The Trade Marks Rules 2008

Application for registration U.K.

Application for registration; section 32 (Form TM3) U.K.

5.— [F1 (1) An application for the registration of a trade mark (other than a transformation application, which shall be filed on Form TM4) shall be filed on Form TM3 or, where the application is filed in electronic form using the filing system provided on the Office website, on Form e-TM3.

(1A) Where an application is filed on Form TM3 (a “standard application”) the application shall be subject to the payment of the standard application fee and such class and series fees as may be appropriate.

(1B) Where an application is filed on Form e-TM3 (an “electronic application”) the application shall be subject to the payment of the e-filed application fee and such class and series fees as may be appropriate, which shall be payable at the time the electronic application is made and if they are not so paid the application shall be subject to the payment of the standard application fee referred to in paragraph (1A) and such class and series fees as may be appropriate.]

(2) [F2 Subject to paragraph (6)] where an application is for the registration of a single trade mark, an applicant may request the registrar to undertake an expedited examination of the application.

(3) A request for expedited examination shall be made on [F3 Form e-TM3] and shall be subject to payment of the prescribed fee.

(4) Where an applicant makes a request for expedited examination, the application fee and any class fees payable in respect of the application shall be payable at the time the application is made and accordingly rule 13 shall not apply insofar as it relates to the failure of an application to satisfy the requirements of section 32(4).

(5) In this rule and rule 15 a “request for expedited examination” means a request that, following an examination under section 37, the registrar notify the applicant within a period of ten business days (as specified in a direction given by the registrar under section 80) beginning on the business day after the date of filing of the application for registration whether or not it appears to the registrar that the requirements for registration are met.

[F4 (6) The Registrar may at any time—

(a) suspend the right of applicants to file a request for expedited examination under paragraph (2) (“the expedited examination service”) for such period as the registrar deems fit; and

(b) resume the expedited examination service.

(7) Where the registrar suspends or resumes the expedited examination service pursuant to paragraph (6), the registrar must publish a notice on the Office website—

(a) of the date from which the expedited examination service is suspended;

(b) of the date upon which the expedited examination service will resume.]

Textual Amendments

F1 Rule 5(1)-(1B) substituted for rule 5(1) (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 5

F2 Words in rule 5(2) inserted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 6

F3 Words in rule 5(3) substituted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 7

F4 Rule 5(6)(7) substituted for rule 5(6) (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 35 (with Pt. 5)

Commencement Information

I1 Rule 5 in force at 1.10.2008, see rule 1

[F5 Application for registration based upon an existing EUTM application; Schedule 2A paragraph 25 U.K.

5A— (1) Where an application for registration is made in accordance with paragraph 25 of Schedule 2A, the application for registration under rule 5 must specify—

(a) the number accorded to the existing EUTM application;

(b) the filing date accorded to the existing EUTM application; and

(c) the date of priority (if any) accorded pursuant to a right of priority claimed in respect of the existing EUTM application.

(2) Where—

(a) a right of priority has been claimed (“a priority claim”) in respect of the existing EUTM application; or

(b) the seniority of a registered trade mark or a protected international trade mark (UK) has been claimed (“a seniority claim”) under paragraph 26 of Schedule 2A,

the application for registration under rule 5 must, in addition, specify the information provided in paragraph (3).

(3) The information is—

(a) in relation to a priority claim, the information specified in rule 6(1)(a) to (c); and

(b) in relation to a seniority claim, the number of the registered trade mark or protected international trade mark (UK) from which the trade mark the subject of the application claims seniority and the seniority date.

(4) The registrar may, in any particular case, by notice require the applicant to file, within such period of not less than one month as the notice may specify, such documentary evidence as the registrar may require certifying, or verifying to the satisfaction of the registrar—

(a) the filing date accorded to the existing EUTM application, the representation of the mark and the goods or services covered by the existing EUTM application; and

(b) in relation to a priority claim, the date of filing of the overseas application, the country or registering or competent authority, the representation of the mark and the goods or services covered by the overseas application.]

Textual Amendments

F5 Rule 5A inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 5; 2020 c. 1, Sch. 5 para. 1(1)

[F6 Application for registration based upon an existing ITM application, existing request for EU extension or transformation application; Schedule 2B paragraph 28, 29 or 33 U.K.

