The Trade Marks (Fees) Rules 2008

Statutory Instruments

2008 No. 1958

Trade Marks

The Trade Marks (Fees) Rules 2008

Made

21st July 2008

Laid before Parliament

23rd July 2008

Coming into force

1st October 2008

The Secretary of State makes the following Rules in exercise of the powers conferred by section 79 of the Trade Marks Act 1994 M1 (“the Act”) and of the power conferred by the Department of Trade and Industry (Fees) Order 1988 M2 .

Marginal Citations

M1 1994 c.26.

M2 S.I. 1988/93 as amended by S.I. 1990/1473, which was made under section 102 of the Finance (No. 2) Act 1987 (c.51).

Citation, commencement and interpretation U.K.

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

(2) These Rules shall be construed as one with the Trade Marks Rules 2008 M3 (“the 2008 Rules”).

Marginal Citations

M3 S.I. 2008/1797.

Fees payable U.K.

2.—(1) The fees to be paid in respect of any matters arising under the Act and the 2008 Rules shall be those specified in the Schedule to these Rules.

(2) In any case where a form specified in the Schedule as the corresponding form in relation to any matter is specified in the 2008 Rules, that form shall be accompanied by the fee specified in respect of that matter (unless the 2008 Rules otherwise provide).

Repayment of fee U.K.

3.—(1) Where the registrar—

(a) has received a request for expedited examination of an application for registration of a trade mark under rule 5(2) of the 2008 Rules; and

(b) following the expiry of a period of ten business days (as specified in a direction given by the registrar under section 80 of the Act) beginning on the business day after the date of filing of the application for registration, notifies the applicant, in accordance with rule 15 of the 2008 Rules, whether or not it appears to the registrar that the requirements for registration are met,

the registrar shall repay the fee specified in the Schedule in respect of a request for expedited examination.

(2) Where a fee has been paid in error, the registrar shall repay the same; and where a fee is paid in excess of the amount specified, the registrar shall remit the amount paid in excess.

Revocations U.K.

4.  The following instruments are revoked—

(a) The Trade Marks (Fees) Rules 2000 M4 save insofar as they relate to fees payable in respect of matters arising under the Trade Marks (International Registration) Order 1996 M5

(b) The Trade Marks (Fees) (Amendment) Rules 2007 M6 ;

(c) The Trade Marks and Trade Marks (Fees) (Amendment) Rules 2008 M7 .

Marginal Citations

M4 S.I. 2000/137.

M5 S.I. 1996/714 as amended by S.I. 2000/138, S.I. 2002/692, S.I. 2004/948, S.I. 2006/763 and S.I. 2006/1080.

M6 S.I. 2007/2077.

M7 S.I. 2008/11.

Baroness Morgan of Drefelin

Parliamentary Under Secretary of State for Intellectual Property and Quality

Department for Innovation, Universities and Skills

Rule 2

SCHEDULE U.K. Fees Payable

(In this section references to a rule are references to that rule in the 2008 Rules)

Number of corresponding form	Item	Amount
		£
TM3	[F1 Standard] application for registration of a trade mark (rule 5) or a series of trade marks (rule 28)	200
[F2 e-TM3]	Request to the Registrar for expedited examination of [F3 electronic] application for registration of a trade mark (rule 5(2))	300
TM3	Class fee (rule 5), for each class over one [F4 contained in a standard application]	50
[F5 TM3	Series fee (rule 28(1A)), for each trade mark over two contained in a standard application	50
e-TM3	Electronic application for registration of a trade mark (rule 5(1B)) or a series of trade marks (rule 28)	170
e-TM3	Class fee (rule 5), for each class over one contained in an electronic application	50
e-TM3	Series fee (rule 28(1A)), for each trade mark over two contained in an electronic application	50]
TM3A	Application for additional classes following examination of a mark (rule 8(4)), for each additional class	50
TM5	Request to the registrar for a statement of the reasons for his decision (rule 69(2))	100
TM6	Request to the registrar by the proprietor of a Community trade mark or international trade mark (EC) to be notified of the results of a search of the register (rule 14(4))	50
TM7	Notice of opposition to the registration of a mark (rule 17(1)), to the amendment of an application (rule 25(2)), or to the amendment of the regulations relating to a certification or collective trade mark (rule 30(4)), to the alteration of a registered trade mark (rule 32(3)), to the removal of matter from the register (rule 53(2)(a)), to the reclassification of a mark in accordance with the relevant Nice Classification (rule 55(1))	200
TM9	Request for extension of time (rule 77(2))	[F6 100]
TM11	Renewal of registration (rule 35)	200
TM11	Class fee for each class over one (rule 35)	50
TM11	Delayed renewal of registration (rule 36(2))	50
TM12	Request for division of an application (rule 26(1))	100
TM13	Request for the restoration and renewal of a registration removed from the register for failure to renew (rule 37(1))	100
TM16	Request to enter details of an assignment (rule 49(1)(a))	50
TM26 (N)	Request for the revocation of a registration (on grounds of non-use) (rule 38)	200
TM26 (O)	Request for the revocation of a registration (on grounds other than non-use) (rule 39)	200
TM26 (I)	Request for the invalidation of a registration (rule 41)	200
TM31C	Request for information about applications and registered trade marks (rule 56)	20
TM31R	Request for certified copy of an entry on the register (rule 51), per certificate	20
TM35	Filing of regulations governing the use of a certification or collective mark (rule 29)	200
TM36	Request to amend regulations governing the use of a certification or collective mark (rule 30(1))	100

Textual Amendments

F1 Word in Sch. inserted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 1, 15

F2 Word in Sch. substituted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 16

F3 Word in Sch. inserted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 16

F4 Words in Sch. inserted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 17

F5 Words in Sch. inserted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 18

F6 Word in Sch. inserted (1.10.2009) by The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (S.I. 2009/2089), rules 2, 19

Explanatory Note

(This note is not part of the Rules)

These Rules prescribe fees in relation to matters arising under the Trade Marks Act 1994 (“the Act”) and the Trade Marks Rules 2008 (SI 2008/1797) (which revoked and replaced the Trade Marks Rules 2000 (SI 2000/136) (“the 2000 Rules”). These Rules revoke and replace the Trade Marks (Fees) Rules 2000 (SI 2000/137) (“the Fees Rules”) insofar as they relate to fees payable under the Act and the 2000 Rules. No change has been made to the level of fees nor to the circumstances in which a fee is payable. The Fees Rules continue to prescribe fees in relation to matters arising under the Trade Marks (International Registration) Order 1996 (SI 1996/714).

Where a form is specified in the Schedule in relation to any matter, that form must be sent to the registrar together with the relevant fee for that matter, unless the Trade Marks Rules 2008 specify otherwise (rule 2).

Rule 3 specifies the circumstances in which the registrar shall repay a fee or any amount paid in excess of the specified fee.

A separate impact assessment has not been produced for this instrument as it is made in consequence of the revocation and replacement of the 2000 Rules by the Trade Marks Rules 2008. However, a full impact assessment of the effect that the Trade Marks Rules 2008 will have on the costs of business and the voluntary sector is available from the UK Intellectual Property Office, Trade Marks Law Section, Concept House, Cardiff Road, Newport NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside that instrument on the OPSI website. Copies have also been placed in the libraries of both Houses of Parliament.