The Trade Marks Rules 1994

• 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.

Services

• 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.

Signed

Ian Taylor — Parliamentary Under Secretary of State for Trade and Technology — 5th October 1994

Explanatory note

(This note is not part of the Rules)

These Rules revoke and replace the Trade Marks and Service Marks Rules 1986 (S.I. 1986/1319, as amended). They re-enact, with modifications and amendments of a drafting nature, several provisions of the 1986 Rules and make several changes of substance in order to give effect to the provisions of the Trade Marks Act 1994 (“the Act”).

The changes of substance are as follows—

• (a) forms that are required by the registrar to be used for the purposes of registration and of any proceedings before him are not prescribed under these Rules; they are, however, required to be published in the Trade Marks Journal and users may, as before, satisfy the requirement to file on a form by filing either a replica of the form or a form acceptable to the registrar (rule 3);

• (b) a single application may relate to goods and services classified in more than one class of the classification (rule 8);

• (c) the requirements for providing an address for service have been simplified so that it is clear that such an address is only required for the purposes of any proceedings before the registrar (rule 10);

• (d) the time limits for correcting deficiencies in any application are clearly set out in a single rule (rule 11);

• (e) provision has been made for the filing of observations by third parties on the acceptability of marks, as is to be the case for the Community trade mark system to be introduced under Council Regulation (EC) No. 40/94 of 20th December 1993; copies of such observations are to be sent to the applicant (rule 15);

• (f) amendment of an application is restricted to corrections of errors or changes in the name and address of the applicant (where these appear in the mark) (rule 17);

• (g) provision has been made for the division of applications (rule 19);

• (h) provision has been made for the merging of applications providing this takes place before their publication for opposition purposes (rule 20);

• (i) following the introduction of registration of collective marks in section 49 of the Act, provision is made for the filing of regulations concerning their use, and for their amendment and opposition to such amendment (rules 22 and 23);

• (j) provision is made for the publication of voluntary disclaimers (rule 24);

• (k) provision is made for the entry onto the register of details concerning registrations in addition to those prescribed by section 63(2) of the Act (rule 33);

• (l) provision is made for the entry of details of registered transactions covered by section 25 of the Act (rule 34);

• (m) provision is made for the amendment of entries in the register consequent upon changes in the system of classification which have been agreed internationally (rule 40) and for opposition to such changes (rule 41);

• (n) the provisions concerning the confidentiality of documents and the public’s right to inspect documents filed at the Patent Office have been clarified (rules 43, 44 and 45);

• (o) provision has been made for the acceptance of affidavits in addition to statutory declarations, and the manner of subscription has been simplified to make it easier for overseas applicants to meet the Patent Office’s requirements (rule 50);

• (p) provision is made for appeals to the person appointed by the Lord Chancellor under section 76 and for the procedure relating to the hearing of appeals by that person (rules 57 and 59);

• (q) the procedures to be followed when correcting an error or an irregularity in procedure have been clarified (rule 60);

• (r) provision is made for the extension of times or periods prescribed by these Rules or specified by the registrar (rule 62);

• (s) the provisions governing the filing of documents cover filing by electronic means, thus making further rule changes (to cater for future developments) unnecessary (rule 63);

• (t) the hours of business of the Office and business days of the Office as specified by the registrar are to be published in the Trade Marks Journal and posted in the Office (rule 64);

• (u) formal provision is made for the publication of the Trade Marks Journal (rule 65);

• (v) rule 67 provides that in the case of a pending application (i.e. one made under the old law) which 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 that such period shall not be extendible;

• (w) rule 68 prescribes the form of the notice to the registrar claiming to have the registrability of a pending mark which has not been advertised before 31st October 1994 determined in accordance with the Act; and

• (x) rule 69 provides that any unexpired time or period prescribed by the Rules revoked by these Rules shall continue to apply to any act or proceedings to which they applied before their revocation.

The addresses for the filing of documents at the Patent Office are prescribed in the Patent Office (Address) Rules 1991 (S.I. 1991/675), namely—

• (i) Cardiff Road, Newport, Gwent NP9 1RH; and

• (ii) 25 Southampton Buildings, London WC2A 1AY.

A compliance cost assessment 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 Intellectual Property Policy Directorate of the Patent Office, Room 3/13, Hazlitt House, 45 Southampton Buildings, London WC2A 1AR.

Footnotes

[^f00001]: 1994 c. 26.

[^f00002]: 1992 c. 53.

[^f00003]: 1938 c. 22.

[^f00004]: The forms required to be used are published in the special edition of the Trade Marks Journal dated 31st October 1994.

[^f00005]: See the Trade Marks (Fees) Rules 1994, S.I. 2584/1994.

[^f00006]: 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 Sixth Edition, which entered into force on 1st January 1992.

[^f00007]: See the special edition of the Trade Marks Journal dated 31st October 1994.