The Trade Marks Rules 2008

Collective and certification marks

Filing of regulations for collective and certification marks; Schedules 1 & 2 (Form TM35)

29.  Where an application for registration of a collective or certification mark is filed, the applicant shall, within such period of not less than three months as the registrar may specify, file Form TM35 accompanied by a copy of the regulations governing the use of the mark.

Amendment of regulations of collective and certification marks; Schedule 1 paragraph 10 and Schedule 2 paragraph 11 (Forms TM36 & TM7)

30.—(1) An application for the amendment of the regulations governing the use of a registered collective or certification mark shall be filed on Form TM36.

(2) Where it appears to be expedient to the registrar that the amended regulations should be made available to the public the registrar shall publish a notice in the Journal indicating where copies of the amended regulations may be inspected.

(3) Any person may, within two months of the date of publication of the notice under paragraph (2), make observations to the registrar on the amendments relating to the matters referred to in paragraph 6(1) of Schedule 1 to the Act in relation to a collective mark, or paragraph 7(1) of Schedule 2 to the Act in relation to a certification mark and the registrar shall send a copy of those observations to the proprietor.

(4) Any person may, within two months of the date on which the notice was published under paragraph (2), give notice to the registrar of opposition to the amendment on Form TM7 which shall include a statement of the grounds of opposition indicating why the amended regulations do not comply with the requirements of paragraph 6(1) of Schedule 1 to the Act, or, as the case may be, paragraph 7(1) of Schedule 2 to the Act.

(5) The registrar shall send a copy of Form TM7 to the proprietor and the procedure in rules 18 and 20 shall apply to the proceedings relating to the opposition to the amendment as they apply to proceedings relating to opposition to an application for registration, but with the following modifications—

(a) any reference to—

(i) the applicant shall be construed as a reference to the proprietor,

(ii) an application for registration shall be construed as a reference to an application for the amendment of the regulations,

(iii) the person opposing the registration shall be construed as a reference to the person opposing the amendment of the regulations;

(b) the relevant period, referred to in rule 18(1), shall for these purposes be the period of two months beginning with the date upon which the registrar sent a copy of Form TM7 to the proprietor;

(c) rules 18(3) to (6), 20(2) and (3) shall not apply.

Registration subject to disclaimer or limitation; section 13

31.  Where the applicant for registration of a trade mark or the proprietor by notice in writing sent to the registrar—

(a) disclaims any right to the exclusive use of any specified element of the trade mark; or

(b) agrees that the rights conferred by the registration shall be subject to a specified territorial or other limitation,

the registrar shall make the appropriate entry in the register and publish such disclaimer or limitation.

Alteration of registered trade marks; section 44 (Forms TM25 & TM7)

32.—(1) The proprietor of a registered trade mark may request the registrar on Form TM25 for such alteration of the mark as is permitted under section 44 and following such request the registrar may require evidence as to the circumstances in which the application is made.

(2) Where, upon the request of the proprietor, the registrar proposes to allow such alteration, the registrar shall publish the mark as altered in the Journal.

(3) Any person claiming to be affected by the alteration may, within two months of the date on which the mark as altered was published under paragraph (2), give notice to the registrar of objection to the alteration on Form TM7 which shall include a statement of the grounds of objection.

(4) The registrar shall send a copy of Form TM7 to the proprietor and the procedure in rules 18 and 20 shall apply to the proceedings relating to the objection to the alteration as they apply to proceedings relating to opposition to an application for registration, but with the following modifications—

(a) any reference to—

(i) the applicant shall be construed as a reference to the proprietor,

(ii) an application for registration shall be construed as a reference to a request for alteration,

(iii) the person opposing the registration shall be construed as a reference to the person objecting to the alteration,

(iv) the opposition shall be construed as a reference to the objection;

(b) the relevant period, referred to in rule 18(1), shall for these purposes be the period of two months beginning with the date upon which the registrar sent a copy of Form TM7 to the proprietor;

(c) rules 18(3) to (6), 20(2) and (3) shall not apply.

Surrender of registered trade mark; section 45 (Forms TM22 & TM23)

33.—(1) Subject to paragraph (2), the proprietor may surrender a registered trade mark, by sending notice to the registrar—

(a) on Form TM22 in respect of all the goods or services for which it is registered; or

(b) on Form TM23, in respect only of those goods or services specified by the proprietor in the notice.

(2) A notice under paragraph (1) shall be of no effect unless the proprietor in that notice—

(a) gives the name and address of any person having a registered interest in the mark; and

(b) certifies that any such person—

(i) has been sent not less than three months’ notice of the proprietor’s intention to surrender the mark, or

(ii) is not affected or if affected consents to the surrender.

(3) The registrar shall, upon the surrender taking effect, make the appropriate entry in the register and publish the date of surrender on the Office website.