The Trade Marks (Amendment) Rules 2007

• Citation: S.I. 2007/2076
• Sections: 7

Section 1 Citation and commencement

These Rules may be cited as the Trade Marks (Amendment) Rules 2007 and shall come into force on 1st October 2007.

Section 2 Amendments to the Trade Mark Rules 2000

The Trade Marks Rules 2000 are amended as follows.

Section 3 Amendments to the Trade Mark Rules 2000

After rule 11, insert—

Notifying results of search

(11A)

(1) Where, following any search under Article 4 of the Trade Marks (Relative Grounds) Order 2007, it appears to the registrar that the requirements for registration mentioned in section 5 are not met, she shall notify this fact to—

(a) the applicant; and

(b) any relevant proprietor.

(2) In paragraph (1), “relevant proprietor” means—

(a) the proprietor of a registered trade mark or international trade mark ( UK ) which is an earlier trade mark in relation to which it appears to the registrar that the conditions set out in section 5(1) or (2) obtain but does not include a proprietor who has notified the registrar that he does not wish to be notified; and

(b) the proprietor of a Community trade mark or international trade mark ( EC ) which is an earlier trade mark in relation to which it appears to the registrar that the conditions set out in section 5(1) or (2) obtain and who has filed a request to be notified in relation to that mark in accordance with paragraph (4) below.

(3) References in paragraph (2) to the proprietor of a trade mark include a person who has applied for registration of a trade mark which, if registered, would be an earlier trade mark by virtue of section 6(1)(a) or (b).

(4) The proprietor of a Community trade mark or international trade mark (EC) may file a request to be notified in relation to that mark of the results of a notifiable search on Form TM6, which shall be filed electronically using the filing system provided on the Office website, or by such other means as the registrar may at her discretion permit in any particular case, and shall be subject to payment of the prescribed fee.

(5) In paragraph (4) a “notifiable search” means any search under Article 4 of the Trade Marks (Relative Grounds) Order 2007 conducted within the period of three years beginning with the date on which the request was filed.

(6) The filing of any request under paragraph (4) shall be subject to such terms or conditions as the registrar may specify generally by published notice or in any particular case by written notice to the person desiring to file the request otherwise than by electronic means.

(7) Rule 54 shall not apply to any decision made in pursuance of this rule.

(8) No decision made in pursuance of this rule shall be subject to appeal.

Section 4 Amendments to the Trade Mark Rules 2000

(1) Rule 13 (opposition proceedings) shall be amended as follows—

(2) For paragraph (1) substitute—

(1) Any notice to the registrar of opposition to the registration, including the statement of the grounds of opposition, shall be filed on Form TM7.

(1A) The time prescribed for the purposes of section 38(2) shall be the period of three months beginning with the date on which the application was published.

(3) Paragraph (2)(c) shall be omitted.

Section 5 Amendments to the Trade Mark Rules 2000

After rule 14, insert—

Procedure for intervention

(14A)

(1) If the opposition or part of it is based on the relative grounds for refusal set out in section 5(1), (2) or (3), any person in paragraph (3) may file an application to the registrar on Form TM27 for leave to intervene and the registrar may, after hearing the parties concerned if so required, refuse such leave or grant leave upon such terms and conditions (including any undertaking as to costs) as she thinks fit.

(2) Any person granted leave to intervene shall, subject to any terms and conditions imposed in respect of the intervention, be treated as a party to the proceedings for the purposes of the application of the provisions of rules 13B, 13C, and 60 and shall be entitled to receive written notice of the decision of the registrar under Rule 14.

(3) The persons referred to in paragraph (1) are:

(a) the licensee of an earlier trade mark included in the statement of the grounds of opposition; and

(b) in the case of a collective mark or certification mark, the authorised user of an earlier collective mark or certification mark included in the statement of the grounds of opposition.

Section 6 Amendments to the Trade Mark Rules 2000

In rule 2(1), omit the entry for “proprietor”.

Section 7 Transitional provisions

Rule 3 shall not apply to an application which was published before the coming into force of the Trade Marks (Relative Grounds) Order 2007 .