The Trade Marks Rules 2008

[^key-2eb1a07f4a85ebea5094e35d7292dcae]: Rule 11(1)(d) semicolon substituted for full stop by S.I. 2019/269, Sch. 4 para. 6(2) (as substituted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(a))

[^key-7f45041281cc51bb2e551c199ba27590]: Rule 11(1)(e) inserted by S.I. 2019/269, Sch. 4 para. 6(3) (as substituted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(a))

[^key-9eddf04413a8ef2978d0a33f97afcea8]: Rule 12(4)(e) inserted by S.I. 2019/269, Sch. 4 para. 6A(3) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(b))

[^key-6f9aadd87939c5977d0bcddf81ed9409]: Rule 12(4)(d): semicolon substituted for full stop by S.I. 2019/269, Sch. 4 para. 6A(2) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(b))

[^key-88a3de935fe5e2f85f77dcf393d279e7]: Rule 14(3A) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 7 para. 6; 2020 c. 1, Sch. 5 para. 1(1)

[^key-1b0185dd9191911a5549bb7866ae5538]: Words in rule 14(3) substituted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 7; 2020 c. 1, Sch. 5 para. 1(1)

[^key-cc42b4bc4b3de596a72ed2b5cca322fd]: Words in rule 17A(6)(d) omitted (31.12.2020) by virtue of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 8; 2020 c. 1, Sch. 5 para. 1(1)

[^key-2acd452391b86fd1b9d4ebbe38f3cfd7]: Word in rule 43(1)(c) substituted for comma (31.12.2020) by S.I. 2019/269, Sch. 4 para. 10A(3) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c))

[^key-aa67363313dd3be675231bade90cb242]: Rule 43(1)(d) inserted by S.I. 2019/269, Sch. 4 para. 10A(4) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c))

[^key-57feb1076c1149396291195b40b56a4d]: Words in rule 43(2) inserted (31.12.2020) by S.I. 2019/269, Sch. 4 para. 10A(5) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c))

[^key-00226f8f0857a6f0ef34df14da6764ba]: Words in rule 43(3) inserted (31.12.2020) by S.I. 2019/269, Sch. 4 para. 10A(6)(a) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c))

[^key-14926f30c2685b3f1ec44f5a786fdabd]: Word in rule 43(3) substituted (31.12.2020) by virtue of S.I. 2019/269, Sch. 4 para. 10A(6)(b) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c))

[^key-4acec11b4251dedeaf48da6ef21e949e]: Words in rule 43(3) inserted (31.12.2020) by S.I. 2019/269, Sch. 4 para. 10A(6)(c) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c))

[^key-c2b91939e276a7940e800cacb50fe33d]: Rule 43(1)(b): semicolon substituted for word by S.I. 2019/269, Sch. 4 para. 10A(2) (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c))

[^key-7e3088ff63a2794744f8b356277f6956]: Rule 43A inserted by S.I. 2019/269, Sch. 4 para. 10B (as inserted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c))

[^key-666219f52468558fba693a6513b0c0f7]: Words in rule 47(a) inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 11(2); 2020 c. 1, Sch. 5 para. 1(1)

[^key-01bd9a5cb3a60dcec67a2c27d01493bc]: Words in rule 47(b) inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 11(3); 2020 c. 1, Sch. 5 para. 1(1)

[^key-9359bc5682b8961c091d7f5644fe3940]: Rule 47(cc)(cd) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 7 para. 8(4); 2020 c. 1, Sch. 5 para. 1(1)

[^key-e503f3fd7e7d587e6e503cb3576753b0]: Rule 47(l) omitted (31.12.2020) by virtue of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 11(5); 2020 c. 1, Sch. 5 para. 1(1)

[^key-3242aa2bbd2b1d555fe07d5a4f95be10]: Rule 47(n) inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 11(6) (as amended by S.I. 2020/1050, reg. 11(d)); 2020 c. 1, Sch. 5 para. 1(1)

[^key-686cc3da8d0801f2d38705f4a984dd4c]: Rule 47(aa) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 7 para. 8(2); 2020 c. 1, Sch. 5 para. 1(1)

[^key-b22893c226efd04d530f2541a9fcc527]: Rule 47(bb) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 7 para. 8(3); 2020 c. 1, Sch. 5 para. 1(1)

[^key-b637dfaf054f3ecf23adb39d3b083386]: Rule 47(o) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 7 para. 8(5); 2020 c. 1, Sch. 5 para. 1(1)

[^key-9719a36788e168153ef3b5a3eca16faa]: Rule 47(ca)(cb) inserted (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 4 para. 11(4); 2020 c. 1, Sch. 5 para. 1(1)

[^key-223ed37526cfe9cac49c2010682554ba]: Word in rule 11(4) substituted (1.1.2021) by The Patents, Trade Marks and Designs (Address for Service) (Amendment) (EU Exit) Rules 2020 (S.I. 2020/1317), rules 1(1), 3 (with rules 6-8)

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

17A

• (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.

