The Trade Marks Rules 2008

• Citation: S.I. 2008/1797
• Sections: 94

Section 1 Citation and commencement

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

Section 2 Interpretation

(1) In these Rules—

“the Act” means the Trade Marks Act 1994;

“ fast track opposition ” means an opposition—

brought solely on grounds under section 5(1) or 5(2) of the Act,

based on no more than 3 earlier trade marks, each of which is registered in the UK or in the EU, or is protected in the UK as an international trade mark (UK) ,

where proof of use of the earlier marks can be provided with the notice of opposition, and

which the opponent considers may be determined without the need for further evidence and without an oral hearing.

“ the Journal ” means the Trade Marks Journal published in accordance with rule 81;

“the “ Nice Agreement ” means the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15th June 1957 , which was last amended on 28th September 1979;

“the “ Nice Classification ” means the system of classification under the Nice Agreement ;

“ the Office ” means the Patent Office which operates under the name “Intellectual Property Office”;

“ send ” includes give;

“ specification ” means the statement of goods or services in respect of which a trade mark is registered or proposed to be registered;

“ transformation application ” means an application to register a trade mark under the Act where that mark was the subject of an international registration prior to that registration being cancelled.

(2) In these Rules a reference to a section is a reference to that section in the Act , a reference to a schedule is a reference to that schedule to the Act and a reference to a form is a reference to that form as published under rule 3.

(2A) Terms defined in Part 5 of Schedules 2A and 2B have the same meaning in these Rules.

(3) In these Rules references to the filing of any application, notice or other document, unless the contrary intention appears, are to be construed as references to its being delivered to the registrar at the Office.

Section 2A Comparable trade mark (EU)

These Rules apply to a comparable trade mark (EU) as they apply to other registered trade marks.

Section 2B Comparable trade mark (IR)

These Rules apply to a comparable trade mark (IR) as they apply to other registered trade marks.

Section 3 Forms and directions of the registrar; section 66

(1) Any forms required by the registrar to be used for the purpose of registration of a trade mark or any other proceedings before the registrar under the Act pursuant to section 66 and any directions with respect to their use shall be published on the Office website and any amendment or modification of a form or of the directions with respect to its use shall also be published on the Office website.

(2) Except in relation to Forms TM6 and TM7A a requirement under this rule to use a form as published is satisfied by the use either of a replica of that form or of a form which is acceptable to the registrar and contains the information required by the form as published and complies with any directions as to the use of such a form.

Section 4 Requirement as to fees

(1) The fees to be paid in respect of any application, registration or any other matter under the Act and these Rules shall be those (if any) prescribed in relation to such matter ....

(2) Any form required to be filed with the registrar in respect of any specified matter shall be subject to the payment of the fee (if any) prescribed in respect of that matter ....

(3) In this rule, “ prescribed ” means—

(a) in relation to a registered trade mark other than a comparable trade mark (EU), prescribed by rules under section 79 (fees);

(b) in relation to a comparable trade mark (EU), prescribed by virtue of regulations under Schedule 4 to the European Union (Withdrawal) Act 2018.

Section 4A Prescribed comparable trade mark (IR) fees

In relation to a comparable trade mark (IR), “prescribed” in rule 4(1) means prescribed by virtue of regulations under Schedule 4 to the European Union (Withdrawal) Act 2018.

Section 5 Application for registration; section 32 (Form TM3)

(1) An application for the registration of a trade mark (other than a transformation application, which shall be filed on Form TM4) shall be filed on Form TM3 or, where the application is filed in electronic form using the filing system provided on the Office website, on Form e-TM3.

(1A) Where an application is filed on Form TM3 (a “standard application”) the application shall be subject to the payment of the standard application fee and such class and series fees as may be appropriate.

(1B) Where an application is filed on Form e-TM3 (an “electronic application”) the application shall be subject to the payment of the e-filed application fee and such class and series fees as may be appropriate, which shall be payable at the time the electronic application is made and if they are not so paid the application shall be subject to the payment of the standard application fee referred to in paragraph (1A) and such class and series fees as may be appropriate.

(2) Subject to paragraph (6) where an application is for the registration of a single trade mark, an applicant may request the registrar to undertake an expedited examination of the application.

(3) A request for expedited examination shall be made on Form e-TM3 and shall be subject to payment of the prescribed fee.

(4) Where an applicant makes a request for expedited examination, the application fee and any class fees payable in respect of the application shall be payable at the time the application is made and accordingly rule 13 shall not apply insofar as it relates to the failure of an application to satisfy the requirements of section 32(4).

(5) In this rule and rule 15 a “ request for expedited examination ” means a request that, following an examination under section 37, the registrar notify the applicant within a period of ten business days (as specified in a direction given by the registrar under section 80) beginning on the business day after the date of filing of the application for registration whether or not it appears to the registrar that the requirements for registration are met.

(6) The Registrar may at any time—

(a) suspend the right of applicants to file a request for expedited examination under paragraph (2) (“the expedited examination service”) for such period as the registrar deems fit; and

(b) resume the expedited examination service.

(7) Where the registrar suspends or resumes the expedited examination service pursuant to paragraph (6), the registrar must publish a notice on the Office website—

(a) of the date from which the expedited examination service is suspended;

(b) of the date upon which the expedited examination service will resume.

