The Trade Marks Rules 2008

Preliminary U.K.

Citation and commencement U.K.

1.  These Rules may be cited as the Trade Marks Rules 2008 and shall come into force on 1st October 2008.

Commencement Information

I1 Rule 1 in force at 1.10.2008, see rule 1

Interpretation U.K.

2.—(1) In these Rules—

“the Act” means the Trade Marks Act 1994;

[F1 “fast track opposition” means an opposition—

(a)

brought solely on grounds under section 5(1) or 5(2) of the Act,

(b)

based on no more than 3 earlier trade marks, each of which is registered in the UK or in the EU, [F2 or is protected in the UK as an international trade mark (UK)],

(c)

where proof of use of the earlier marks can be provided with the notice of opposition, and

(d)

which the opponent considers may be determined without the need for further evidence and without an oral hearing.]

“the Journal” means the Trade Marks Journal published in accordance with rule 81;

“the “Nice Agreement” means the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15th June 1957(1), which was last amended on 28th September 1979;

“the “Nice Classification” means the system of classification under the Nice Agreement(2);

[F3 “the Office” means the Patent Office which operates under the name “Intellectual Property Office”;]

“send” includes give;

“specification” means the statement of goods or services in respect of which a trade mark is registered or proposed to be registered;

“transformation application” means an application to register a trade mark under the Act where that mark was the subject of an international registration prior to that registration being cancelled.

(2) In these Rules a reference to a section is a reference to that section in the Act [F4 , a reference to a schedule is a reference to that schedule to the Act] and a reference to a form is a reference to that form as published under rule 3.

[F5 (2A) Terms defined in Part 5 of Schedules 2A and 2B have the same meaning in these Rules.]

(3) In these Rules references to the filing of any application, notice or other document, unless the contrary intention appears, are to be construed as references to its being delivered to the registrar at the Office.

Textual Amendments

F1 Words in rule 2(1) inserted (1.10.2013) by The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 (S.I. 2013/2235), rules 1, 2(2)

F2 Words in rule 2 substituted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 2(2); 2020 c. 1, Sch. 5 para. 1(1)

F3 Words in rule 2(1) substituted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 4

F4 Words in rule 2(2) inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 2(3); 2020 c. 1, Sch. 5 para. 1(1)

F5 Rule 2(2A) 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. 2; 2020 c. 1, Sch. 5 para. 1(1)

Commencement Information

I2 Rule 2 in force at 1.10.2008, see rule 1

[F6 Comparable trade mark (EU) U.K.

2A   These Rules apply to a comparable trade mark (EU) as they apply to other registered trade marks.]

Textual Amendments

F6 Rule 2A inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 3; 2020 c. 1, Sch. 5 para. 1(1)

[F7 Comparable trade mark (IR) U.K.

2B   These Rules apply to a comparable trade mark (IR) as they apply to other registered trade marks.]

Textual Amendments

F7 Rule 2B 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. 3; 2020 c. 1, Sch. 5 para. 1(1)

Forms and directions of the registrar; section 66 U.K.

3.—(1) Any forms required by the registrar to be used for the purpose of registration of a trade mark or any other proceedings before the registrar under the Act pursuant to section 66 and any directions with respect to their use shall be published on the Office website and any amendment or modification of a form or of the directions with respect to its use shall also be published on the Office website.

(2) Except in relation to Forms TM6 and TM7A a requirement under this rule to use a form as published is satisfied by the use either of a replica of that form or of a form which is acceptable to the registrar and contains the information required by the form as published and complies with any directions as to the use of such a form.

Commencement Information

I3 Rule 3 in force at 1.10.2008, see rule 1

Requirement as to fees U.K.

4.—(1) The fees to be paid in respect of any application, registration or any other matter under the Act and these Rules shall be those (if any) prescribed in relation to such matter F8 ....

(2) Any form required to be filed with the registrar in respect of any specified matter shall be subject to the payment of the fee (if any) prescribed in respect of that matter F9 ....

[F10 (3) In this rule, “prescribed” means—

(a) in relation to a registered trade mark other than a comparable trade mark (EU), prescribed by rules under section 79 (fees);

(b) in relation to a comparable trade mark (EU), prescribed by virtue of regulations under Schedule 4 to the European Union (Withdrawal) Act 2018.]

Textual Amendments

F8 Words in rule 4(1) omitted (31.12.2020) by virtue of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 4(2); 2020 c. 1, Sch. 5 para. 1(1)

F9 Words in rule 4(2) omitted (31.12.2020) by virtue of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 4(3); 2020 c. 1, Sch. 5 para. 1(1)

F10 Rule 4(3) inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 4(4); 2020 c. 1, Sch. 5 para. 1(1)

Commencement Information

I4 Rule 4 in force at 1.10.2008, see rule 1

[F11 Prescribed comparable trade mark (IR) fees U.K.

4A   In relation to a comparable trade mark (IR), “prescribed” in rule 4(1) means prescribed by virtue of regulations under Schedule 4 to the European Union (Withdrawal) Act 2018.]

Textual Amendments

F11 Rule 4A 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. 4; 2020 c. 1, Sch. 5 para. 1(1)

(1)

Cmnd 6898.

(2)

The current version of the classification is the Ninth Edition which entered into force on 1st January 2007 and is available on the WIPO website.