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Statutory Instrument 2000 No. 136The Trade Marks Rules 2000(The document as of February, 2008) STATUTORY INSTRUMENTS2000 No. 136TRADE MARKSThe Trade Marks Rules 2000
The Secretary of State, in exercise of the powers conferred upon him by sections 4(4), 13(2), 25(1), (5) and (6), 34(1), 35(5), 38(1) and (2), 39(3), 40(4), 41(1) and (3), 43(2), (3), (5) and (6), 44(3), 45(2), 63(2) and (3), 64(4), 65, 66(2), 67(1) and (2), 68(1) and (3), 69, 76(1), 78, 80(3), 81, 82 and 88 of, paragraph 6(2) of Schedule 1 to, paragraph 7(2) of Schedule 2 to, and paragraphs 10(2), 12 and 14(5) of Schedule 3 to, the Trade Marks Act 1994[1], after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 1992[2], hereby makes the following Rules:- Citation and commencement 1.These Rules may be cited as the Trade Marks Rules 2000 and shall come into force on 17th February 2000. Interpretation 2. - (1) In these Rules, unless the context otherwise requires-
(2) In these Rules, except where otherwise indicated, a reference to a section is a reference to that section in the Act, a reference to a rule is a reference to that rule in these Rules, a reference to a Schedule is a reference to that Schedule to these Rules and a reference to a form is a reference to that form as published by the registrar under rule 3 below. Applications for registration; s. 32 (Form TM3) 5. - (1) An application for the registration of a trade mark shall be filed on Form TM3 and shall be subject to the payment of the application fee and such class fees as may be appropriate. (2) An application for registration of a three-dimensional mark shall not be treated as such unless the application contains a statement to that effect. (3) Where colour is claimed as an element of the trade mark, it shall not be treated as such unless the application contains a statement to that effect and specifies the colour. (4) An application to register a trade mark which is or includes a word shall be treated as an application to register that word in the graphical form shown in the application, unless the applicant includes a statement that the application is for registration of the word without regard to its graphical form. Claim to priority; ss. 35 & 36 6. - (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, particulars of that claim shall be included in the application for registration under rule 5 above and, where no certificate as is referred to in paragraph (2) below is filed with the application, such particulars shall include the country or countries and the date or dates of filing. (2) Unless it has been filed at the time of the filing of the application for registration, there shall be filed, within three months of the filing of the application under rule 5, a certificate by the registering or other competent authority of that country certifying, or verifying to the satisfaction of the registrar, the date of the filing of the application, the country or registering or competent authority, the representation of the mark, and the goods or services covered by the application. Classification of goods and services; s. 34 7. - (1) For the purposes of trade mark registrations in respect of goods dated before 27th July 1938, goods are classified in accordance with Schedule 2 to these Rules, except where a specification has been converted, whether under the old law or under rule 46 below, to Schedule 3. (2) For the purposes of trade mark registrations in respect of goods dated on or after 27th July 1938 and for the purposes of any registrations dated before that date in respect of which the specifications were converted under the old law, and for the purposes of trade mark registrations in respect of services, goods and services are classified in accordance with Schedule 3, which sets out the current version of the classes of the International Classification of Goods and Services[4]. Application may relate to more than one class and shall specify the class (Form TM3A) 8. - (1) An application may be made in more than one class of Schedule 3. (2) Every application shall specify the class in Schedule 3 to which it relates and shall list the goods or services appropriate to that class. (3) If the application relates to more than one class in Schedule 3 the specification contained in it shall set out the classes in consecutive numerical order. (4) If the specification contained in the application lists items by reference to a class in Schedule 3 in which they do not fall, the applicant may request, by filing Form TM3A, that his 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 his application accordingly. Prohibition on registration of mark consisting of arms; s. 4 9.Where 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. Address for service (Form TM33) 10. - (1) For the purposes of any proceedings before the registrar under these Rules or any appeal from a decision of the registrar under the Act or these Rules, an address for service in the United Kingdom shall be filed by-
(b) every person opposing an application for registration of a trade mark; (c) every applicant applying to the registrar under section 46 for the revocation of the registration of a trade mark, under section 47 for the invalidation of the registration of a trade mark, or under section 64 for the rectification of the register; (d) every person granted leave to intervene under rule 35 (the intervener); and (e) every proprietor of a registered trade mark which is the subject of an application to the registrar for the revocation, invalidation or rectification of the registration of the mark. (2) The address for service of an applicant for registration of a trade mark shall upon registration of the mark be deemed to be the address for service of the registered proprietor, subject to any filing to the contrary under paragraph (1) above or rule 44(2) below.
