The Trade Marks Rules 2008

The register

Form of register; section 63(1)

46.  The register required to be maintained by the registrar under section 63(1) need not be kept in documentary form.

Entry in register of particulars of registered trade marks; section 63(2) (Form TM24)

47.  In addition to the entries in the register of registered trade marks required to be made by section 63(2)(a), there shall be entered in the register in respect of each trade mark the following particulars—

(a) the date of registration as determined in accordance with section 40(3) (that is to say, the date of the filing of the application for registration);

(b) the date of completion of the registration procedure;

(c) the priority date (if any) to be accorded pursuant to a claim to a right to priority made under section 35 or 36;

(d) the name and address of the proprietor;

(e) the address for service (if any) filed under rule 11;

(f) any disclaimer or limitation of rights under section 13(1)(a) or (b);

(g) any memorandum or statement of the effect of any memorandum relating to a trade mark of which the registrar has been notified on Form TM24;

(h) the goods or services in respect of which the mark is registered;

(i) where the mark is a collective or certification mark, that fact;

(j) where the mark is registered pursuant to section 5(5) with the consent of the proprietor of an earlier trade mark or other earlier right, that fact;

(k) where the mark is registered pursuant to a transformation application,

(i) the number of the international registration, and

(ii) either:—

(aa) the date accorded to the international registration under Article 3(4), or

(bb) the date of recordal of the request for extension to the United Kingdom of the international registration under Article 3ter,

as the case may be, of the Madrid Protocol;

(l) where the mark arises from the conversion of a Community trade mark or an application for a Community trade mark, the number of any other registered trade mark from which the Community trade mark or the application for a Community trade mark claimed seniority and the earliest seniority date.

Entry in register of particulars of registrable transactions; section 25

48.  Upon application made to the registrar by such person as is mentioned in section 25(1)(a) or (b) there shall be entered in the register in respect of each trade mark the following particulars of registrable transactions together with the date on which the entry is made —

(a) in the case of an assignment of a registered trade mark or any right in it—

(i) the name and address of the assignee,

(ii) the date of the assignment, and

(iii) where the assignment is in respect of any right in the mark, a description of the right assigned;

(b) in the case of the grant of a licence under a registered trade mark—

(i) the name and address of the licensee,

(ii) where the licence is an exclusive licence, that fact,

(iii) where the licence is limited, a description of the limitation, and

(iv) the duration of the licence if the same is or is ascertainable as a definite period;

(c) in the case of the grant of any security interest over a registered trade mark or any right in or under it—

(i) the name and address of the grantee,

(ii) the nature of the interest (whether fixed or floating), and

(iii) the extent of the security and the right in or under the mark secured;

(d) in the case of the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it—

(i) the name and address of the person in whom the mark or any right in or under it vests by virtue of the assent, and

(ii) the date of the assent;

(e) in the case of a court or other competent authority transferring a registered trade mark or any right in or under it—

(i) the name and address of the transferee,

(ii) the date of the order, and

(iii) where the transfer is in respect of a right in the mark, a description of the right transferred; and

(f) in the case of any amendment of the registered particulars relating to a licence under a registered trade mark or a security interest over a registered trade mark or any right in or under it, particulars to reflect such amendment.

Application to register or give notice of transaction; sections 25 & 27(3) (Form TM16, TM24, TM50 & TM51)

49.—(1) An application to register particulars of a transaction to which section 25 applies or to give notice to the registrar of particulars of a transaction to which section 27(3) applies shall be made—

(a) relating to an assignment or transaction other than a transaction referred to in sub-paragraphs (b) to (d) below, on Form TM16;

(b) relating to a grant of a licence, on Form TM50;

(c) relating to an amendment to, or termination of a licence, on Form TM51;

(d) relating to the grant, amendment or termination of any security interest, on Form TM24; and

(e) relating to the making by personal representatives of an assent or to an order of a court or other competent authority, on Form TM24.

(2) An application under paragraph (1) shall—

(a) where the transaction is an assignment, be signed by or on behalf of the parties to the assignment;

(b) where the transaction falls within sub-paragraphs (b), (c) or (d) of paragraph (1), be signed by or on behalf of the grantor of the licence or security interest,

or be accompanied by such documentary evidence as suffices to establish the transaction.

(3) Where an application to give notice to the registrar has been made of particulars relating to an application for registration of a trade mark, upon registration of the trade mark, the registrar shall enter those particulars in the register.

Public inspection of register; section 63(3)

50.—(1) The register shall be open for public inspection at the Office during the hours of business of the Office as published in accordance with rule 80.

(2) Where any portion of the register is kept otherwise than in documentary form, the right of inspection is a right to inspect the material on the register.

Supply of certified copies etc; section 63(3) (Form TM31R)

51.  The registrar shall supply a certified copy or extract or uncertified copy or extract, as requested on Form TM31R, of any entry in the register.

Request for change of name or address in register; section 64(4) (Form TM21)

52.  The registrar shall, on a request made on Form TM21 by the proprietor of a registered trade mark or a licensee or any person having an interest in or charge on a registered trade mark which has been registered under rule 48 (“ the applicant”), enter a change in the applicant’s name or address as recorded in the register.

Removal of matter from register; sections 25(5)(b) and 64(5) (Form TM7)

53.—(1) Where it appears to the registrar that any matter in the register has ceased to have effect, before removing it from the register—

(a) the registrar may publish in the Journal the fact that it is intended to remove that matter, and

(b) where any person appears to the registrar to be affected by the removal, notice of the intended removal shall be sent to that person.

(2) Within two months of the date on which the intention to remove the matter is published, or notice of the intended removal is sent, as the case may be—

(a) any person may file notice of opposition to the removal on form TM7; and

(b) the person to whom a notice is sent under paragraph (1)(b) may file in writing their objections, if any, to the removal,

and where such opposition or objections are made, rule 63 shall apply.

(3) If the registrar is satisfied after considering any objections or opposition to the removal that the matter has not ceased to have effect, the registrar shall not remove it.

(4) Where there has been no response to the registrar’s notice the registrar may remove the matter and where representations objecting to the removal of the entry have been made the registrar may, if after considering the objections the registrar is of the view that the entry or any part of it has ceased to have effect, remove it or the appropriate part of it.