The Trade Marks Rules 2008

Proceedings before and decision of registrar, evidence and costs U.K.

General powers of registrar in relation to proceedings U.K.

62.—(1) Except where the Act or these Rules otherwise provide, the registrar may give such directions as to the management of any proceedings as the registrar thinks fit, and in particular may—

(a) require a document, information or evidence to be filed within such period as the registrar may specify;

(b) require a translation of any document;

(c) require a party or a party’s legal representative to attend a hearing;

(d) hold a hearing by telephone or by using any other method of direct oral communication;

[F1 (e) allow a statement of case to be amended, provided that—

(i) where an application is made to add grounds of opposition other than under subsections 5(1) or (2) of the Act, the application shall be made on Form TM7G; and

(ii) in the case of fast track oppositions the registrar may only permit a statement of case to be amended to add additional or alternative earlier registered or protected trade marks as additional grounds of opposition under subsections 5(1) or 5(2) of the Act, provided that the total number of earlier trade marks relied upon may not exceed three;]

(f) stay the whole, or any part, of the proceedings either generally or until a specified date or event;

[F2 (g) consolidate proceedings provided that where a fast track opposition is consolidated with other non-fast track proceedings, it shall no longer be treated as a fast track opposition;]

(h) direct that part of any proceedings be dealt with as separate proceedings;

(i) exclude any evidence which the registrar considers to be inadmissible;

(j) [F3 direct that with effect from the date specified in the direction opposition proceedings which have been commenced on Form TM7F as a fast track opposition but which do not satisfy the criteria for a fast track opposition may continue as if the opposition proceedings were an opposition to the registration commenced under Rule 17 on Form TM7]

(2) The registrar may control the evidence by giving directions as to—

(a) the issues on which evidence is required; and

(b) the way in which the evidence is to be placed before the registrar.

(3) When the registrar gives directions under any provision of these Rules, the registrar may—

(a) make them subject to conditions; and

(b) specify the consequences of failure to comply with the directions or a condition.

(4) The registrar may at any stage of any proceedings direct that the parties to the proceedings attend a case management conference or pre-hearing review.

[F4 (5) In the case of a fast track opposition—

(a) proceedings shall be held orally only if the Office requests it or if either party to the proceedings requests it and the registrar considers that oral proceedings are necessary to deal with the case justly and at proportionate cost; and

(b) the parties shall be given at least fourteen days’ notice beginning on the date on which the notice is sent, of the time when the oral proceedings are to take place unless each party to the proceedings consents to shorter notice.

(6) In the case of a fast track opposition, where no oral hearing is held, the registrar shall give the parties the opportunity to provide arguments in writing before reaching a decision that is adverse to either party.]

Textual Amendments

F1 Rule 62(1)(e) substituted (1.10.2013) by The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 (S.I. 2013/2235), rules 1, 2(7)(a)

F2 Rule 62(1)(g) substituted (1.10.2013) by The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 (S.I. 2013/2235), rules 1, 2(7)(b)

F3 Rule 62(1)(j) inserted (1.10.2013) by The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 (S.I. 2013/2235), rules 1, 2(7)(c)

F4 Rule 62(5)(6) inserted (1.10.2013) by The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 (S.I. 2013/2235), rules 1, 2(7)(d)

Commencement Information

I1 Rule 62 in force at 1.10.2008, see rule 1

Decisions of registrar to be taken after hearing U.K.

63.—(1) Without prejudice to any provisions of the Act or these Rules requiring the registrar to hear any party to proceedings under the Act or these Rules, or to give such party an opportunity to be heard, the registrar shall, before taking any decision on any matter under the Act or these Rules which is or may be adverse to any party to any proceedings, give that party an opportunity to be heard.

(2) The registrar shall give that party at least fourteen days’ notice, beginning on the date on which notice is sent, of the time when the party may be heard unless the party consents to shorter notice.

[F5 (3) This Rule shall not apply to fast track opposition proceedings.]

