The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009

EXPLANATORY NOTE

(This note is not part of the Rules)

These Rules amend the Trade Marks Rules 2008 (SI 2008/1797) (“the 2008 Rules”), the Trade Marks (Fees) Rules 2008 (SI 2008/1958) (“the Trade Marks (Fees) Rules”) and the Patents (Fees) Rules 2007 (SI2007/3292) (“the Patents (Fees) Rules”).

The amendments to the 2008 Rules and the Trade Marks (Fees) Rules contained in rules 4 to 19 make the following changes of substance—

(1) An application for the registration of a trade mark which is filed electronically on Form e-TM3 shall be subject to a fee of £170 where the fee (and any relevant class or series fees) are paid in full at the time the application is filed. Where the full fees do not accompany the application, the standard application fee of £200 shall apply, together with any class or series fees (rule 5).

(2) Rule 5(2) of the 2008 Rules contains a provision under which for a fee of £300 an applicant may request an expedited examination of the application, in which case the report is issued within 10 working days or the fee is refunded. Rule 5 is amended to provide that where the time period within which standard examinations are routinely dealt with is equal to or less than 10 days, the registrar may suspend provision of the expedited examination service as there will be no benefit to applicants over the standard service. In this event, the registrar will advertise the suspension of the service on the website operated by the Intellectual Property Office. If the time period within which standard examinations are routinely dealt with subsequently exceeds the 10 day period, the registrar may resume the expedited examination service and advertise the same (rule 8).

(3) The right to file a single application in respect of a series of trade marks under rule 28 of the 2008 Rules is now limited to six trade marks and a fee of £50 will be payable in respect of each trade mark over two in number. The right to request a division of an application for a series of trade marks into separate applications is removed in relation to applications filed on or after 1^st October 2009 (rules 11, 12 and 23).

(4) The fee to request an extension of time under rule 77(2) of the 2008 Rules is increased from £50 to £100 (rule 19).

The Patents (Fees) Rules are amended by rules 20 to 22. Under rule 21, the application fee for a patent is reduced from £30 to £20 where the application is filed electronically and it is accompanied by the fee. Under rule 22, the search fee and the examination fee are each reduced by £10 where the relevant form (Patents Form 9A or Patents Form 10) is filed electronically.

A full impact assessment of the effect that this instrument will have on the costs of business and the voluntary sector is available from the Intellectual Property Office, Room 2B36, Concept House, Cardiff Road, Newport, NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside the instrument on the OPSI website.