Section 5A Application for registration based upon an existing EUTM application; Schedule 2A paragraph 25

(1) Where an application for registration is made in accordance with paragraph 25 of Schedule 2A, the application for registration under rule 5 must specify—

(a) the number accorded to the existing EUTM application;

(b) the filing date accorded to the existing EUTM application; and

(c) the date of priority (if any) accorded pursuant to a right of priority claimed in respect of the existing EUTM application.

(2) Where—

(a) a right of priority has been claimed (“a priority claim”) in respect of the existing EUTM application; or

(b) the seniority of a registered trade mark or a protected international trade mark (UK) has been claimed (“a seniority claim”) under paragraph 26 of Schedule 2A,

the application for registration under rule 5 must, in addition, specify the information provided in paragraph (3).

(3) The information is—

(a) in relation to a priority claim, the information specified in rule 6(1)(a) to (c); and

(b) in relation to a seniority claim, the number of the registered trade mark or protected international trade mark (UK) from which the trade mark the subject of the application claims seniority and the seniority date.

(4) The registrar may, in any particular case, by notice require the applicant to file, within such period of not less than one month as the notice may specify, such documentary evidence as the registrar may require certifying, or verifying to the satisfaction of the registrar—

(a) the filing date accorded to the existing EUTM application, the representation of the mark and the goods or services covered by the existing EUTM application; and

(b) in relation to a priority claim, the date of filing of the overseas application, the country or registering or competent authority, the representation of the mark and the goods or services covered by the overseas application.

Section 5B Application for registration based upon an existing ITM application, existing request for EU extension or transformation application; Schedule 2B paragraph 28, 29 or 33

(1) Where an application for registration is made in accordance with paragraph 28, 29 or 33 of Schedule 2B, the application for registration under rule 5 must specify—

(a) the number of the international registration to which the application relates;

(b) the date referred to in paragraph 28(2)(a), 29(2)(a) or 33(2)(a) or (3)(a) of Schedule 2B (as the case may be) in respect of that application; and

(c) the date of priority (if any) accorded pursuant to a right of priority claimed in respect of the existing ITM application the existing request for EU extension or the cancelled international registration the subject of a transformation application.

(2) Where—

(a) a right of priority has been claimed (“a priority claim”) in respect of the existing ITM application, an existing request for EU extension or the cancelled international registration the subject of a transformation application; or

(b) the seniority of a registered trade mark or a protected international trade mark (UK) has been claimed (“a seniority claim”) pursuant to paragraph 30 or 33 of Schedule 2B,

the application for registration under rule 5 must, in addition, specify the information provided in paragraph (3).

(3) The information is—

(a) in relation to a priority claim, the information specified in rule 6(1)(a) to (c); and

(b) in relation to a seniority claim, the number of the registered trade mark or protected international trade mark (UK) from which the trade mark the subject of the application claims seniority and the seniority date.

(4) The registrar may, in any particular case, by notice require the applicant to file, within such period of not less than one month as the notice may specify, such documentary evidence as the registrar may require certifying, or verifying to the satisfaction of the registrar—

(a) the date referred to in paragraph (1)(b) in respect of the existing ITM application, existing request for EU extension or transformation application, the representation of the mark and the goods or services covered by that application; and

(b) in relation to a priority claim, the date of filing of the overseas application, the country or registering or competent authority, the representation of the mark and the goods or services covered by the overseas application.

Section 6 Claim to priority; sections 35 & 36

(1) Where a right to priority is claimed by reason of an application for protection of a trade mark duly filed in a Convention country under section 35 or in another country or territory in respect of which provision corresponding to that made by section 35 is made under section 36 (an “overseas application”), the application for registration under rule 5 shall specify—

(a) the number accorded to the overseas application by the registering or other competent authority of the relevant country;

(b) the country in which the overseas application was filed; and

(c) the date of filing.

(2) The registrar may, in any particular case, by notice require the applicant to file, within such period of not less than one month as the notice may specify, such documentary evidence as the registrar may require certifying, or verifying to the satisfaction of the registrar, the date of the filing of the overseas application, the country or registering or competent authority, the representation of the mark and the goods or services covered by the overseas application.

Section 7 Classification of goods and services; section 34

(1) The prescribed system of classification for the purposes of the registration of trade marks is the Nice Classification.

(2) When a trade mark is registered it shall be classified according to the version of the Nice Classification that had effect on the date of application for registration.

Section 8 Application may relate to more than one class and shall specify the class (Form TM3A)

(1) An application may be made in more than one class of the Nice Classification.

(2) Every application shall specify—

(a) the class in the Nice Classification to which it relates; and

(b) the goods or services which are appropriate to the class and they shall be described with sufficient clarity and precision to enable the registrar and other competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought and to allow them to be classified in the classes in the Nice Classification.

(2A) For the purposes of paragraph (2)(b) an application may specify the general indications included in the class headings of the Nice Classification or other general terms provided that they satisfy the requirement that the goods or services be described with sufficient clarity and precision referred to in paragraph (2)(b).

(2B) Where the specification contained in the application describes the goods or services using general terms, including the general indications included in the class headings of the Nice Classification, the application shall be treated as including only the goods or services clearly covered by the literal meaning of the term or indication.

(3) If the application relates to more than one class in the Nice Classification the specification contained in it shall set out the classes in consecutive numerical order and the specification of the goods or services shall be grouped accordingly.

