The Trade Marks (Fees) Rules 2008
S.I. 2008/1958 · Made 21 July 2008 · Extends to United Kingdom
Trade Marks
Made 21st July 2008
Laid before Parliament 23rd July 2008
Coming into force 1st October 2008
The Secretary of State makes the following Rules in exercise of the powers conferred by section 79 of the Trade Marks Act 1994 M1 (“the Act”) and of the power conferred by the Department of Trade and Industry (Fees) Order 1988 M2.C1C2
Annotations to the whole text
Marginal citations
- M1
- M2
S.I. 1988/93 as amended by S.I. 1990/1473, which was made under section 102 of the Finance (No. 2) Act 1987 (c.51).
Modifications
- C1
Rules applied (31.12.2020) by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 2 para. 5; 2020 c. 1, Sch. 5 para. 1(1)
- C2
Rules applied (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 5 para. 14; 2020 c. 1, Sch. 5 para. 1(1)
Contents
- 1Citation, commencement and interpretation
- 2Fees payable
- 3Repayment of fee
- 3ATemporary fee reduction Repealed
- 4Revocations
- Signature
- Schedule: Fees Payable
- Paragraph
- Explanatory note
1Citation, commencement and interpretation
These Rules may be cited as the Trade Marks (Fees) Rules 2008 and shall come into force on 1st October 2008.
These Rules shall be construed as one with the Trade Marks Rules 2008 M1 (“the 2008 Rules”).
2Fees payable
F1... The fees to be paid in respect of any matters arising under the Act and the 2008 Rules shall be those specified in the Schedule to these Rules.
In any case where a form specified in the Schedule as the corresponding form in relation to any matter is specified in the 2008 Rules, that form shall be accompanied by the fee specified in respect of that matter (unless the 2008 Rules otherwise provide).
3Repayment of fee
Where the registrar—
has received a request for expedited examination of an application for registration of a trade mark under rule 5(2) of the 2008 Rules; and
following the expiry of a period of ten business days (as specified in a direction given by the registrar under section 80 of the Act) beginning on the business day after the date of filing of the application for registration, notifies the applicant, in accordance with rule 15 of the 2008 Rules, whether or not it appears to the registrar that the requirements for registration are met,
the registrar shall repay the fee specified in the Schedule in respect of a request for expedited examination.
Where a fee has been paid in error, the registrar shall repay the same; and where a fee is paid in excess of the amount specified, the registrar shall remit the amount paid in excess.
3ATemporary fee reductionF1
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
4Revocations
Signature
Baroness Morgan of Drefelin
Parliamentary Under Secretary of State for Intellectual Property and Quality
Department for Innovation, Universities and Skills
(In this section references to a rule are references to that rule in the 2008 Rules)
| Number of corresponding form | Item | Amount |
|---|---|---|
| £ | ||
| TM3 | F1Standard application for registration of a trade mark (rule 5) or a series of trade marks (rule 28) | F2250 |
| F3e-TM3 | Request to the Registrar for expedited examination of F4electronic application for registration of a trade mark (rule 5(2)) | 370 |
| TM3 | Class fee (rule 5), for each class over one F5contained in a standard application | 60 |
| F6TM3 | Series fee (rule 28(1A)), for each trade mark over two contained in a standard application | 60 |
| e-TM3 | Electronic application for registration of a trade mark (rule 5(1B)) or a series of trade marks (rule 28) | 205 |
| e-TM3 | Class fee (rule 5), for each class over one contained in an electronic application | 60 |
| e-TM3 | Series fee (rule 28(1A)), for each trade mark over two contained in an electronic application | 60 |
| TM3A | Application for additional classes following examination of a mark (rule 8(4)), for each additional class | 60 |
| TM5 | Request to the registrar for a statement of the reasons for his decision (rule 69(2)) | 125 |
| F7. . . | . . . | . . . |
| F8TM7 | Notice of opposition to the registration of a mark (rule 17(1)) | 250 |