(b) in the case of a person as is referred to in sub-paragraph (b) or (d), he shall be deemed to have withdrawn from the proceedings; and (c) in the case of the proprietor referred to in sub-paragraph (e), he shall not be permitted to take part in any proceedings. Deficiencies in application; s. 32
(b) fails to remedy any deficiency notified to him in respect of section 32(3) or rule 5(1) or 8(2) or fails to make payment as required by section 32(4) the application shall be treated as abandoned. Publication of application for registration; s. 38(1)
(b) if registered, the classes in respect of which that mark is registered; and (c) the goods and services in respect of which that mark is registered, or if not registered, used; and (d) where the earlier mark is defined in section 6(1)(a) and (b),
(ii) except in the case of a mark the subject of an application not yet published, the number of the publication in which it was published. (3) Subject to paragraphs (4) and (5) below, within three months of the date on which a copy of the notice and statement is sent by the registrar to the applicant, the applicant may file a counter-statement, in conjunction with notice of the same on Form TM8; where such a notice and counter-statement are filed within the prescribed period, the registrar shall send a copy of the Form TM8 and the counter-statement to the person opposing the application. Amendment of application; s. 39 (Form TM21) 17.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. Amendment of application after publication; s. 39 (Form TM7) 18. - (1) Where, pursuant to section 39, a request is made for amendment of an application which has been published 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. (2) Notice of opposition to the amendment shall be filed on Form TM7 within one month of the date on which the application as amended was published under paragraph (1) above, and shall include a statement of the grounds of objection and, in particular, how the amendments would be contrary to section 39(2). (3) The provisions of rule 13 shall apply to proceedings relating to the opposition to the amendment of the application as they apply to proceedings relating to opposition to the registration of a trade mark. Division of application; s. 41 (Form TM12) 19. - (1) At any time before registration an applicant may send to the registrar a request on Form TM12 for a division of his application for registration (the original application) into two or more separate applications (divisional applications), indicating for each division the specification of goods or services; each divisional application shall be treated as a separate application for registration with the same filing date as the original application. (2) 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. (3) 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. Merger of separate applications or registrations; s. 41 (Form TM17) 20. - (1) An applicant who has made separate applications for registration of a mark may, at any time before preparations for the publication of any of the applications have been completed by the Office, request the registrar on Form TM17 to merge the separate applications into a single application. (2) The registrar shall, if satisfied that all the applications which are the subject of the request for merger-
(b) bear the same date of application, and (c) are, at the time of the request, in the name of the same person, merge them into a single application. (3) The proprietor of two or more registrations of a trade mark 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. Filing of regulations for collective and certification marks; Schs. 1 & 2 (Form TM35) 22.Within nine months of the date of the application for the registration of a collective or certification mark, the applicant shall file Form TM35 accompanied by a copy of the regulations governing the use of the mark. Amendment of regulations of collective and certification marks; Sch. 1 para. 10 and Sch. 2 para. 11 (Forms TM36 & TM7) 23. - (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 expedient to the registrar that the amended regulations should be made available to the public she shall publish a notice indicating where copies of the amended regulations may be inspected. (3) Any person may, within three months of the date of publication of the notice under paragraph (2) above, make observations to the registrar on the amendments relating to the matters referred to in paragraph 6(1) of Schedule 1 in relation to a collective mark, or paragraph 7(1) of Schedule 2 in relation to a certification mark; the registrar shall send a copy thereof to the proprietor. (4) Any person may, within three months of the date of publication of the notice, file notice on Form TM7 to the registrar of opposition to the amendment, accompanied by 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 or, as the case may be, paragraph 7(1) of Schedule 2. (5) The registrar shall send a copy of the notice and the statement to the proprietor and thereafter the procedure in paragraphs (3) and (6)-(12) of rule 13 shall apply to the proceedings as they apply to proceedings relating to opposition to an application for registration. Registration subject to disclaimer or limitation; s. 13 24.Where the applicant for registration of a trade mark or the proprietor by notice in writing sent to the registrar-
(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.
