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The Trade Marks and Registered Designs (Amendment) Rules 2013

S.I. 2013/444 · Made 27 February 2013

Original text. legislation.gov.uk does not revise statutory instruments, so later amendments are not shown here. Changes made to it are listed under each provision when known.

This Statutory Instrument has been printed to correct errors in S.I. 2008/1797 and S.I. 2006/1975 and is being issued free of charge to all known recipients of those Statutory Instruments.

Intellectual Property

Made 27th February 2013

Laid before Parliament 1st March 2013

Coming into force 31st March 2013

The Secretary of State makes the following Rules in exercise of the powers conferred by section 78 of the Trade Marks Act 1994f1 and section 36 of the Registered Designs Act 1949f2.

In accordance with paragraph 24 of Schedule 7 to the Tribunals, Courts and Enforcement Act 2007f3, the Secretary of State has consulted the Administrative Justice and Tribunals Council before making these Rules.

Annotations to the whole text

Footnotes

f1

1994 c.26.

f2

1949 c.88; section 36 was amended by the Copyright, Designs and Patents Act 1988; Schedule 3, paragraph 26; there are other amendments but none are relevant to these Rules.

f3

2007 c.15.

Contents

  1. 1Citation and commencement
  2. 2Amendments to the Trade Marks Rules 2008
  3. 3Amendments to the Trade Marks Rules 2008
  4. 4Amendments to the Trade Marks Rules 2008
  5. 5Amendments to the Registered Designs Rules 2006
  6. 6Amendments to the Registered Designs Rules 2006
  7. 7Amendments to the Registered Designs Rules 2006
  8. 8Transitional Provisions
  9. Signature
  10. Schedule 1Trade Marks Rules 2008
  11. Schedule 2Registered Designs Rules 2006
  12. Explanatory note

1Citation and commencement

These Rules may be cited as the Trade Marks and Registered Designs (Amendment) Rules 2013 and come into force on 31st March 2013.

2Amendments to the Trade Marks Rules 2008

The Trade Marks Rules 2008f1 are amended as follows.

3Amendments to the Trade Marks Rules 2008

(1)

Rule 18 (Opposition proceedings: filing of counter-statement and cooling off period (Forms TM8, TM9c & TM9t)) is amended as follows.

(2)

In paragraph (3) for “shall begin on the notification date and end two months after that date” substitute “is the period of two months beginning immediately after the notification date”.

(3)

In paragraph (4)(b) for “beginning on” substitute “beginning immediately after”.

(4)

In the tailpiece to paragraph (4) for “shall begin on the notification date and end nine months after that date” substitute “is the period of nine months beginning immediately after the notification date”.

(5)

In the tailpiece to paragraph (5) for “shall begin on the notification date and end eighteen months after that date” substitute “is the period of eighteen months beginning immediately after the notification date”.

(6)

In the tailpiece to paragraph (6) after “two months” insert “beginning immediately”.

4Amendments to the Trade Marks Rules 2008

In the rules set out in Schedule 1 to these Rules, for “beginning with” substitute “beginning immediately after”.

5Amendments to the Registered Designs Rules 2006

The Registered Designs Rules 2006f1 are amended as follows.

6Amendments to the Registered Designs Rules 2006

In rule 23(2)(a)(i) omit the words “not resident in” and insert the same words in rule 23(2)(a) after “the United Kingdom but”.

7Amendments to the Registered Designs Rules 2006

In the rules set out in Schedule 2 to these Rules, for “beginning with” substitute “beginning immediately after”.

8Transitional Provisions

Where, immediately before these Rules come into force, any period of time prescribed by rule 18 of the Trade Marks Rules 2008 or any of the rules set out in the Schedules to these Rules has effect in relation to any act or proceeding and has not expired, those rules as amended by these Rules shall apply in determining the expiry of that period.

Signature

Younger of Leckie

Parliamentary Under Secretary of State for Business, Innovation and Skills

Department for Business, Innovation and Skills

27th February 2013

Schedule 1Trade Marks Rules 2008

  • Rule 12(2) (Failure to provide an address for service)

  • Rule 17(2) (Opposition proceedings: filing of notice of opposition; section 38(2) (FormTM7))

  • Rule 17(3) (Opposition proceedings: filing of notice of opposition; section 38(2) (FormTM7))

  • Rule 25(3)(b) (Amendment of application after publication; section 39 (Form TM7))

  • Rule 30(5)(b) (Amendment of regulations of collective and certification marks)

  • Rule 32(4)(b) (Alteration of registered trade marks; section 44 (Forms TM25 and TM7))

  • Rule 43(2) (Setting aside cancellation of application or revocation or invalidation of registration; (Form TM29))

  • Rule 71(2) (Appeal to person appointed; section 76)

  • Rule 71(4) (Appeal to person appointed; section 76)

  • Rule 77(4)(a) (Alteration of time limits (Form TM9))

Schedule 2Registered Designs Rules 2006

  • Rule 7(3) (Convention applications)

  • Rule 7(7) (Convention applications)

  • Rule 8(3) (Substantive and formal examination of application)

  • Rule 9(2) (Representation of design for publication)

  • Rule 10(1) (Time limits under section 3(5) and section 3B)

  • Rule 10(2) (Time limits under section 3(5) and section 3B)

  • Rule 12(4) (Extension of duration of right in registered design)

  • Rule 13(2) (Restoration of a lapsed right in a design under section 8A)

  • Rule 13(5) (Restoration of a lapsed right in a design under section 8A)

  • Rule 29(2)(a) (Inspection of documents)

  • Rule 30(2)(a) (Confidential information)

  • Rule 43(2) (Failure to furnish an address for service)

Explanatory note

(This note is not part of the Rules)

These Rules amend the Trade Marks Rules 2008 (S.I. 2008/1797) (as amended) (“the Trade Marks Rules”) and the Registered Designs Rules 2006 (S.I. 2006/1975) (as amended) (“the Design rules”).

Rules 2 to 4 and Rule 7 amend various time periods prescribed in the Trade Marks Rules and the Design Rules so that when computing a period of time by reference to a relevant event, the date on which the relevant event occurred is not included.

Rule 6 corrects a defect in the drafting of rule 23(2)(a) of the Design rules. Rule 23 empowers the registrar to require a person to give security for the costs of any application or appeal if one or more specified conditions applies. The condition in rule 23(2)(a) is amended so that it applies where a person is resident outside the UK but is not resident in either a Brussels Contracting State, a Lugano Contracting State or a Regulation State.

A full regulatory impact assessment of the effect that this instrument will have on the costs of business and the voluntary sector is available from the Intellectual Property Office, Trade Marks Law Section, Concept House, Newport, South Wales, NP10 8QQ and is published with the Explanatory Memorandum alongside the instrument on www.legislation.gov.uk.