(4) If the specification contained in the application lists items by reference to a class in the Nice Classification in which they do not fall, the applicant may request, by filing Form TM3A, that the application be amended to include the appropriate class for those items, and upon the payment of such class fee as may be appropriate the registrar shall amend the application accordingly.

(5) In this rule “ economic operators ” means any person or group of persons which, in the course of trade, manufactures, supplies, imports, exports or otherwise deals in goods or services.

Section 9 Determination of classification

(1) Where an application does not satisfy the requirements of rule 8(2) or (3), the registrar shall send notice to the applicant.

(2) A notice sent under paragraph (1) shall specify a period, of not less than one month, within which the applicant must satisfy those requirements.

(3) Where the applicant fails to satisfy the requirements of rule 8(2) before the expiry of the period specified under paragraph (2), the registrar must reject the application for registration, insofar as it relates to any goods or services which failed that requirement ....

(4) Where the applicant fails to satisfy the requirements of rule 8(3) before the expiry of the period specified under paragraph (2), the application for registration shall be treated as abandoned.

Section 10 Prohibition on registration of mark consisting of arms; section 4

Where having regard to matters coming to the notice of the registrar it appears to the registrar that a representation of any arms or insignia as is referred to in section 4(4) appears in a mark, the registrar shall refuse to accept an application for the registration of the mark unless satisfied that the consent of the person entitled to the arms has been obtained.

Section 11 Address for service

(1) For the purposes of any proceedings under the Act or these Rules, an address for service shall be filed by—

(a) an applicant for the registration of a trade mark;

(b) any person who opposes the registration of a trade mark in opposition proceedings;

(c) any person who applies for revocation, a declaration of invalidity or rectification under the Act;

(d) the proprietor of the registered trade mark who opposes such an application ;

(e) a proprietor of a comparable trade mark (EU) who sends a derogation notice to the registrar under rule 43A.

(2) The proprietor of a registered trade mark, or any person who has registered an interest in a registered trade mark, may file an address for service on Form TM33 or, in the case of an assignment of a registered trade mark, on Form TM16.

(3) Where a person has provided an address for service under paragraph (1) or (2), that person may substitute a new address for service by notifying the registrar on Form TM33.

(4) An address for service filed under this Rule shall be an address in the United Kingdom, Gibraltar or the Channel Islands.

Section 12 Failure to provide an address for service

(1) Where—

(a) a person has failed to file an address for service under rule 11(1); and

(b) the registrar has sufficient information enabling the registrar to contact that person,

the registrar shall direct that person to file an address for service.

(2) Where a direction has been given under paragraph (1), the person directed shall, before the end of the period of one month beginning immediately after the date of the direction, file an address for service.

(3) Paragraph (4) applies where—

(a) a direction was given under paragraph (1) and the period prescribed by paragraph (2) has expired; or

(b) the registrar had insufficient information to give a direction under paragraph (1),

and the person has failed to provide an address for service.

(4) Where this paragraph applies—

(a) in the case of an applicant for registration of a trade mark, the application shall be treated as withdrawn;

(b) in the case of a person opposing the registration of a trade mark, that person’s opposition shall be treated as withdrawn;

(c) in the case of a person applying for revocation, a declaration of invalidity or rectification, that person’s application shall be treated as withdrawn; and

(d) in the case of the proprietor opposing such an application, the proprietor shall be deemed to have withdrawn from the proceedings ;

(e) in the case of the proprietor who sends a derogation notice to the registrar, the registrar must proceed as if the proprietor had not sent a derogation notice.

(5) In this rule an “ address for service ” means an address which complies with the requirements of rule 11(4) ....

Section 13 Deficiencies in application; section 32

(1) Where an application for registration of a trade mark does not satisfy the requirements of section 32(2), (3) or (4) or rule 5(1), the registrar shall send notice to the applicant to remedy the deficiencies or, in the case of section 32(4), the default of payment.

(2) A notice sent under paragraph (1) shall specify a period, of not less than 14 days , within which the applicant must remedy the deficiencies or the default of payment.

(3) Where, before the expiry of the period specified under paragraph (2), the applicant—

(a) fails to remedy any deficiency notified to the applicant in respect of section 32(2), the application shall be deemed never to have been made; or

(b) fails to remedy any deficiency notified to the applicant in respect of section 32(3) or rule 5(1) or fails to make payment as required by section 32(4), the application shall be treated as abandoned.

Section 14 Notifying results of search

(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, the registrar shall notify this fact to—

(a) the applicant; and

(b) any relevant proprietor.

(2) In paragraph (1), “ relevant proprietor ” means 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 does not wish to be notified and who has notified the registrar to this effect.

(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 (aa) .

(3A) References in paragraph (2) to the proprietor of a trade mark also 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)(ab).

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(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(7) Rule 63 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 15 Compliance with request for expedited examination

Where the registrar receives a request for expedited examination under rule 5, the date on which the registrar shall be deemed to have notified the applicant whether or not it appears to the registrar that the requirements for registration are met shall be the date on which notice is sent to the applicant.

Section 16 Publication of application for registration; section 38(1)

An application which has been accepted for registration shall be published in the Journal.

Section 17 Opposition proceedings: filing of notice of opposition; section 38(2) (Form TM7)

(1) Subject to Rule 17A, any notice to the registrar of opposition to the registration, including the statement of the grounds of opposition, shall be filed on Form TM7.

