement of use is either denied or not admitted by the proprietor,

shall file evidence supporting the statement of use.

(2) Where the applicant files no evidence under paragraph (1), he shall, unless the registrar otherwise directs, be deemed to have withdrawn his application.

(3) The registrar shall notify the proprietor of any direction given under paragraph (2).

(4) The proprietor may file any evidence he may consider necessary to adduce in support of his case—

(a) within six weeks of the evidence being filed under paragraph (1); or

(b) within six weeks of the registrar sending him a notification that a direction has been given under paragraph (2).

(5) Where the proprietor files evidence under paragraph (4), the applicant may, within six weeks of such evidence being filed, file any evidence in reply; such evidence shall be confined to matters strictly in reply to the proprietor’s evidence.

(6) The registrar may, at any time if she thinks fit, give leave to either party to file evidence upon such terms as she thinks fit.

(7) Under this rule, evidence shall only be considered filed when—

(a) it has been received by the registrar accompanied by Form TM54; and

(b) it has been sent to all other parties to the invalidation proceedings.

(8) Where the periods for filing evidence under paragraphs (1) and (4) and, if relevant, paragraph (5) have expired, the registrar shall request that the parties give written notice of whether they wish to be heard.

(9) Where any party requests to be heard the registrar shall send to the parties notice of a date for the hearing.

Decision of registrar in invalidation proceedings

33B— (1) When the registrar has made a decision on the application she shall send the parties to the proceedings written notice of it, stating the reasons for her decision.

(2) For the purposes of any appeal against the registrar’s decision the date when the notice of the decision is sent shall be taken to be the date of the decision.”.

(1)

Subsections (2A) to (2E) of section 47 were inserted into the Trade Marks Act 1994 by regulation 6 of the Trade Marks (Proof of Use, etc.) Regulations 2004.