(b) on Form TM23, in respect only of those goods or services specified by him in the notice. (2) A notice under paragraph (1) above shall be of no effect unless the proprietor in that notice-
(b) certifies that any such person-
(ii) is not affected or if affected consents thereto. (3) The registrar shall, upon the surrender taking effect, make the appropriate entry in the register and publish the same. Reminder of renewal of registration; s. 43 27. - (1) Subject to paragraph (2) below, at any time not earlier than six months nor later than one month before the expiration of the last registration of a trade mark, the registrar shall (except where renewal has already been effected under rule 28 below) send to the registered proprietor notice of the approaching expiration and inform him at the same time that the registration may be renewed in the manner described in rule 28 below. (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 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 she sends to the applicant notice thereof within one month following the date of actual registration. Renewal of registration; s. 43 (Form TM11) 28.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. Delayed renewal and removal of registration; s. 43 (Form TM11) 29. - (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; and if, within six months from the date of the expiration of the last registration, the 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. (2) Where no request for renewal is filed as aforesaid, the registrar shall, subject to rule 30 below, remove the mark from the register. (3) 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. (4) The removal of the registration of a trade mark shall be published. Restoration of registration; s. 43 (Form TM13) 30. - (1) Where the registrar has removed the mark from the register for failure to renew its registration in accordance with rule 29 above, she may, upon 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, restore the mark to the register and renew its registration if, having regard to the circumstances of the failure to renew, she is satisfied that it is just to do so. (2) The restoration of the registration shall be published, with the date of restoration shown. Procedure on application for revocation (on the grounds of non-use); s. 46(1)(a) and (b) (Forms TM8 & TM26(N)) 31. - (1) An application to the registrar for revocation under section 46(1)(a) or (b) of the registration of a trade mark shall be made on Form TM26(N) together with a statement of the grounds on which the application is made; the registrar shall send a copy of the application and the statement to the proprietor. (2) Within three months of the date on which a copy of the notice and statement is sent by the registrar to the proprietor, the proprietor may file a counter-statement, in conjunction with notice of the same on Form TM8 and either:
(b) reasons for non-use of the mark.
(3) Where a counter-statement, in conjunction with a notice of the same, on Form TM8, and evidence of use of the mark or reasons for non-use of the mark, are not filed by the proprietor within the period prescribed by paragraph (2), the registrar may treat his opposition to the application as having been withdrawn.