(2) Unless paragraph (3) applies, the time prescribed for the purposes of section 38(2) shall be the period of two months beginning immediately after the date on which the application was published.

(3) This paragraph applies where a request for an extension of time for the filing of Form TM7 has been made on Form TM7A, before the expiry of the period referred to in paragraph (2) and where this paragraph applies, the time prescribed for the purposes of section 38(2) in relation to any person having filed a Form TM7A (or, in the case of a company, any subsidiary or holding company of that company or any other subsidiary of that holding company) shall be the period of three months beginning immediately after the date on which the application was published.

(4) Where a person makes a request for an extension of time under paragraph (3), Form TM7A shall be filed electronically using the filing system provided on the Office website or by such other means as the registrar may permit.

(5) Where the opposition is based on a trade mark which has been registered, there shall be included in the statement of the grounds of opposition a representation of that mark and—

(a) the details of the authority with which the mark is registered;

(b) the registration number of that mark;

(c) the goods and services in respect of which—

(i) that mark is registered, and

(ii) the opposition is based; and

(d) where the registration procedure for the mark was completed before the start of the period of five years ending with the date of application for registration or, if any, the date of priority , a statement detailing whether during the period referred to in section 6A(3)(a) the mark has been put to genuine use in relation to each of the goods and services in respect of which the opposition is based or whether there are proper reasons for non-use (for the purposes of rule 20 this is the “statement of use”).

(6) Where the opposition is based on a trade mark in respect of which an application for registration has been made, there shall be included in the statement of the grounds of opposition a representation of that mark and those matters set out in paragraph (5)(a) to (c), with references to registration being construed as references to the application for registration.

(7) Where the opposition is based on an unregistered trade mark or other sign which the person opposing the application claims to be protected by virtue of any rule of law (in particular, the law of passing off), there shall be included in the statement of the grounds of opposition a representation of that mark or sign and the goods and services in respect of which such protection is claimed.

(8) The registrar shall send a copy of Form TM7 to the applicant and the date upon which this is sent shall, for the purposes of rule 18, be the “notification date”.

(9) In this rule “ subsidiary ” and “ holding company ” have the same meaning as in the Companies Act 2006 .

Section 17A Opposition proceedings: filing of notice of fast track opposition; section 38(2) (Form TM7F))

(1) A notice to the registrar of fast track opposition to the registration, including the statement of the grounds of opposition, may be filed on Form TM7F.

(2) A notice of fast track opposition to the registration filed on Form TM7F and a notice of opposition to the registration filed on Form TM7 shall constitute alternatives and an opponent shall not maintain more than one opposition against the same trade mark application.

(3) Unless paragraph (4) applies, the time prescribed for the purposes of section 38(2) shall be the period of two months beginning immediately after the date on which the application was published.

(4) This paragraph applies where a request for an extension of time for the filing of Form TM7 or TM7F has been made on Form TM7A, before the expiry of the period referred to in paragraph (3) and where this paragraph applies, the time prescribed for the purposes of section 38(2) in relation to any person having filed a Form TM7A (or, in the case of a company, any subsidiary or holding company of that company or any other subsidiary of that holding company) shall be the period of three months beginning immediately after the date on which the application was published.

(5) Forms TM7F and TM7A shall be filed electronically using the filing system provided on the Office website or by such other means as the registrar may permit.

(6) There shall be included in the statement of the grounds of opposition a representation of that mark and—

(a) the details of the authority with which the mark is registered or protected;

(b) the registration number of that mark;

(c) the goods and services in respect of which—

(i) that mark is registered, and

(ii) the opposition is based;

(d) the date of completion of the registration procedure or of granting protection to an international trade mark (UK) ...; and

(e) where the registration or protection procedure for the mark was completed before the start of the period of five years ending with the date of application for registration or, if any, the date of priority , a statement detailing whether during the period referred to in section 6A(3)(a) the mark has been put to genuine use in relation to each of the goods and services in respect of which the opposition is based.

(7) Where the earlier mark is subject to proof of use under section 6A of the Act, the proof of use that the opponent wishes to rely upon shall be provided with the notice of fast track opposition.

(8) The registrar shall send a copy of Form TM7F to the applicant and the date upon which this is sent shall, for the purposes of rule 18, be the “notification date”.

(9) In this rule “ subsidiary ” and “ holding company ” have the same meaning as in the Companies Act 2006.

Section 18 Opposition proceedings: filing of counter-statement and cooling off period (Forms TM8, TM9c & TM9t)

(1) The applicant shall, within the relevant period, file a Form TM8, which shall include a counter-statement.

(2) Where the applicant fails to file a Form TM8 or counter-statement within the relevant period, the application for registration, insofar as it relates to the goods and services in respect of which the opposition is directed, shall, unless the registrar otherwise directs, be treated as abandoned.

(3) Unless either paragraph (4), (5) or (6) applies, the relevant period is the period of two months beginning immediately after the notification date .

(4) This paragraph applies where—

(a) the applicant and the person opposing the registration agree to an extension of time for the filing of Form TM8;

(b) within the period of two months beginning immediately after the notification date, either party files Form TM9c requesting an extension of time for the filing of Form TM8; and

(c) during the period beginning on the date Form TM9c was filed and ending nine months after the notification date, no notice to continue on Form TM9t is filed by the person opposing the registration and no request for a further extension of time for the filing of Form TM8 is filed on Form TM9e,

and where this paragraph applies the relevant period is the period of nine months beginning immediately after the notification date .

