The Trade Marks (Fees) (Amendment) Rules 2013

Statutory Instruments

2013 No. 2236

Trade Marks

The Trade Marks (Fees) (Amendment) Rules 2013

Made

4th September 2013

Laid before Parliament

6th September 2013

Coming into force

1st October 2013

The Secretary of State in exercise of the powers contained in section 79 of the Trade Marks Act 1994(1) and of the power conferred by the Department of Trade and Industry (Fees) Order 1988(2) makes the following Rules:

Citation and commencement

1.  These Rules may be cited as the Trade Marks (Fees) (Amendment) Rules 2013 and shall come into force on 1st October 2013.

Amendments to the Trade Marks (Fees) Rules 2008

2.  The Table in the Schedule to the Trade Marks (Fees) Rules 2008(3) shall be amended, as follows—

(a) for entry TM7 substitute—

“TM7	Notice of opposition to the registration of a mark (rule 17(1))	200
TM7	Notice of opposition to the registration of a mark where the grounds of opposition are based solely on either or both of sub-sections 5(1) and (2) of the Trade Marks Act 1994	100
TM7	Notice of opposition 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”

(b) after the entry for TM7 insert—

“TM7F	Notice of fast track opposition to the registration of a mark (rule 17A)	100
TM7G	Application to add grounds, other than under section 5(1) or 5(2) of the Act, to an opposition made under Rule 17 (rule 62(1)(e))	100”

(c) after the entry for TM51 insert—

“TM55P

Appeal to the person appointed under section 76 in proceedings between two or more parties (rule 71(1A))

250”

Younger of Leckie

Parliamentary Under Secretary of State for Intellectual Property

Department for Business, Innovation and Skills

4th September 2013

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 (S.I. 2008/1797) (the “2008 Rules”) as amended by the Trade Marks (Fast Track Opposition) (Amendment) Rules 2013.

These Rules amend the Trade Marks (Fees) Rules 2008 (S.I. 2008/1958) in four respects. They amend the entry for TM7 to provide for a £100 fee for a notice of opposition to the registration of a mark where the grounds of opposition are based solely on either or both of sub-sections 5(1) and (2) of the Act. They provide for two new fees of £100 payable with Form TM7F, to give notice of fast track opposition, and with Form TM7G, to apply to add grounds other than under section 5(1) or 5(2) of the Act, to an opposition under Rule 17. The Rules also provide for a further new fee of £250 payable on an appeal on Form TM55P to the person appointed under section 76 of the Act in proceedings between two or more parties.

A separate impact assessment has not been produced for this instrument as it is made in consequence of the Trade Marks (Fast Track Opposition) (Amendment) Rules 2013. However, a full impact assessment of the effect that the Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 will have on the costs of business and the voluntary sector is available from the Intellectual Property Office, Concept House, Cardiff Road, Newport NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside that instrument on www.legislation.gov.uk. Copies of that impact assessment have also been placed in the libraries of both Houses of Parliament.

(1)

1994 c.26.

(2)

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

(3)

S.I. 2008/1958 the Schedule of which has been amended by S.I. 2009/2089, S.I. 2010/33 and S.I. 2012/1003. Other amendments have also been made but they are not relevant to these Rules.