(b) any evidence to support those grounds. (2) Where any application is made under paragraph (1) by a person other than the proprietor of the registered trade mark the registrar-
(b) may give such direction as she thinks fit with regard to the filing of subsequent evidence upon such terms as she may think fit. (3) Upon completion of the evidence the registrar shall request the parties to state by notice to her in writing whether they wish to be heard; if any party requests to be heard the registrar shall send to the parties notice of a date for the hearing. Case Management Conference; s. 78 36.At any stage of any proceedings before her, the registrar may direct that the parties to the proceedings attend a case management conference where they shall have an opportunity to be heard with regard to the future conduct of the proceedings, and in particular with regard to the proposed exercise of any of the registrar's powers. The registrar shall give the parties at least fourteen days notice of the date of the case management conference. Pre-hearing review; s. 78 37.Before hearing any party that desires to be heard in any proceedings before her, the registrar may direct that the parties to the proceedings attend a pre-hearing review at which she may give such directions as to the conduct of the hearing as she may think fit. The registrar shall give the parties at least fourteen days notice of the date of the pre-hearing review. Form of register; s. 63(1) 38.The register required to be maintained by the registrar under section 63(1) need not be kept in documentary form. Entry in register of particulars of registered trade marks; s. 63(2) (Form TM24) 39.In addition to the entries in the register of registered trade marks required to be made by section 63(2)(a), there shall be entered in the register in respect of each trade mark registered therein the following particulars-
(b) the actual date of registration (that is to say, the date of the entry in the register); (c) the priority date (if any) to be accorded pursuant to a claim to a right to priority made under section 35 or 36; (d) the name and address of the proprietor; (e) the address for service (if any) as furnished pursuant to rule 10 above; (f) any disclaimer or limitation of rights under section 13(1)(a) or (b); (g) any memorandum or statement of the effect of any memorandum relating to a trade mark of which the registrar has been notified on Form TM24; (h) the goods or services in respect of which the mark is registered; (i) where the mark is a collective or certification mark, that fact; (j) where the mark is registered pursuant to section 5(5) with the consent of the proprietor of an earlier trade mark or other earlier right, that fact; (k) where the mark is registered pursuant to a transformation application,
(b) either:
(ii) the date of recordal of the request for extension to the United Kingdom of the international registration under Article 3ter, as the case may be, of the Madrid Protocol; (l) where the mark arises from the conversion of a Community trade mark or an application for a Community trade mark, the number of any other registered trade mark from which the Community trade mark or the application for a Community trade mark claimed seniority and the earliest seniority date. Entry in register of particulars of registrable transactions; s. 25
(ii) the date of the assignment, and (iii) where the assignment is in respect of any right in the mark, a description of the right assigned; (b) in the case of the grant of a licence under a registered trade mark-
(ii) where the licence is an exclusive licence, that fact, (iii) where the licence is limited, a description of the limitation, and (iv) the duration of the licence if the same is or is ascertainable as a definite period; (c) in the case of the grant of any security interest over a registered trade mark or any right in or under it-
(ii) the nature of the interest (whether fixed or floating), and (iii) the extent of the security and the right in or under the mark secured; (d) in the case of the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it-
(ii) the date of the assent; and (e) in the case of a court or other competent authority transferring a registered trade mark or any right in or under it-
(ii) the date of the order, and (iii) where the transfer is in respect of a right in the mark, a description of the right transferred; and, in each case, there shall be entered the date on which the entry is made. Application to register or give notice of transaction; ss. 25 & 27(3) (Forms TM16, TM24, TM50 & TM51)
(b) relating to a grant of a licence, on form TM50; (c) relating to an amendment to, or termination of a licence, on form TM51; (d) relating to the grant, amendment or termination of any security interest, on form TM24; and (e) relating to the making by personal representatives of an assent or to an order of a court or other competent authority, on form TM24. (2) An application under paragraph (1) above shall-
(b) where the transaction falls within sub-paragraphs (b), (c) or (d) of paragraph (1) above, be signed by or on behalf of the grantor of the licence or security interest; or be accompanied by such documentary evidence as suffices to establish the transaction.
(b) where any person appears to her to be affected by the removal, she shall send notice of her intention to that person. (2) Within three months of the date on which her intention to remove the matter is published, or notice of her intention is sent, as the case may be-
(b) the person to whom a notice is sent under paragraph (1)(b) above may file, in writing-
(ii) a request to have his objections heard orally; and where such opposition or objections are made, rule 54 shall apply. (3) If the registrar is satisfied after considering any objections or opposition to the removal that the matter has not ceased to have effect, she shall not remove it. Change of classification; ss. 65(2) & 76(1) 46. - (1) Subject to section 65(3), the registrar may-
(b) consequent upon an amendment of the International Classification of Goods and Services referred to in rule 7(2) above, make such amendments to entries on the register as she considers necessary for the purposes of reclassifying the specification of the registered trade mark.