(5) This paragraph applies where—

(a) a request for an extension of time for the filing of Form TM8 has been filed on Form TM9c in accordance with paragraph (4)(b);

(b) during the period referred to in paragraph (4)(c), either party files Form TM9e requesting a further extension of time for the filing of Form TM8 which request includes a statement confirming that the parties are seeking to negotiate a settlement of the opposition proceedings; and

(c) the other party agrees to the further extension of time for the filing of Form TM8,

and where this paragraph applies the relevant period is the period of eighteen months beginning immediately after the notification date .

(6) This paragraph applies where—

(a) a request for an extension of time for the filing of Form TM8 has been filed on Form TM9c in accordance with paragraph (4)(b); and

(b) the person opposing the registration has filed a notice to continue on Form TM9t,

and where this paragraph applies the relevant period shall begin on the notification date and end one month after the date on which Form TM9t was filed or two months beginning immediately after the notification date, whichever is the later.

(7) The registrar shall send a copy of Form TM8 to the person opposing the registration.

Section 19 Opposition proceedings: preliminary indication (Form TM53)

(1) This rule applies if—

(a) the opposition or part of it is based on the relative grounds of refusal set out in section 5(1) or (2); and

(b) the registrar has not indicated to the parties that the registrar thinks that it is inappropriate for this rule to apply.

(1A) This rule shall not apply to fast track oppositions.

(2) After considering the statement of the grounds of opposition and the counter-statement the registrar shall send notice to the parties (“the preliminary indication”) stating whether it appears to the registrar that—

(a) registration of the mark should not be refused in respect of all or any of the goods and services listed in the application on the grounds set out in section 5(1) or (2); or

(b) registration of the mark should be refused in respect of all or any of the goods and services listed in the application on the grounds set out in section 5(1) or (2).

(3) The date upon which the preliminary indication is sent shall be the “indication date”.

(4) Where it appeared to the registrar under paragraph (2) that registration of the mark should not be refused in respect of all or any of the goods or services listed in the application on the grounds set out in section 5(1) or (2), the person opposing the registration shall, within one month of the indication date, file a notice of intention to proceed with the opposition based on those grounds by filing a Form TM53, otherwise that person’s opposition to the registration of the mark in relation to those goods or services on the grounds set in section 5(1) or (2) shall be deemed to have been withdrawn

(5) Where it appeared to the registrar under paragraph (2) that registration of the mark should be refused in respect of all or any of the goods or services listed in the application on the grounds set out in section 5(1) or (2), the applicant shall, within one month of the indication date, file a notice of intention to proceed on Form TM53, otherwise the applicant shall be deemed to have withdrawn the request to register the mark in respect of the goods or services for which the registrar indicated registration should be refused.

(6) A person who files a Form TM53 shall, at the same time, send a copy to all other parties to the proceedings.

(7) The registrar need not give reasons for the preliminary indication nor shall the preliminary indication be subject to appeal.

Section 20 Opposition proceedings: evidence rounds

(1) Where—

(a) Form TM53 has been filed by either party;

(b) the opposition or part of it is based on grounds other than those set out in section 5(1) or (2) and the applicant has filed a Form TM8; or

(c) the registrar has indicated to the parties that it is inappropriate for rule 19 to apply,

the registrar shall specify the periods within which evidence and submissions may be filed by the parties.

(2) Where—

(a) the opposition is based on an earlier trade mark of a kind falling within section 6(1)(c); or

(b) the opposition or part of it is based on grounds other than those set out in section 5(1) or (2); or

(c) the truth of a matter set out in the statement of use is either denied or not admitted by the applicant,

the person opposing the registration (“the opposer”) shall file evidence supporting the opposition.

(3) Where the opposer files no evidence under paragraph (2), the opposer shall be deemed to have withdrawn the opposition to the registration to the extent that it is based on—

(a) the matters in paragraph (2)(a) or (b); or

(b) an earlier trade mark which has been registered and which is the subject of the statement of use referred to in paragraph (2)(c).

(4) The registrar may, at any time, give leave to either party to file evidence upon such terms as the registrar thinks fit.

(5) Paragraphs (1)–(3) of this Rule shall not apply to fast track oppositions but paragraph (4) shall apply.

Section 21 Procedure for intervention

(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 the registrar 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 19, 20 and 62 to 73.

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

(a) where the opposition is based on an earlier trade mark, a licensee of that mark; and

(b) where the opposition is based on an earlier collective mark or certification mark, an authorised user of that mark.

Section 22 Observations on application to be sent to applicant; section 38(3)

The registrar shall send to the applicant a copy of any document containing observations made under section 38(3).

Section 23 Publication of registration; section 40

On the registration of the trade mark the registrar shall publish the registration on the Office website, specifying the date upon which the trade mark was entered in the register.

Section 24 Amendment of application; section 39 (Form TM21)

A request for an amendment of an application to correct an error or to change the name or address of the applicant or in respect of any amendment requested after publication of the application shall be made on Form TM21.

Section 25 Amendment of application after publication; section 39 (Form TM7)

(1) Where, pursuant to section 39, a request is made for amendment of an application which has been published in the Journal and the amendment affects the representation of the trade mark or the goods or services covered by the application, the amendment or a statement of the effect of the amendment shall also be published in the Journal.

