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Changes to United Kingdom Trade Mark Registration Procedures
The Trade Marks Rules 2008 will come into effect on 1 October 2008. In
addition to consolidating amendments to the 2000 Rules made on no fewer
than seven previous occasions, they also introduce some significant
procedural changes as follows.
Filing Applications
- Payment of the fees required to complete an application can
at present be deferred for up to two months from filing. That term will
be reduced from two months to one month (r 13(2))
- More extensions of time will be permitted for trade mark
owners and applicants when deadlines for actions before the Office not
involving another party are missed
- In order to speed up processing of applications (most of
which are unopposed), the 3 month opposition term will be reduced to 2
months, extendable on request by one month to a total of 3 months (r
17(2) and (3))
Oppositions and Revocations
- The rules previously provided different periods for filing
counterstatements in opposition and revocation proceedings,
respectively. These will now be the same: 2 months
- Automatic refusal of an application where the applicant
fails to file a counterstatement in opposition proceedings will cease -
the Office can accept late defences where they are justified (r 18(2))
- The 12 month cooling-off period provided in opposition
proceedings to allow parties to negotiate will be replaced by a 9 month
period, extendable to 18 months at the joint request of the applicant
and opponent (r 18(3)(c) and (6)(c))
- Previously, in contentious proceedings, fixed terms were
laid down for the parties to file evidence. Under the new rule, the
Office has the power to set a timetable and to direct the issues on
which evidence is required (r 20)
- The Office may also direct that parties be permitted to file
submissions as well as evidence. This will allow arguements to be
submitted in cases where no evidence of fact is required.
- In proceedings brought for cancellation of a registrered
trade mark on the grounds of non-use, the proprietor of the mark must
file a counterstatement within the 2 month term refered to above. If
this is not accompanied by proof that the mark has been used, such
evidence must be filed within a further (inextensible) period of two
months (r 38(4)). The proprietor will have only this single opportunity
to file proof of use in such proceedings.
- The Office will have the power to set aside decisions in
cases where the proprietor can prove it was unaware of an opposition or
attempt to cancel or revoke its mark (r 43). This will only be possible
within six months of the decision to be set aside.
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