New Trademarks Rules to come into force

United Kingdom
New trademarks rules will be applicable in the United Kingdom from October 1 2008. As explained in the explanatory memorandum to the Trademarks Rules 2008 (SI 2008/1797), the rules set out the procedural and administrative requirements which apply to trademarks and trademark applications. Having identified a need to consolidate the successive amendments of the Trademarks Rules 2000, in March 2008 the UK Intellectual Property Office (IPO) published a consultation paper entitled “Modernization and Consolidation of the Trademark Rules” inviting comments from all interested parties (for further details please see “Consultation paper on modernization of Trademark Rules issued”). Following the comments received in response to the proposals made in the consultation, the IPO published a response document on the consultation. 
A new Statutory Instrument (Trademarks Rules 2008 SI 2008/1797) will come into force from October 1 2008 and will mainly bring into effect procedural changes and changes relating to time limits.
With regard to time limits, the changes will be as follows:
  • In accordance with Article 14(2)(i) of the Singapore Treaty on the Law of Trademarks, trademark applicants and proprietors will have the right to a retrospective extension of time to complete an action not involving another party before the IPO, provided that the extension is sought within two months of the end of the expired period. The aim is to achieve new processes to make case management and evidence filing rules “more flexible, efficient and proportionate”.
  • Changes to opposition procedures - in order to avoid unnecessary delays in the registration of trademark applications, the opposition period will be reduced from a fixed period of three months to two months, with the possibility for a party considering opposition of requesting an additional month to file its opposition at the end of the two-month period. A new Form TM7A will be available on the website of the IPO in order to request such one-month extension.
  • Changes to the cooling-off period - the fixed 12-month cooling-off period, during which parties to an opposition are invited to settle, is often inappropriate. The new rules will bring more flexibility by offering an initial nine-month cooling-off period, with a possible extension to 18 months if both parties request it.
  • In respect of various individual time periods, the new rules will harmonize the time period to two months for the filing of oppositions and objections: 
    • Any person claiming to be affected by the alteration of a registered trademark will have two months for filing an opposition (Section 44 of the Trademarks Act 1994), following publication of the request for alteration of a trademark registration which includes the proprietor's name or address;
    • Any person will have two months for filing an opposition following publication of the registrar’s intention to remove any matter that appears to have ceased to have effect (Section 64 of the act);
    • A person who has received notification of the registrar’s intention to remove from the register any matter that appears to have ceased to have effect will have two months for filing objections (Section 64 of the act) following notification of the registrar’s intention;
    • A trademark proprietor will have two months for filing an objection to a proposal by the registrar to change the classification of a trademark registration (Sections 65(3) and 76(1) of the act) following the date of notice from the registrar; and
    • Any person will have two months for filing an opposition to a proposal to amend the regulations governing the use of a registered collective or certification mark (Paragraph 10 of Schedule 1 and Paragraph 11 of Schedule 2 of the act) following publication of a notice from the registrar.
  • Counterstatements - under the new rules, the term for filing counterstatements in oppositions, revocation and invalidation proceedings will be two months. The registrar will accept late counterstatements when they are justified.
  • Deficiencies in applications - the new rules will reduce the period for remedying deficiencies in a trademark application (eg, failure to pay the application fees) and for correcting queries relating to classification to a period of no less than one month.
The procedural changes will be as follows:
  • The new rules have introduced a request for expedited examination, available to applicants since April 6 2008 for a new single trademark application (ie, not for series applications) filed electronically.
  • Preliminary indications - under the current rules, preliminary indications are given by the registrar in an opposition based on relative grounds. If the preliminary indication is not favourable to the opponent, the opponent must file a form TM53 (request to proceed to evidence grounds); otherwise, the opposition will be deemed withdrawn in its entirety, even if it was based on other grounds. Under the new rules, only the relative grounds will be deemed withdrawn and the other grounds will remain. The registrar will still have discretion as to whether it is appropriate to give a preliminary indication.
  • Case management powers - the new rules will give the registrar the power to set a timetable for parties to file evidence, taking account of the circumstances of each case, and the power to direct the issues on which evidence is required in order to assist with the selection of evidence on the relevant issues and avoid unnecessary documents, evidence and associated costs.
  • Evidence rounds in applications for revocation on the grounds of non-use - the proprietor of the registered mark whose revocation is requested will have a single opportunity to file evidence of use (or reasons for non-use) to defend the registration.
  • Power to set aside decisions - the new rules will provide the registrar with the power to set aside the refusal of an application or the revocation or invalidation of a registration if the applicant or the trademark proprietor demonstrates that the failure to challenge the proceedings was due to non-receipt of the notice of the proceedings. The application to set aside must be made within six months of the relevant decision via a new Form TM29 and be substantiated by evidence.
  • Procedural appeals - under the current rules, appeals can be filed following any decision of the registrar, including procedural decisions which do not terminate the proceedings. These appeals against procedural decisions can delay the proceedings without changing the final outcome of the proceedings. Under the new rules, an appeal against a decision (other than a decision awarding costs to any party) which is made at any point of the proceedings prior to a final decision may be made only independently of any appeal against a final decision at the discretion of the registrar. The registrar will have the discretion to identify decisions which are likely to be determinative of the proceedings and to continue to permit separate appeals for these.
  • Verification of priority claims - where priority is claimed, the registrar may determine, in any particular case, what documentation relating to the priority shall be filed in support of the trademark application. 
Subject to the exceptions in Rule 83(4) (under which a new step is to be taken on or after October 1 2008 in relation to any proceedings commenced under the current rules), the new rules shall apply to such proceedings from that date. This consolidation aims to make the rules more accessible and to remove duplication and inconsistencies.
The Trademarks (Fees) Rules 2008 will also come into force on October 1 2008. The £300 fee for requesting the expedited examination of an application for registration of a trademark has already been introduced and is now listed in these rules. A £50 fee has also been added in respect of the new Form TM6 for proprietors of a Community trademark or international trademark (covering EC) to be notified of the results of a search of the register in the context of a later UK trademark application.
Chris McLeod and Emilie Scheffer, Hammonds LLP, London

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