| TM7 | Notice of opposition to the registration of a mark where the grounds of opposition are based solely on either or both of sub-sections 5(1) and (2) of the Trade Marks Act 1994 | 125 |
| TM7 | Notice of opposition to the amendment of an application (rule 25(2)), or to the amendment of the regulations relating to a certification or collective trade mark (rule 30(4)), to the alteration of a registered trade mark (rule 32(3)), to the removal of matter from the register (rule 53(2)(a)), to the reclassification of a mark in accordance with the relevant Nice Classification (rule 55(1)) | 250 |
| F9TM7F | Notice of fast track opposition to the registration of a mark (rule 17A) | 125 |
| TM7G | Application to add grounds, other than under section 5(1) or 5(2) of the Act, to an opposition made under Rule 17 (rule 62(1)(e)) | 125 |
| TM9 | Request for extension of time (rule 77(2)) | 125 |
| TM11 | Renewal of registration (rule 35) | 245 |
| TM11 | Class fee for each class over one (rule 35) | 60 |
| TM11 | Delayed renewal of registration (rule 36(2)) | 60 |
| TM12 | Request for division of an application (rule 26(1)) | 125 |
| TM13 | Request for the restoration and renewal of a registration removed from the register for failure to renew (rule 37(1)) | 125 |
| TM16 | Request to enter details of an assignment (rule 49(1)(a)) | 60 |
| F10TM24 | Request to enter details relating to the grant, amendment or termination of any security interest or the making by personal representatives of an assent or to an order of a court or other competent authority (rule 49(1)(d) and (e)) | 60 |
| TM26 (N) | Request for the revocation of a registration (on grounds of non-use) (rule 38) | 250 |
| TM26 (O) | Request for the revocation of a registration (on grounds other than non-use) (rule 39) | 250 |
| TM26 (I) | Request for the invalidation of a registration (rule 41) | 250 |
| TM31C | Request for information about applications and registered trade marks (rule 56) | 25 |
| TM31R | Request for certified copy of an entry on the register (rule 51), per certificate | 25 |
| TM35 | Filing of regulations governing the use of a certification or collective mark (rule 29) | 250 |
| TM36 | Request to amend regulations governing the use of a certification or collective mark (rule 30(1)) | 125 |
| F11TM50 | Request to enter details relating to a grant of a licence (rule 49(1)(b)) | 60 |
| TM51 | Request to enter details relating to an amendment to, or termination of a licence (rule 49(1)(c)) | 60 |
| F12TM55P | Appeal to the person appointed under section 76 in proceedings between two or more parties (rule 71(1A)) | 300 |
Explanatory note
(This note is not part of the Rules)
These Rules prescribe fees in relation to matters arising under the Trade Marks Act 1994 (“the Act”) and the Trade Marks Rules 2008 (SI 2008/1797) (which revoked and replaced the Trade Marks Rules 2000 (SI 2000/136) (“the 2000 Rules”). These Rules revoke and replace the Trade Marks (Fees) Rules 2000 (SI 2000/137) (“the Fees Rules”) insofar as they relate to fees payable under the Act and the 2000 Rules. No change has been made to the level of fees nor to the circumstances in which a fee is payable. The Fees Rules continue to prescribe fees in relation to matters arising under the Trade Marks (International Registration) Order 1996 (SI 1996/714).
Where a form is specified in the Schedule in relation to any matter, that form must be sent to the registrar together with the relevant fee for that matter, unless the Trade Marks Rules 2008 specify otherwise (rule 2).
Rule 3 specifies the circumstances in which the registrar shall repay a fee or any amount paid in excess of the specified fee.
A separate impact assessment has not been produced for this instrument as it is made in consequence of the revocation and replacement of the 2000 Rules by the Trade Marks Rules 2008. However, a full impact assessment of the effect that the Trade Marks Rules 2008 will have on the costs of business and the voluntary sector is available from the UK Intellectual Property Office, Trade Marks Law Section, Concept House, Cardiff Road, Newport NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside that instrument on the OPSI website. Copies have also been placed in the libraries of both Houses of Parliament.