5B— (1) Where an application for registration is made in accordance with paragraph 28, 29 or 33 of Schedule 2B, the application for registration under rule 5 must specify—

(a) the number of the international registration to which the application relates;

(b) the date referred to in paragraph 28(2)(a), 29(2)(a) or 33(2)(a) or (3)(a) of Schedule 2B (as the case may be) in respect of that application; and

(c) the date of priority (if any) accorded pursuant to a right of priority claimed in respect of the existing ITM application the existing request for EU extension or the cancelled international registration the subject of a transformation application.

(2) Where—

(a) a right of priority has been claimed (“a priority claim”) in respect of the existing ITM application, an existing request for EU extension or the cancelled international registration the subject of a transformation application; or

(b) the seniority of a registered trade mark or a protected international trade mark (UK) has been claimed (“a seniority claim”) pursuant to paragraph 30 or 33 of Schedule 2B,

the application for registration under rule 5 must, in addition, specify the information provided in paragraph (3).

(3) The information is—

(a) in relation to a priority claim, the information specified in rule 6(1)(a) to (c); and

(b) in relation to a seniority claim, the number of the registered trade mark or protected international trade mark (UK) from which the trade mark the subject of the application claims seniority and the seniority date.

(4) The registrar may, in any particular case, by notice require the applicant to file, within such period of not less than one month as the notice may specify, such documentary evidence as the registrar may require certifying, or verifying to the satisfaction of the registrar—

(a) the date referred to in paragraph (1)(b) in respect of the existing ITM application, existing request for EU extension or transformation application, the representation of the mark and the goods or services covered by that application; and

(b) in relation to a priority claim, the date of filing of the overseas application, the country or registering or competent authority, the representation of the mark and the goods or services covered by the overseas application.]

Textual Amendments

F6 Rule 5B inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 7 para. 5; 2020 c. 1, Sch. 5 para. 1(1)

Claim to priority; sections 35 & 36 U.K.

6.—(1) Where a right to priority is claimed by reason of an application for protection of a trade mark duly filed in a Convention country under section 35 or in another country or territory in respect of which provision corresponding to that made by section 35 is made under section 36 (an “overseas application”), the application for registration under rule 5 shall specify—

(a) the number accorded to the overseas application by the registering or other competent authority of the relevant country;

(b) the country in which the overseas application was filed; and

(c) the date of filing.

(2) The registrar may, in any particular case, by notice require the applicant to file, within such period of not less than one month as the notice may specify, such documentary evidence as the registrar may require certifying, or verifying to the satisfaction of the registrar, the date of the filing of the overseas application, the country or registering or competent authority, the representation of the mark and the goods or services covered by the overseas application.

Commencement Information

I2 Rule 6 in force at 1.10.2008, see rule 1

Classification of goods and services; section 34 U.K.

7.—(1) The prescribed system of classification for the purposes of the registration of trade marks is the Nice Classification.

(2) When a trade mark is registered it shall be classified according to the version of the Nice Classification that had effect on the date of application for registration.

Commencement Information

I3 Rule 7 in force at 1.10.2008, see rule 1

Application may relate to more than one class and shall specify the class (Form TM3A) U.K.

8.—(1) An application may be made in more than one class of the Nice Classification.

(2) Every application shall specify—

(a) the class in the Nice Classification to which it relates; and

(b) the goods or services which are appropriate to the class and they shall be described [F7 with sufficient clarity and precision to enable the registrar and other competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought] and to allow them to be classified in the classes in the Nice Classification.

[F8 (2A) For the purposes of paragraph (2)(b) an application may specify the general indications included in the class headings of the Nice Classification or other general terms provided that they satisfy the requirement that the goods or services be described with sufficient clarity and precision referred to in paragraph (2)(b).

(2B) Where the specification contained in the application describes the goods or services using general terms, including the general indications included in the class headings of the Nice Classification, the application shall be treated as including only the goods or services clearly covered by the literal meaning of the term or indication.]

(3) If the application relates to more than one class in the Nice Classification the specification contained in it shall set out the classes in consecutive numerical order and the specification of the goods or services shall be grouped accordingly.

(4) If the specification contained in the application lists items by reference to a class in the Nice Classification in which they do not fall, the applicant may request, by filing Form TM3A, that the application be amended to include the appropriate class for those items, and upon the payment of such class fee as may be appropriate the registrar shall amend the application accordingly.

[F9 (5) In this rule “economic operators” means any person or group of persons which, in the course of trade, manufactures, supplies, imports, exports or otherwise deals in goods or services.]