(b) if no written objections are received within the period specified the registrar will publish the proposals and he will not be entitled to make any objections thereto upon such publication. (3) If the proprietor makes no written objections within the period specified in paragraph (2)(a) above or at any time before the expiration of that period gives the registrar written notice of his intention not to make any objections, the registrar shall as soon as practicable after the expiration of that period or upon receipt of the notice publish the proposals. Request for information; s. 67(1) (Form TM31C) 48.A request for information relating to an application for registration or to a registered trade mark shall be made on Form TM31C. Information available before publication; section 67(2) 49. - (1) Before publication of an application for registration the registrar shall make available for inspection by the public the application and any amendments made to it and any particulars contained in a notice given to the registrar under rule 41. (2) Nothing in section 67(2) relating to publication of information shall be construed as preventing the publication of decisions on cases relating to trade marks decided by the registrar. Inspection of documents; ss. 67 & 76(1) 50. - (1) Subject to paragraphs (2) and (3) below, the registrar shall permit all documents filed or kept at the Office in relation to a registered mark or, where an application for the registration of a trade mark has been published, in relation to that application, to be inspected. (2) The registrar shall not be obliged to permit the inspection of any such document as is mentioned in paragraph (1) above until she has completed any procedure, or the stage in the procedure which is relevant to the document in question, which she is required or permitted to carry out under the Act or these Rules. (3) The right of inspection under paragraph (1) above does not apply to-
(b) any document prepared in the Office solely for use therein; (c) any document sent to the Office, whether at its request or otherwise, for inspection and subsequent return to the sender; (d) any request for information under rule 48 above; (e) any document issued by the Office which the registrar considers should be treated as confidential; (f) any document in respect of which the registrar issues directions under rule 51 below that it be treated as confidential. (4) Nothing in paragraph (1) shall be construed as imposing on the registrar any duty of making available for public inspection-
(b) any document or information filed at or sent to or by the Office before 31st October 1994, or (c) any document or information filed at or sent to or by the Office after 31st October 1994 relating to an application for registration of a trade mark under the Trade Marks Act 1938. (5) No appeal shall lie from a decision of the registrar under paragraph (4) above not to make any document or part of a document available for public inspection. Proof of authorisation of agent may be required; s. 82 (Form TM33) 52. - (1) Where an agent has been authorised under section 82, the registrar may in any particular case require the personal signature or presence of the agent or the person authorising him to act as agent. (2) Where after a person has become a party to proceedings before the registrar, he appoints an agent for the first time or appoints one agent in substitution for another, the newly appointed agent shall file Form TM33, and any act required or authorised by the Act in connection with the registration of a trade mark or any procedure relating to a trade mark may not be done by or to the newly appointed agent until on or after the date on which he files that form. (3) The registrar may by notice in writing sent to an agent require him to produce evidence of his authority. Registrar may refuse to deal with certain agents; s. 88 53.The registrar may refuse to recognise as agent in respect of any business under the Act-
(b) an individual whose name has been erased from and not restored to, or who is suspended from, the register of trade mark agents on the ground of misconduct; (c) a person who is found by the Secretary of State to have been guilty of such conduct as would, in the case of an individual registered in that register, render him liable to have his name erased from it on the ground of misconduct; (d) a partnership or body corporate of which one of the partners or directors is a person whom the registrar could refuse to recognise under paragraph (a), (b) or (c) above. Decisions of registrar to be taken after hearing
(b) in any other part of Her Majesty's dominions or in the Republic of Ireland, before any court, judge, justice of the peace or any officer authorised by law to administer an oath there for the purpose of any legal proceedings; and (c) elsewhere, before a commissioner for oaths, notary public, judge or magistrate. (2) Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised by paragraph (1) above to take a declaration may be admitted by the registrar without proof of the genuineness of the seal or signature, or of the official character of the person or his authority to take the declaration. Appeal to person appointed; s. 76 63. - (1) Notice of appeal to the person appointed under section 76 shall be sent to the registrar within 28 days of the date of the registrar's decision which is the subject of the appeal accompanied by a statement in writing of the appellant's grounds of appeal and of his case in support of the appeal. (2) The registrar shall send the notice and the statement to the person appointed. (3) Where any person other than the appellant was a party to the proceedings before the registrar in which the decision appealed against was made, the registrar shall send to that person a copy of the notice and the statement. Determination whether appeal should be referred to court; s. 76(3) 64. - (1) Within 28 days of the date on which the notice of appeal is sent by the registrar under rule 63(3) above;
(b) any person who was a party to the proceedings in which the decision appealed against was made, may request that the person appointed refer the appeal to the court.