(2) Any person claiming to be affected by the amendment may, within one month of the date on which the amendment or a statement of the effect of the amendment was published under paragraph (1), give notice to the registrar of objection to the amendment on Form TM7 which shall include a statement of the grounds of objection which shall, in particular, indicate why the amendment would not fall within section 39(2).

(3) The registrar shall send a copy of Form TM7 to the applicant and the procedure in rules 17, 18 and 20 shall apply to the proceedings relating to the objection to the amendment as they apply to proceedings relating to opposition to an application for registration, but with the following modifications—

(a) any reference to—

(i) an application for registration shall be construed as a reference to a request for amendment of an application,

(ii) the person opposing the registration shall be construed as a reference to the person objecting to the amendment of an application,

(iii) the opposition shall be construed as a reference to the objection;

(b) the relevant period, referred to in rule 18(1), shall for these purposes be the period of two months beginning immediately after the date upon which the registrar sent a copy of Form TM7 to the applicant; and

(c) rules 18(3) to (6), 20(2) and (3) shall not apply.

Section 26 Division of application; section 41 (Form TM12)

(1) At any time before registration an applicant may send to the registrar a request on Form TM12 to divide the specification of the application for registration (the original application) into two or more separate applications (divisional applications), indicating for each division the specification of goods or services.

(2) Each divisional application shall be treated as a separate application for registration with the same filing date as the original application.

(3) Where the request to divide an application is sent after publication of the application, any objections in respect of, or opposition to, the original application shall be taken to apply to each divisional application and shall be proceeded with accordingly.

(4) Upon division of an original application in respect of which notice has been given to the registrar of particulars relating to the grant of a licence, or a security interest or any right in or under it, the notice and the particulars shall be deemed to apply in relation to each of the applications into which the original application has been divided.

Section 26A Division of registration; section 41 (Form TM12R)

(1) The proprietor of a trade mark may send to the registrar a request on Form TM12R to divide the specification of the registration (the original registration) into two or more separate trade marks (divisional registrations), indicating for each divisional registration the specification of goods or services.

(2) Each divisional registration must be treated as a separate registration with the same date of registration as the original registration.

(3) No request under paragraph (1) may be granted in respect of the registration of a trade mark which is the subject of proceedings for its revocation or invalidation, where the request would introduce a division amongst the goods or services in respect of which the proceedings are directed.

(4) Where the original registration is subject to a disclaimer or limitation, the divisional registrations must also be restricted accordingly.

(5) Where the original registration has had registered in relation to it particulars relating to—

(a) the grant of a licence;

(b) a security interest;

(c) any right in or under that original registration; or

(d) any memorandum or statement of the effect of a memorandum;

the registrar must enter in the register the same particulars in relation to each of the divisional registrations into which the original registration has been divided.

Section 27 Merger of separate applications or registrations; section 41 (Form TM17)

(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(3) The proprietor of two or more registrations of a trade mark , the applications relating to which were filed on the same date, may request the registrar on Form TM17 to merge them into a single registration and the registrar shall, if satisfied that the registrations are in respect of the same trade mark, merge them into a single registration.

(3A) No application under paragraph (3) may be granted in respect of the registration of a trade mark which—

(a) is the subject of proceedings for its revocation or invalidation; or

(b) is the subject of an international registration within the meaning of article 2 of the Trade Marks (International Registration) Order 2008 which has not become independent of the trade mark as provided for in accordance with Article 6 of the Madrid Protocol.

(4) Where any registration of a trade mark to be merged under paragraph (3) is subject to a disclaimer or limitation, the merged registration shall also be restricted accordingly.

(5) Where any registration of a trade mark to be merged under paragraph (3) has had registered in relation to it particulars relating to the grant of a licence or a security interest or any right in or under it, or of any memorandum or statement of the effect of a memorandum, the registrar shall enter in the register the same particulars in relation to the merged registration.

(6) The date of registration of the merged registration shall, where the separate registrations bear different dates of registration, be the latest of those dates.

Section 28 Registration of a series of trade marks; section 41 (Form TM12)

(1) An application may be made in accordance with rule 5 for the registration of a series of trade marks in a single registration provided that the series comprises of no more than six trade marks.

(1A) Where an application for registration of a series of trade marks comprises three or more trade marks, the application shall be subject to the payment of the prescribed fee for each trade mark in excess of two trade marks.

(2) Following an application under paragraph (1) the registrar shall, if satisfied that the marks constitute a series, accept the application.

(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(5) At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series and, following such request, the registrar shall delete the mark accordingly.

(6) Where under paragraph (5) the registrar deletes a trade mark from an application for registration, the application, in so far as it relates to the deleted mark, shall be treated as withdrawn.

(7) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Section 29 Filing of regulations for collective and certification marks; Schedules 1 & 2 (Form TM35)

Where an application for registration of a collective or certification mark is filed, the applicant shall, within such period of not less than three months as the registrar may specify, file Form TM35 accompanied by a copy of the regulations governing the use of the mark.

Section 29A Filing of regulations for EU collective and certification marks; Schedule 2A, paragraph 4

Regulations governing the use of a comparable trade mark (EU) which is a collective mark or a certification mark and any translation required to be filed under paragraph 4 of Schedule 2A must be filed within a period of three months following the date of notice from the registrar.