Textual Amendments

F7 Words in rule 8(2)(b) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 36(2) (with Pt. 5)

F8 Rule 8(2A)(2B) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 36(3) (with Pt. 5)

F9 Rule 8(5) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 36(4) (with Pt. 5)

Commencement Information

I4 Rule 8 in force at 1.10.2008, see rule 1

Determination of classification U.K.

9.—(1) Where an application does not satisfy the requirements of rule 8(2) or (3), the registrar shall send notice to the applicant.

(2) A notice sent under paragraph (1) shall specify a period, of not less than one month, within which the applicant must satisfy those requirements.

(3) Where the applicant fails to satisfy the requirements of rule 8(2) before the expiry of the period specified under paragraph (2), [F10 the registrar must reject] the application for registration, insofar as it relates to any goods or services which failed that requirement F11 ....

(4) Where the applicant fails to satisfy the requirements of rule 8(3) before the expiry of the period specified under paragraph (2), the application for registration shall be treated as abandoned.

Textual Amendments

F10 Words in rule 9(3) inserted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 37(a) (with Pt. 5)

F11 Words in rule 9(3) omitted (14.1.2019) by virtue of The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 37(b) (with Pt. 5)

Commencement Information

I5 Rule 9 in force at 1.10.2008, see rule 1

Prohibition on registration of mark consisting of arms; section 4 U.K.

10.  Where having regard to matters coming to the notice of the registrar it appears to the registrar that a representation of any arms or insignia as is referred to in section 4(4) appears in a mark, the registrar shall refuse to accept an application for the registration of the mark unless satisfied that the consent of the person entitled to the arms has been obtained.

Commencement Information

I6 Rule 10 in force at 1.10.2008, see rule 1

Address for service U.K.

11.—(1) For the purposes of any proceedings under the Act or these Rules, an address for service shall be filed by—

(a) an applicant for the registration of a trade mark;

(b) any person who opposes the registration of a trade mark in opposition proceedings;

(c) any person who applies for revocation, a declaration of invalidity or rectification under the Act;

(d) the proprietor of the registered trade mark who opposes such an application [F12 ;]

[F13 (e) a proprietor of a comparable trade mark (EU) who sends a derogation notice to the registrar under rule 43A.]

(2) The proprietor of a registered trade mark, or any person who has registered an interest in a registered trade mark, may file an address for service on Form TM33 or, in the case of an assignment of a registered trade mark, on Form TM16.

(3) Where a person has provided an address for service under paragraph (1) or (2), that person may substitute a new address for service by notifying the registrar on Form TM33.

[F14 (4) An address for service filed under this Rule shall be an address in the United Kingdom, [F15 Gibraltar] or the Channel Islands.]

Textual Amendments

F12 Rule 11(1)(d) semicolon substituted for full stop by S.I. 2019/269, Sch. 4 para. 6(2) (as substituted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(a))

F13 Rule 11(1)(e) inserted by S.I. 2019/269, Sch. 4 para. 6(3) (as substituted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(a))

F14 Rule 11(4) substituted for rule 11(4)(5) (6.4.2009) by The Patents, Trade Marks and Designs (Address for Service) Rules 2009 (S.I. 2009/546), rules 1, 12

F15 Word in rule 11(4) substituted (1.1.2021) by The Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020 (S.I. 2020/1317), rules 1(1), 3 (with rules 6-8)

Commencement Information

I7 Rule 11 in force at 1.10.2008, see rule 1

Failure to provide an address for service U.K.

12.—(1) Where—

(a) a person has failed to file an address for service under rule 11(1); and

(b) the registrar has sufficient information enabling the registrar to contact that person,

the registrar shall direct that person to file an address for service.

(2) Where a direction has been given under paragraph (1), the person directed shall, before the end of the period of one month [F16 beginning immediately after] the date of the direction, file an address for service.

(3) Paragraph (4) applies where—

(a) a direction was given under paragraph (1) and the period prescribed by paragraph (2) has expired; or

(b) the registrar had insufficient information to give a direction under paragraph (1),

and the person has failed to provide an address for service.

(4) Where this paragraph applies—

(a) in the case of an applicant for registration of a trade mark, the application shall be treated as withdrawn;

(b) in the case of a person opposing the registration of a trade mark, that person’s opposition shall be treated as withdrawn;

(c) in the case of a person applying for revocation, a declaration of invalidity or rectification, that person’s application shall be treated as withdrawn; and

(d) in the case of the proprietor opposing such an application, the proprietor shall be deemed to have withdrawn from the proceedings[F17 ;]

[F18 (e) in the case of the proprietor who sends a derogation notice to the registrar, the registrar must proceed as if the proprietor had not sent a derogation notice.]