(b) in any other case, to the registrar and to each person who was a party to those proceedings. (2) The provisions of rule 54(2) and rules 55 to 61 shall apply to the person appointed and to proceedings before the person appointed as they apply to the registrar and to proceedings before the registrar. Correction of irregularities of procedure 66.Subject to rule 68 below, any irregularity in procedure in or before the Office or the registrar, may be rectified on such terms as the registrar may direct. Calculation of times and periods 67. - (1) Where, on any day, there is-
(b) an event or circumstances causing an interruption in the normal operation of the Office, the registrar may certify the day as being one on which there is an " interruption" and, where any period of time specified in the Act or these Rules for the giving, making or filing of any notice, application or other document expires on a day so certified the period shall be extended to the first day next following (not being an excluded day) which is not so certified.
(b) specified by the registrar for doing any act or taking any proceedings, subject to paragraph (2) below, may, at the written request of the person or party concerned, or on the initiative of the registrar, be extended by the registrar as she thinks fit and upon such terms as she may direct.
(b) is filed after the application has been published under rule 12 above the request shall be on Form TM9 and shall in any other case be on that form if the registrar so directs. (3) The rules excepted from paragraph (1) above are rule 10(6) (failure to file address for service), rule 11 (deficiencies in application), rule 13(1) (time for filing opposition), rules 13(3) and 13(5) (time for filing counter-statement), rule 13(4) (cooling off period) save as provided for in that rule, rule 23(4) (time for filing opposition), rule 25(3) (time for filing opposition), rule 29 (delayed renewal), rule 30 (restoration of registration), rule 31(2) (time for filing counter-statement), rule 32(2) (time for filing counter-statement), rule 33(2) (time for filing counter-statement), and rule 47 (time for filing opposition).
(b) is attributable wholly or in part to an error, default or omission on the part of the Office or the registrar and which it appears to her should be rectified, she may direct that the time or period in question shall be altered in such manner as she may specify upon such terms as she may direct. Filing of documents by electronic means 69.The registrar may, at her discretion, permit as an alternative to the sending by post or delivery of the application, notice or other document in legible form the filing of the application, notice or other document by electronic means subject to such terms or conditions as she may specify either generally by published notice or in any particular case by written notice to the person desiring to file any such documents by such means. Directions on hours of business; s. 80 70.Any directions given by the registrar under section 80 specifying the hours of business of the Office and business days of the Office shall be published and posted in the Office. Trade Marks Journal; s. 81 71.The registrar shall publish a journal, entitled "The Trade Marks Journal ", containing particulars of any application for the registration of a trade mark (including a representation of the mark), such information as is required to be published under these Rules and such other information as the registrar thinks fit. Translations 72. - (1) Where any document or part thereof which is in a language other than English is filed or sent to the registrar in pursuance of the Act or these Rules, the registrar may require that there be furnished a translation into English of the document or that part, verified to the satisfaction of the registrar as corresponding to the original text. (2) The registrar may refuse to accept any translation which is in her opinion inaccurate and thereupon another translation of the document in question verified as aforesaid shall be furnished. Pending applications for registration; Sch. 3, para. 10(2) 73.Where an application for registration of a mark made under the old law is advertised on or after 31st October 1994, the period within which notice of opposition may be filed shall be three months from the date of advertisement, and such period shall not be extendible. Revocation of previous Rules 74. - (1) The Rules specified in Schedule 1 are hereby revoked. (2) Except as provided by rule 73 above, where-
(b) the corresponding time or period prescribed by these Rules would have expired or would expire earlier, the time or period prescribed by those Rules and not by these Rules shall apply to that act or proceeding.