Textual Amendments

F5 Rule 63(3) inserted (1.10.2013) by The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 (S.I. 2013/2235), rules 1, 2(8)

Commencement Information

I2 Rule 63 in force at 1.10.2008, see rule 1

Evidence in proceedings before the registrar; section 69 U.K.

64.—(1) Subject to rule 62(2) and as follows, evidence filed in any proceedings under the Act or these Rules may be given—

(a) by witness statement, affidavit, statutory declaration; or

(b) in any other form which would be admissible as evidence in proceedings before the court.

(2) A witness statement may only be given in evidence if it includes a statement of truth.

(3) The general rule is that evidence at hearings is to be by witness statement unless the registrar or any enactment requires otherwise.

(4) For the purposes of these Rules, a statement of truth—

(a) means a statement that the person making the statement believes that the facts stated in a particular document are true; and

(b) shall be dated and signed by—

(i) in the case of a witness statement, the maker of the statement,

(ii) in any other case, the party or legal representative of such party.

(5) In these Rules, a witness statement is a written statement signed by a person that contains the evidence which that person would be allowed to give orally.

(6) Under these Rules, evidence shall only be considered filed when—

(a) it has been received by the registrar; and

(b) it has been sent to all other parties to the proceedings.

Commencement Information

I3 Rule 64 in force at 1.10.2008, see rule 1

Registrar to have power of an official referee; section 69 U.K.

65.  The registrar shall have the powers of an official referee of the Supreme Court as regards—

(a) the attendance of witnesses and their examination on oath; and

(b) the discovery and production of documents,

but the registrar shall have no power to punish summarily for contempt.

Commencement Information

I4 Rule 65 in force at 1.10.2008, see rule 1

Hearings before registrar to be in public U.K.

66.—(1) The hearing before the registrar of any dispute between two or more parties relating to any matter in connection with an application for the registration of a mark or a registered mark shall be in public unless the registrar, after consultation with those parties who appear in person or are represented at the hearing, otherwise directs.

F6 (2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

F6 Rule 66(2) omitted (3.11.2008) by virtue of The Tribunals, Courts and Enforcement Act 2007 (Transitional and Consequential Provisions) Order 2008 (S.I. 2008/2683), art. 1, Sch. 1 para. 345

Commencement Information

I5 Rule 66 in force at 1.10.2008, see rule 1

Costs of proceedings; section 68 U.K.

67.  The registrar may, in any proceedings under the Act or these Rules, by order award to any party such costs as the registrar may consider reasonable, and direct how and by what parties they are to be paid.

Commencement Information

I6 Rule 67 in force at 1.10.2008, see rule 1

Security for costs; section 68 U.K.

68.—(1) The registrar may require any person who is a party in any proceedings under the Act or these Rules to give security for costs in relation to those proceedings; and may also require security for the costs of any appeal from the registrar’s decision.

(2) In default of such security being given, the registrar, in the case of the proceedings before the registrar, or in the case of an appeal, the person appointed under section 76 may treat the party in default as having withdrawn their application, opposition, objection or intervention, as the case may be.

Commencement Information

I7 Rule 68 in force at 1.10.2008, see rule 1

Decision of registrar (Form TM5) U.K.

69.—(1) The registrar shall send to each party to the proceedings written notice of any decision made in any proceedings before the registrar stating the reasons for that decision and for the purposes of any appeal against that decision, subject to paragraph (2), the date on which the notice is sent shall be taken to be the date of the decision.

(2) Where a statement of the reasons for the decision is not included in the notice sent under paragraph (1), any party may, within one month of the date on which the notice was sent to that party, request the registrar on Form TM5 to send a statement of the reasons for the decision and upon such request the registrar shall send such a statement, and the date on which that statement is sent shall be deemed to be the date of the registrar’s decision for the purpose of any appeal against it.

Commencement Information

I8 Rule 69 in force at 1.10.2008, see rule 1