(5) In this rule an “address for service” means an address which complies with the requirements of rule 11(4) F19 ....

Textual Amendments

F16 Words in rule. 12(2) substituted (31.3.2013) by The Trade Marks and Registered Designs (Amendment) Rules 2013 (S.I. 2013/444), rules 1, 4, Sch. 1 (with rule 8)

F17 Rule 12(4)(d): semicolon substituted for full stop by S.I. 2019/269, Sch. 4 para. 6A(2) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(b))

F18 Rule 12(4)(e) inserted by S.I. 2019/269, Sch. 4 para. 6A(3) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(b))

F19 Words in rule 12(5) omitted (6.4.2009) by virtue of The Patents, Trade Marks and Designs (Address for Service) Rules 2009 (S.I. 2009/546), rules 1, 13

Commencement Information

I8 Rule 12 in force at 1.10.2008, see rule 1

Deficiencies in application; section 32 U.K.

13.—(1) Where an application for registration of a trade mark does not satisfy the requirements of section 32(2), (3) or (4) or rule 5(1), the registrar shall send notice to the applicant to remedy the deficiencies or, in the case of section 32(4), the default of payment.

(2) A notice sent under paragraph (1) shall specify a period, of not less than [F20 14 days], within which the applicant must remedy the deficiencies or the default of payment.

(3) Where, before the expiry of the period specified under paragraph (2), the applicant—

(a) fails to remedy any deficiency notified to the applicant in respect of section 32(2), the application shall be deemed never to have been made; or

(b) fails to remedy any deficiency notified to the applicant in respect of section 32(3) or rule 5(1) or fails to make payment as required by section 32(4), the application shall be treated as abandoned.

Textual Amendments

F20 Words in rule 13(2) substituted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 9

Commencement Information

I9 Rule 13 in force at 1.10.2008, see rule 1

Notifying results of search U.K.

14.—(1) Where, following any search under article 4 of the Trade Marks (Relative Grounds) Order 2007(1), it appears to the registrar that the requirements for registration mentioned in section 5 are not met, the registrar shall notify this fact to—

(a) the applicant; and

(b) any relevant proprietor.

[F21 (2) In paragraph (1), “relevant proprietor” means the proprietor of a registered trade mark or international trade mark (UK) which is an earlier trade mark in relation to which it appears to the registrar that the conditions set out in section 5(1) or (2) obtain but does not include a proprietor who does not wish to be notified and who has notified the registrar to this effect.]

(3) References in paragraph (2) to the proprietor of a trade mark include a person who has applied for registration of a trade mark which, if registered, would be an earlier trade mark by virtue of [F22 section 6(1)(a) or (aa)].

[F23 (3A) References in paragraph (2) to the proprietor of a trade mark also include a person who has applied for registration of a trade mark which, if registered, would be an earlier trade mark by virtue of section 6(1)(ab).]

F24 (4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F24 (5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F24 (6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(7) Rule 63 shall not apply to any decision made in pursuance of this rule.

(8) No decision made in pursuance of this rule shall be subject to appeal.

Textual Amendments

F21 Rule 14(2) substituted (1.10.2012) by The Trade Marks and Trade Marks (Fees) (Amendment) Rules 2012 (S.I. 2012/1003), rules 1, 2(2)(a)

F22 Words in rule 14(3) substituted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 7; 2020 c. 1, Sch. 5 para. 1(1)

F23 Rule 14(3A) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 7 para. 6; 2020 c. 1, Sch. 5 para. 1(1)

F24 Rule 14(4)-(6) revoked (1.10.2012) by The Trade Marks and Trade Marks (Fees) (Amendment) Rules 2012 (S.I. 2012/1003), rules 1, 2(2)(b)

Commencement Information

I10 Rule 14 in force at 1.10.2008, see rule 1

Compliance with request for expedited examination U.K.

15.  Where the registrar receives a request for expedited examination under rule 5, the date on which the registrar shall be deemed to have notified the applicant whether or not it appears to the registrar that the requirements for registration are met shall be the date on which notice is sent to the applicant.

Commencement Information

I11 Rule 15 in force at 1.10.2008, see rule 1

(1)

S.I. 2007/1976