Rule 17A Opposition proceedings: filing of notice of fast track opposition; section 38(2) (Form TM7F))F1

(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) F2...; 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 F3date 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.

Annotations

Textual amendments

F1: Rule 17A inserted (1.10.2013) by The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 (S.I. 2013/2235), rules 1, 2(4)
F2: 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)
F3: Words in rule 17A(6)(e) substituted (14.1.2019) by The Trade Marks Regulations 2018 (S.I. 2018/825), regs. 1(1), 38 (with Pt. 5)