Section 29B Filing of regulations for International collective and certification marks; Schedule 2B, paragraph 4

Regulations governing the use of a comparable trade mark (IR) which is a collective mark or a certification mark and any translation required to be filed under paragraph 4 of Schedule 2B must be filed within a period of three months following the date of notice from the registrar.

Section 30 Amendment of regulations of collective and certification marks; Schedule 1 paragraph 10 and Schedule 2 paragraph 11 (Forms TM36 & TM7)

(1) An application for the amendment of the regulations governing the use of a registered collective or certification mark shall be filed on Form TM36.

(2) Where it appears to be expedient to the registrar that the amended regulations should be made available to the public the registrar shall publish a notice in the Journal indicating where copies of the amended regulations may be inspected.

(3) Any person may, within two months of the date of publication of the notice under paragraph (2), make observations to the registrar on the amendments relating to the matters referred to in paragraph 6(1) of Schedule 1 to the Act in relation to a collective mark, or paragraph 7(1) of Schedule 2 to the Act in relation to a certification mark and the registrar shall send a copy of those observations to the proprietor.

(4) Any person may, within two months of the date on which the notice was published under paragraph (2), give notice to the registrar of opposition to the amendment on Form TM7 which shall include a statement of the grounds of opposition indicating why the amended regulations do not comply with the requirements of paragraph 6(1) of Schedule 1 to the Act, or, as the case may be, paragraph 7(1) of Schedule 2 to the Act.

(5) The registrar shall send a copy of Form TM7 to the proprietor and the procedure in rules 18 and 20 shall apply to the proceedings relating to the opposition to the amendment as they apply to proceedings relating to opposition to an application for registration, but with the following modifications—

(a) any reference to—

(i) the applicant shall be construed as a reference to the proprietor,

(ii) an application for registration shall be construed as a reference to an application for the amendment of the regulations,

(iii) the person opposing the registration shall be construed as a reference to the person opposing the amendment of the regulations;

(b) the relevant period, referred to in rule 18(1), shall for these purposes be the period of two months beginning immediately after the date upon which the registrar sent a copy of Form TM7 to the proprietor;

(c) rules 18(3) to (6), 20(2) and (3) shall not apply.

Section 31 Registration subject to disclaimer or limitation; section 13

Where the applicant for registration of a trade mark or the proprietor by notice in writing sent to the registrar—

(a) disclaims any right to the exclusive use of any specified element of the trade mark; or

(b) agrees that the rights conferred by the registration shall be subject to a specified territorial or other limitation,

the registrar shall make the appropriate entry in the register and publish such disclaimer or limitation.

Section 32 Alteration of registered trade marks; section 44 (Forms TM25 & TM7)

(1) The proprietor of a registered trade mark may request the registrar on Form TM25 for such alteration of the mark as is permitted under section 44 and following such request the registrar may require evidence as to the circumstances in which the application is made.

(2) Where, upon the request of the proprietor, the registrar proposes to allow such alteration, the registrar shall publish the mark as altered in the Journal.

(3) Any person claiming to be affected by the alteration may, within two months of the date on which the mark as altered was published under paragraph (2), give notice to the registrar of objection to the alteration on Form TM7 which shall include a statement of the grounds of objection.

(4) The registrar shall send a copy of Form TM7 to the proprietor and the procedure in rules 18 and 20 shall apply to the proceedings relating to the objection to the alteration as they apply to proceedings relating to opposition to an application for registration, but with the following modifications—

(a) any reference to—

(i) the applicant shall be construed as a reference to the proprietor,

(ii) an application for registration shall be construed as a reference to a request for alteration,

(iii) the person opposing the registration shall be construed as a reference to the person objecting to the alteration,

(iv) the opposition shall be construed as a reference to the objection;

(b) the relevant period, referred to in rule 18(1), shall for these purposes be the period of two months beginning immediately after the date upon which the registrar sent a copy of Form TM7 to the proprietor;

(c) rules 18(3) to (6), 20(2) and (3) shall not apply.

Section 33 Surrender of registered trade mark; section 45 (Forms TM22 & TM23)

(1) Subject to paragraph (2), the proprietor may surrender a registered trade mark, by sending notice to the registrar—

(a) on Form TM22 in respect of all the goods or services for which it is registered; or

(b) on Form TM23, in respect only of those goods or services specified by the proprietor in the notice.

(2) A notice under paragraph (1) shall be of no effect unless the proprietor in that notice—

(a) gives the name and address of any person having a registered interest in the mark; and

(b) certifies that any such person—

(i) has been sent not less than three months’ notice of the proprietor’s intention to surrender the mark, or

(ii) is not affected or if affected consents to the surrender.

(3) The registrar shall, upon the surrender taking effect, make the appropriate entry in the register and publish the date of surrender on the Office website.

Section 34 Reminder of renewal of registration; section 43

(1) Subject to paragraph (2) below, at least six months before the expiration of the last registration of a trade mark, the registrar shall ... send to the registered proprietor notice of the approaching expiration and inform the proprietor at the same time that the registration may be renewed in the manner described in rule 35.

(2) If it appears to the registrar that a trade mark may be registered under section 40 at any time within six months before or at any time on or after the date on which renewal would be due (by reference to the date of application for registration), the registrar shall be taken to have complied with paragraph (1) if the registrar sends to the applicant notice to that effect within one month following the date of actual registration.

