The Trade Marks (Amendment) Rules 1998

Explanatory Note

(This note is not part of the Rules)

These Rules amend the Trade Marks Rules 1994 (S.I. 1994/2583), made under the Trade Marks Act 1994 (“the Act”), which revoked and replaced from 31st October 1994 the Trade Marks and Service Marks Rules 1986 (S.I. 1986/1319 as amended).

The Trade Marks Rules 1994 regulate practice and procedure in relation to all trade mark applications. The amendments made by these Rules modify the 1994 Rules in order to give better effect to the provisions of the 1994 Act. The changes of substance are as follows—

(a) where in an application for registration of a trade mark, a colour, a particular graphical representation or a three-dimensional mark is claimed, the applicant is required to make a statement to that effect in the application (rule 4);

(b) the provisions prescribing the procedure relating to opposition to the registration of a trade mark have been extended to clarify their operation and now expressly provide for an application for registration of a trade mark which has been opposed to be deemed to be withdrawn if the applicant fails to file a notice and counter-statement in reply to the notice of opposition within the prescribed time-limits (rule 6);

(c) rule 29 has been amended to take account of the report of the Joint Committee on Statutory Instruments on the Trade Marks Rules 1994. The Joint Committee noted that where a registration takes effect after the date of renewal calculated from the date of filing of the application for registration, the provisions of rule 29(4) permitted late renewal without requiring payment of the additional renewal fee, contrary to section 43(3) of the Act. The amendment to rule 27 is intended to permit the Registrar to comply with the provisions of section 43(2) in relation to such late renewals (rules 10 and 11).

The addresses for the filing of documents at the Patent Office are prescribed in the Patent Office (Address) Rules 1991 (S.I. 1991/675), namely—

(i) Cardiff Road, Newport, Gwent NP9 1RH; and

(ii) 25 Southampton Buildings, London WC2A 1AY.