The Trade Marks (Fees) Rules 1996

Statutory Instruments

1996 No. 1942

TRADE MARKS

The Trade Marks (Fees) Rules 1996

Made

23rd July 1996

Laid before Parliament

24th July 1996

Coming into force

2nd October 1996

The Secretary of State, in exercise of the powers conferred by sections 54 and 79 of the Trade Marks Act 1994(1) (“the Act”), of the power conferred on him by the Department of Trade and Industry (Fees) Order 1988(2), and of all other powers enabling him in that behalf, hereby makes the following Rules:—

1.  These Rules may be cited as the Trade Marks (Fees) Rules 1996 and shall come into force on 2nd October 1996.

2.  These Rules shall be construed as one with the Trade Marks Rules 1994(3) and the Trade Marks (International Registration) Order 1996(4).

3.  The fees to be paid in respect of any matters arising under the Act, the Trade Marks Rules 1994 and the Trade Marks (International Registration) Order 1996 shall be those specified in the Schedule to these Rules; and in any case where a form specified in the Schedule as the corresponding form in relation to any matter is specified in the Trade Marks Rules 1994 or the Trade Marks (International Registration) Order 1996 that form shall be accompanied by the fee specified in respect of that matter (unless the Rules or the Order otherwise provide).

4.  Where a fee has been paid in error, the registrar shall repay the same; and where a fee has been paid in excess of the amount specified hereunder, the registrar shall remit the amount paid in excess.

5.—(1) These are hereby revoked—

(a) the Trade Marks (Fees) Rules 1994(5).

(b) the Trade Marks (International Registration) (Fees) Rules 1996(6).

(2) Notwithstanding the revocation of the Trade Marks (Fees) Rules 1994, the Rules referred to below shall continue to apply in respect of any matter arising under the Trade Marks and Service Marks Rules 1986(7) (as amended) for which a fee is specified thereunder, in so far as those Rules continue to apply to any application for registration of a trade mark or service mark filed before 31st October 1994 or to any proceedings thereunder commenced before that date—

(a) the Trade Marks and Service Marks (Fees) Rules 1992(8);

(b) the Trade Marks and Service Marks (Fees) (Amendment) Rules 1993(9)

and

(c) the Trade Marks and Service Marks (Fees) (Amendment) Rules 1994(10)

Ian Taylor

Parliamentary Under Secretary of State for Science and Technology,

Department of Trade and Industry

23rd July 1996

Rule 3

SCHEDULE FEES PAYABLE

(In this Schedule, references to a rule are references to that rule in the Trade Marks Rules 1994 and references to an article are references to that article in the Trade Marks (International Registration) Order 1996.)

Corresponding form	Item	Amount £
TM3	Application for registration of a trade mark (rule 5) or a series of trade marks (rule 21)	225
	Class fee (rule 5), for each class over one	50
	Transformation application (articles 19 – 20)	100
TM3A	Application for additional classes following examination of a mark (rule 8(3)), for each additional class	50
TM5	Request to the registrar for a statement of the reasons for his decision (rule 56(2))	100
TM7	Notice of opposition to the registration of a mark (rule 13(1)), to the amendment of an application (rule 18(2)), or to the amendment of the regulations relating to a certification or collective trade mark (rule 23(4)), to the alteration of a registered trade mark (rule 25(3)), to the removal of matter from the register (rule 39(2)(a)), to the reclassification of a mark from Schedule 3 to Schedule 4 (rule 41(1))	200
	Notice of opposition on the conferring of protection to the international registration (article 10)	200
TM9	Request for extension of time (rule 62(2))	50
TM11	Renewal of registration (rule 28)	250
	Class fee for each class over one	200
	Delayed renewal of registration (rule 29(1))	50
TM12	Request for division of an application (rule 19(1))	100
TM13	Request for the restoration and renewal of a registration removed from the register for failure to renew (rule 30(1))	100
TM16	Request to enter details of an assignment (rule 35(1)(a))	50
TM17	Request to merge either applications or registrations (rule 20(1))	100
TM23	Request by the registered proprietor for the partial surrender of a registered trade mark (rule 26(1)(b))	50
TM24	Application to record or cancel a registrable transaction other than an assignment or licence (rule 35(1)(d))	50
	Application to record or cancel a notifiable transaction (article 6)	50
TM26	Request for the revocation, invalidation or rectification of a registration (rule 31(1))	200
	Request for the revocation or invalidation of a protected international trade mark (UK); rectification of the supplementary register (article 13; article 15)	200
TM28	Recordal of concurrent registration (article 21)	50
TM31C	Request for information about applications and registered trade marks (rule 42)	20
TM31M	Request for information in relation to an international trade mark (UK) (article 25)	20
TM31R	Request for certified copy of an entry on the register (rule 37), per certificate	20
TM35	Filing of regulations governing the use of a certification or collective mark (rule 22)	200
TM36	Request to amend regulations governing the use of a certification or collective mark (rule 23(1))	100
TM50	Application for the registration of a licence under registered trade mark (rule 35(1)(b))	50
	Submission fee for an application for international registration to the International Bureau by the Patent Office (article 22)	40
	Handling fee for the transmission by the Patent Office of monies payable to the International Bureau for renewal of an international registration (article 31)	20

Explanatory Note

(This note is not part of the Rules)

These Rules revoke and replace the Trade Marks (Fees) Rules 1994 (S.I.1994/2584) and the Trade Marks (International Registration) (Fees) Rules 1996 (S.I.1996/715).

They also provide for a reduction of the fees in respect of:

(a) the class fee for applications for registration which cover goods and services falling in more than one class; and

(b) applications for additional classes following examination of a mark, for each additional class.

The fees in respect of other matters have been retained.

The Rules retain the application of the Trade Marks and Service Marks (Fees) Rules 1992 (S.I. 1992/1069), the Trade Marks and Service Marks (Fees) (Amendment) Rules 1993 (S.I. 1993/3029) and the Trade Marks and Service Marks (Fees) (Amendments) Rules 1994 (S.I. 1994/2581) for matters arising under the Trade Marks and Service Marks Rules 1986 (S.I. 1986/1367) and which were filed or commenced before 31st October 1994.

(1)

1994 c. 26.

(2)

S.I. 1988/93 which was made under section 102 of the Finance (No. 2) Act 1987 (c. 51). The relevant provisions of that Order are article 5 and Part II of Schedule 1; relevant amending instrument is S.I. 1990/1473.

(3)

S.I. 1994/2583.

(4)

S.I. 1996/714.

(5)

S.I. 1994/2584.

(6)

S.I. 1996/715.

(7)

S.I. 1986/1367.

(8)

S.I. 1992/1069.

(9)

S.I. 1993/3029.

(10)

1994/2581.