Class 1 Chemical substances used in manufactures, photography, or philosophical research, and anti-corrosives. Class 2 Chemical substances used for agricultural, horticultural, veterinary and sanitary purposes. Class 3 Chemical substances prepared for use in medicine and pharmacy. Class 4 Raw, or partly prepared, vegetable, animal, and mineral substances used in manufactures, not included in other Classes. Class 5 Unwrought and partly wrought metals used in manufacture. Class 6 Machinery of all kinds, and parts of machinery, except agricultural and horticultural machines and their parts included in Class 7. Class 7 Agricultural and horticultural machinery, and parts of such machinery. Class 8 Philosophical instruments, scientific instruments, and apparatus for useful purposes; instruments and apparatus for teaching. Class 9 Musical instruments. Class 10 Horological instruments. Class 11 Instruments, apparatus, and contrivances, not medicated, for surgical or curative purposes, or in relation to the health of men or animals. Class 12 Cutlery and edge tools. Class 13 Metal goods, not included in other Classes. Class 14 Goods of precious metals and jewellery, and imitations of such goods and jewellery. Class 15 Glass. Class 16 Porcelain and earthenware. Class 17 Manufactures from mineral and other substances for building or decoration. Class 18 Engineering, architectural, and building contrivances. Class 19 Arms, ammunition, and stores, not included in Class 20. Class 20 Explosive substances. Class 21 Naval architectural contrivances and naval equipments not included in other Classes. Class 22 Carriages. Class 23 (a) Cotton yarn; (b) Sewing cotton. Class 24 Cotton piece goods. Class 25 Cotton goods not included in other Classes. Class 26 Linen and hemp yarn and thread. Class 27 Linen and hemp piece goods. Class 28 Linen and hemp goods not included in other Classes. Class 29 Jute yarns and tissues, and other articles made of jute, not included in other Classes. Class 30 Silk, spun, thrown, or sewing. Class 31 Silk piece goods. Class 32 Silk goods not included in other Classes. Class 33 Yarns of wool, worsted, or hair. Class 34 Cloths and stuffs of wool, worsted, or hair. Class 35 Woollen and worsted and hair goods, not included in other Classes. Class 36 Carpets, floor-cloth, and oil-cloth. Class 37 Leather, skins unwrought and wrought, and articles made of leather not included in other Classes. Class 38 Articles of clothing. Class 39 Paper (except paper hangings), stationery, and bookbinding. Class 40 Goods manufactured from india-rubber and gutta-percha not included in other Classes. Class 41 Furniture and upholstery. Class 42 Substances used as food or as ingredients in food. Class 43 Fermented liquors and spirits. Class 44 Mineral and aerated waters, natural and artificial, including ginger beer. Class 45 Tobacco, whether manufactured or unmanufactured. Class 46 Seeds for agricultural and horticultural purposes. Class 47 Candles, common soap, detergents; illuminating, heating, or lubricating oils; matches; and starch, blue, and other preparations for laundry purposes. Class 48 Perfumery (including toilet articles, preparations for the teeth and hair, and perfumed soap). Class 49 Games of all kinds and sporting articles not included in other Classes. Class 50 Miscellaneous:- (1) Goods manufactured from ivory, bone or wood, not included in other Classes. (2) Goods manufactured from straw or grass, not included in other Classes. (3) Goods manufactured from animal and vegetable substances, not included in other Classes. (4) Tobacco pipes. (5) Umbrellas, walking sticks, brushes and combs for the hair. (6) Furniture cream, plate powder. (7) Tarpaulins, tents, rick-cloths, rope (jute or hemp), twine. (8) Buttons of all kinds other than of precious metal or imitations thereof. (9) Packing and hose. (10) Other goods not included in the foregoing Classes. Class 1 Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. Class 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. Class 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. Class 4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks. Class 5 Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. Class 6 Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores. Class 7 Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements (other than hand operated); incubators for eggs. Class 8 Hand tools and implements (hand operated); cutlery; side arms; razors. Class 9 Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus. Class 10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials. Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. Class 12 Vehicles; apparatus for locomotion by land, air or water. Class 13 Firearms; ammunition and projectiles; explosives; fireworks. Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments. Class 15 Musical instruments. Class 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks. Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal. Class 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. Class 19 Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal. Class 20 Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. Class 21 Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes. Class 22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials. Class 23 Yarns and threads, for textile use. Class 24 Textiles and textile goods, not included in other classes; bed and table covers. Class 25 Clothing, footwear, headgear. Class 26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers. Class 27 Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile). Class 28 Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees. Class 29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats. Class 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice. Class 31 Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt. Class 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. Class 33 Alcoholic beverages (except beers). Class 34 Tobacco; smokers' articles; matches. Class 35 Advertising; business management; business administration; office functions. Class 36 Insurance; financial affairs; monetary affairs; real estate affairs. Class 37 Building construction; repair; installation services. Class 38 Telecommunications. Class 39 Transport; packaging and storage of goods; travel arrangement. Class 40 Treatment of materials. Class 41 Education; providing of training; entertainment; sporting and cultural activities. Class 42 Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be placed in other classes. (This note is not part of the Rules) These Rules revoke and replace the Trade Marks Rules 1994 (S.I. 1994/2583, as amended). They re-enact, with modifications and amendments of a drafting nature, the 1994 Rules as amended and make several changes of substance in order to give better effect to the provisions of the Trade Marks Act 1994 ("the Act"). The changes of substance are as follows- (1) with the consent of both of the parties the registrar may grant a " cooling-off" period in actions for opposition to registration of a trade mark (rule 13); (2) certain time limits in actions for revocation (on grounds other than non-use) and invalidation have been reduced from three months to six weeks (rules 32 and 33); (3) the time limit for appeal to the appointed person has been reduced from one month to 28 days (rule 63); (4) an application for a trade mark now requires more detailed information regarding the specification of the class of goods or services in Schedule 4 to which it relates (rule 8); (5) provision has been made for "filing" of a document with the registrar to mean delivery of that document to the registrar at the Office (rule 2); (6) nothing in section 67(2) of the Act relating to publication of information is to be construed as preventing the publication of decisions of cases relating to trade marks decided by the registrar (rule 49); (7) provision has been made for the registrar to call case management conferences and pre-hearing reviews (rules 36 and 37); (8) where the Rules provide for the use of an affidavit or statutory declaration, a witness statement verified by a statement of truth may now be used as an alternative (rule 55); (9) provision has been made for the calling and cross-examination of persons in proceedings where a party has adduced evidence of a statement made by a person otherwise than while giving oral evidence in those proceedings and does not call that person as a witness (Rule 55). Any proceeding commenced before the registrar before the entry into force of these Rules shall proceed under the Trade Mark Rules 1994 as amended or old law as appropriate, but where a new step is to be taken on or after 26th April 2000 in relation to any proceedings commenced under the Trade Mark Rules 1994 these Rules shall apply to such proceedings from that date. A regulatory impact appraisal is available, copies of which have been placed in the libraries of both Houses of Parliament. Copies of the assessment are also available from the Trade Marks Directorate of the Patent Office, Room 2.005, Concept House, Cardiff Road, Newport NP10 8QQ. Notes: [1] 1994 c. 26.back [2] 1992 c. 53.back [3] 1938 c. 22.back [4] The International Classification is drawn up under the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of marks of 15th June 1957 (as last revised on 13th May 1977) (Cmnd 6898). The current version of the International Classification is the Seventh Edition, which entered into force on 1st January 1997.back ISBN 0 11 085845 X -- Back --
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