(2A) The registrar is not subject to any liability by reason of any failure to notify the proprietor in accordance with paragraph (1) and no proceedings lie against any officer of the registrar in respect of any such failure.

Section 35 Renewal of registration; section 43 (Form TM11)

Renewal of registration shall be effected by filing a request for renewal on Form TM11 at any time within the period of six months ending on the date of the expiration of the registration or following receipt of a notice from the registrar pursuant to rule 34(1) .

Section 36 Delayed renewal and removal of registration; section 43 (Form TM11)

(1) If on the expiration of the last registration of a trade mark the renewal fee has not been paid, the registrar shall publish that fact.

(2) If, within six months from the date of the expiration of the last registration, a request for renewal is filed on Form TM11 accompanied by the appropriate renewal fee and additional renewal fee, the registrar shall renew the registration without removing the mark from the register.

(3) Where no request for renewal is filed, the registrar shall, subject to rule 37, remove the mark from the register.

(4) Where a mark is due to be registered after the date on which it is due for renewal (by reference to the date of application for registration), the request for renewal shall be filed together with the renewal fee and additional renewal fee within six months after the date of actual registration.

(5) The removal of the registration of a trade mark shall be published on the Office website.

Section 37 Restoration of registration; section 43 (Form TM13)

(1) Where the registrar has removed the mark from the register for failure to renew its registration in accordance with rule 36, the registrar may, following receipt of a request filed on Form TM13 within six months of the date of the removal of the mark accompanied by the appropriate renewal fee and appropriate restoration fee —

(a) restore the mark to the register; and

(b) renew its registration,

if the registrar is satisfied that the failure to renew was unintentional .

(1A) Where a mark is restored to the register, the proprietor of the mark may not bring an action for infringement against a third party who, in good faith, has put goods on the market or supplied services under a sign which is identical with or similar to the mark in respect of the period beginning with the date of expiration of the registration and ending on the date its restoration is published in accordance with paragraph (2).

(2) The restoration of the registration, including the date of restoration, shall be published on the Office website.

Section 37A Restoration of a European Union trade mark; Schedule 2A, paragraph 28

A request for the registration of a comparable trade mark (EU) following the restoration of a European Union trade mark under paragraph 28 of Schedule 2A must include—

(a) a representation of the European Union trade mark;

(b) the registration number of that mark;

(c) the name and address of the proprietor;

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

(e) the priority date (if any) accorded pursuant to a claim of priority filed in respect of that mark pursuant to the European Union Trade Mark Regulation and the information specified in rule 6(1)(a) to (c) in respect of that priority claim;

(f) the number of the registered trade mark or international trade mark (UK) from which that mark claimed seniority (if any) and the seniority date.

Section 38 Application for revocation (on the grounds of non-use); section 46(1)(a) or (b) (Forms TM8(N) & TM26(N))

(1) An application to the registrar for revocation of a trade mark under section 46, on the grounds set out in section 46(1)(a) or (b), shall be made on Form TM26(N).

(2) The registrar shall send a copy of Form TM26(N) to the proprietor.

(3) The proprietor shall, within two months of the date on which he was sent a copy of Form TM26(N) by the registrar, file a Form TM8(N), which shall include a counter-statement.

(4) Where the proprietor fails to file evidence of use of the mark or evidence supporting the reasons for non-use of the mark within the period specified in paragraph (3) above the registrar shall specify a further period of not less than two months within which the evidence shall be filed.

(5) The registrar shall send a copy of Form TM8(N) and any evidence of use, or evidence supporting reasons for non-use, filed by the proprietor to the applicant.

(6) Where the proprietor fails to file a Form TM8(N) within the period specified in paragraph (3) the registration of the mark shall, unless the registrar directs otherwise, be revoked.

(7) Where the proprietor fails to file evidence within the period specified under paragraph (3) or any further period specified under paragraph (4), the registrar may treat the proprietor as not opposing the application and the registration of the mark shall, unless the registrar directs otherwise, be revoked.

(8) The registrar may, at any time, give leave to either party to file evidence upon such terms as the registrar thinks fit.

Section 39 Application for revocation (on grounds other than non-use); section 46(1)(c) or (d) (Forms TM8 & TM26(O))

(1) An application to the registrar for revocation of a trade mark under section 46, on the grounds set out in section 46(1)(c) or (d), shall be made on Form TM26(O) and shall include a statement of the grounds on which the application is made and be accompanied by a statement of truth.

(2) The registrar shall send a copy of Form TM26(O) and the statement of the grounds on which the application is made to the proprietor.

(3) The proprietor shall, within two months of the date on which he was sent a copy of Form TM26(O) and the statement by the registrar, file a Form TM8 which shall include a counter-statement, otherwise the registrar may treat the proprietor as not opposing the application and the registration of the mark shall, unless the registrar directs otherwise, be revoked.

(4) The registrar shall send a copy of Form TM8 to the applicant.

Section 40 Application for revocation (on grounds other than non-use): evidence rounds

(1) Where the proprietor has filed a Form TM8, the registrar shall specify the periods within which further evidence may be filed by the parties.

(2) Where the applicant files no further evidence in support of the application the applicant, shall, unless the registrar otherwise directs, be deemed to have withdrawn the application.

(3) The registrar shall notify the proprietor of any direction given under paragraph (2).

(4) The registrar may, at any time give leave to either party to file evidence upon such terms as the registrar thinks fit.