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

Opposition proceedings: preliminary indication (Form TM53)

Opposition proceedings: evidence rounds

Procedure for intervention

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

Publication of registration; section 40

Division of registration; section 41 (Form TM12R)

26A

• (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.

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

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

Comparable trade mark (EU)

2A

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

Comparable trade mark (IR)

2B

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

Forms and directions of the registrar; section 66

Requirement as to fees

Prescribed comparable trade mark (IR) fees

4A

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.

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

5A

• (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.

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

5B

• (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.

Claim to priority; sections 35 & 36

Classification of goods and services; section 34

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

Determination of classification

Prohibition on registration of mark consisting of arms; section 4

Address for service

Failure to provide an address for service

Deficiencies in application; section 32

Notifying results of search

Compliance with request for expedited examination

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

29A

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.

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

29B

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.

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

Registration subject to disclaimer or limitation; section 13

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

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

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

37A

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.

Invalidation or revocation of Existing EUTM: Cancellation notice and procedure on application for derogation; Schedule 2A paragraph 21A

43A

• (1) A cancellation notice under paragraph 21A of Schedule 2A must—

• (a) identify the existing EUTM by the number under which the existing EUTM was registered in the EUTM Register immediately before IP completion day, together with a representation of the mark,

• (b) include the following details with regard to the decision pursuant to which the existing EUTM was revoked or declared invalid (whether wholly or partially)—

• (i) the date of the decision (including any decision determined on appeal),

• (ii) whether the revocation or declaration of invalidity related to all or part of the goods or services for which the existing EUTM was registered,

• (iii) where the existing EUTM was revoked (whether wholly or partially) the date on which the revocation took effect,

• (c) be accompanied by a copy of the decision (including any decision determined on appeal) pursuant to which the existing EUTM was revoked or declared to be invalid, and

• (d) include a statement confirming that the decision pursuant to which the existing EUTM was revoked or declared invalid (whether wholly or partially) has been finally determined.

• (2) Where a cancellation notice is submitted to the registrar by the proprietor of the comparable trade mark (EU) which derives from the existing EUTM, the cancellation notice must be accompanied by—

• (a) a notice (a “derogation notice”) in writing to the registrar that, based upon the provisions in paragraph 21A(4) of Schedule 2A, the comparable trade mark (EU) should not be revoked or declared invalid (whether wholly or partially), and

• (b) a statement of the reasons why paragraph 21A(4) of Schedule 2A applies (a “statement”) together with relevant supporting evidence (“supporting evidence”).

• (3) Where the proprietor of a comparable trade mark (EU) submits a cancellation notice to the registrar but fails to send a derogation notice, a statement or supporting evidence, the registration of the comparable trade mark (EU) which derives from the existing EUTM identified in the cancellation notice must be revoked or declared invalid to the same extent as the existing EUTM, unless the registrar directs otherwise.

• (4) Where the registrar receives a cancellation notice submitted by a person other than the proprietor of the comparable trade mark (EU) which derives from the existing EUTM, the registrar must as soon as reasonably practicable after receipt of the cancellation notice—

• (a) send a copy of the cancellation notice to the proprietor of the comparable trade mark (EU) which derives from the existing EUTM identified in the cancellation notice, and

• (b) notify the proprietor of the comparable trade mark (EU) which derives from the existing EUTM that based upon the revocation or declaration of invalidity of the existing EUTM, the comparable trade mark (EU) will be revoked or declared invalid to the same extent as the corresponding EUTM.

• (5) Where the registrar has become aware of the situation referred to in paragraph 21A(2)(a) of Schedule 2A otherwise than by a cancellation notice, the registrar must as soon as reasonably practicable after becoming aware of that situation, notify the proprietor of the comparable trade mark (EU) which derives from the existing EUTM in the terms provided in paragraph (4)(b).

• (6) The proprietor of a comparable trade mark (EU) referred to in paragraph (4) and (5) must, within such period of not less than one month as may be specified in the notice referred to in paragraph (4)(b) and (5), send to the registrar a derogation notice accompanied by a statement and supporting evidence as referred to in paragraph (2), failing which the registration of the comparable trade mark (EU) must be revoked or declared invalid to the same extent as the corresponding EUTM, unless the registrar directs otherwise.

• (7) The registrar must, in reaching a decision as to whether paragraph 21A(4) of Schedule 2A applies to a comparable trade mark (EU), have regard to the statement and supporting evidence filed by the proprietor of the comparable trade mark (EU) and must send written notice of the decision to the proprietor, stating the reasons for that decision.

• (8) For the purposes of any appeal against a decision referred to in sub-paragraph (7), the date on which the notice is sent must be taken to be the date of the decision.

Procedure on application for rectification; section 64 (Form TM26(R))

Procedure for intervention