50.—(1) The register shall be open for public inspection at the Office during the hours of business of the Office as published in accordance with rule 80.
(2) Where any portion of the register is kept otherwise than in documentary form, the right of inspection is a right to inspect the material on the register.
51. The registrar shall supply a certified copy or extract or uncertified copy or extract, as requested on Form TM31R, of any entry in the register.
52. The registrar shall, on a request made on Form TM21 by the proprietor of a registered trade mark or a licensee or any person having an interest in or charge on a registered trade mark which has been registered under rule 48 (“the applicant”), enter a change in the applicant’s name or address as recorded in the register.
53.—(1) Where it appears to the registrar that any matter in the register has ceased to have effect, before removing it from the register—
(a) the registrar may publish in the Journal the fact that it is intended to remove that matter, and
(b) where any person appears to the registrar to be affected by the removal, notice of the intended removal shall be sent to that person.
(2) Within two months of the date on which the intention to remove the matter is published, or notice of the intended removal is sent, as the case may be—
(a) any person may file notice of opposition to the removal on form TM7; and
(b) the person to whom a notice is sent under paragraph (1)(b) may file in writing their objections, if any, to the removal,
and where such opposition or objections are made, rule 63 shall apply.
(3) If the registrar is satisfied after considering any objections or opposition to the removal that the matter has not ceased to have effect, the registrar shall not remove it.
(4) Where there has been no response to the registrar’s notice the registrar may remove the matter and where representations objecting to the removal of the entry have been made the registrar may, if after considering the objections the registrar is of the view that the entry or any part of it has ceased to have effect, remove it or the appropriate part of it.
54.—(1) The registrar may at any time amend an entry in the register which relates to the classification of a registered trade mark so that it accords with the version of the Nice Classification that has effect at that time.
(2) Before making any amendment to the register under paragraph (1) the registrar shall give the proprietor of the mark written notice of the proposed amendments and shall at the same time advise the proprietor that—
(a) the proprietor may make written objections to the proposals, within two months of the date of the notice, stating the grounds of those objections; and
(b) if no written objections are received within the period specified the registrar shall publish the proposals and the proprietor shall not be entitled to make any objections to the proposals upon such publication.
(3) If the proprietor makes no written objections within the period specified in paragraph (2)(a) or at any time before the expiration of that period decides not to make any objections and gives the registrar written notice to this effect, the registrar shall as soon as practicable after the expiration of that period or upon receipt of the notice publish the proposals in the Journal.
(4) Where the proprietor makes written objections within the period specified in paragraph (2)(a), the registrar shall, as soon as practicable after having considered the objections, publish the proposals in the Journal or, where the registrar has amended the proposals, publish the proposals as amended in the Journal; and the registrar’s decision shall be final and not subject to appeal.
55.—(1) Any person may, within two months of the date on which the proposals were published under rule 54, give notice to the registrar of opposition to the proposals on Form TM7 which shall include a statement of the grounds of opposition which shall, in particular, indicate why the proposed amendments would be contrary to section 65(3).
(2) If no notice of opposition under paragraph (1) is filed within the time specified, or where any opposition has been determined, the registrar shall make the amendments as proposed and shall enter in the register the date when they were made; and the registrar’s decision shall be final and not subject to appeal.
56. A request for information relating to an application for registration or to a registered trade mark shall be made on Form TM31C.
57.—(1) Before publication of an application for registration the registrar shall make available for inspection by the public the application and any amendments made to it and any particulars contained in a notice given to the registrar under rule 49.
(2) Nothing in section 67(2) relating to publication of information shall be construed as preventing the publication of decisions on cases relating to trade marks decided by the registrar.
58.—(1) Subject to paragraphs (2) and (3), the registrar shall permit all documents filed or kept at the Office in relation to a registered mark or, where an application for the registration of a trade mark has been published, in relation to that application, to be inspected.
(2) The registrar shall not be obliged to permit the inspection of any such document as is mentioned in paragraph (1) until the completion of any procedure, or the stage in the procedure which is relevant to the document in question, which the registrar is required or permitted to carry out under the Act or these Rules.
(3) The right of inspection under paragraph (1) does not apply to—
(a) any document prepared in the Office solely for its own use;
(b) any document sent to the Office, whether at its request or otherwise, for inspection and subsequent return to the sender;
(c) any request for information under rule 56;
(d) any document received by the Office which the registrar considers should be treated as confidential;
(e) any document in respect of which the registrar issues directions under rule 59 that it be treated as confidential.
(4) Nothing in paragraph (1) shall be construed as imposing on the registrar any duty of making available for public inspection—
(a) any document or part of a document which in the registrar’s opinion disparages any person in a way likely to cause damage to that person; or
(b) any document or information filed at or sent to or by the Office before 31st October 1994; or
(c) any document or information filed at or sent to or by the Office after 31st October 1994 relating to an application for registration of a trade mark under the Trade Marks Act 1938(7).
(5) No appeal shall lie from a decision of the registrar under paragraph (4) not to make any document or part of a document available for public inspection.
59.—(1) Where a document (other than a form required by the registrar and published in accordance with rule 3) is filed at the Office and the person filing it requests at the time of filing that it or a specified part of it be treated as confidential, giving reasons for the request, the registrar may direct that it or part of it, as the case may be, be treated as confidential, and the document shall not be open to public inspection while the matter is being determined by the registrar.
(2) Where such direction has been given and not withdrawn, nothing in this rule shall be taken to authorise or require any person to be allowed to inspect the document or part of it to which the direction relates except by leave of the registrar.
(3) The registrar shall not withdraw any direction given under this rule without prior consultation with the person at whose request the direction was given, unless the registrar is satisfied that such prior consultation is not reasonably practical.
(4) The registrar may where the registrar considers that any document issued by the Office should be treated as confidential so direct, and upon such direction that document shall not be open to public inspection except by leave of the registrar.
(5) Where a direction is given under this rule for a document to be treated as confidential a record of the fact shall be filed with the document.
60.—(1) Where an agent has been authorised under section 82, the registrar may in a particular case require the personal signature or presence of the agent or the person authorising the agent to act as agent.
(2) Subject to paragraph (3), where a person appoints an agent for the first time or appoints one agent in substitution for another, the newly appointed agent shall file Form TM33.
(3) Where after a person has become a party to proceedings involving a third party before the registrar, the person appoints an agent for the first time or appoints one agent in substitution for another, the newly appointed agent shall file Form TM33P.
(4) Any act required or authorised by the Act in connection with the registration of a trade mark or any procedure relating to a trade mark may not be done by or to the newly appointed agent until on or after the date on which the newly appointed agent files Form TM33 or TM33P as appropriate.
(5) The registrar may by notice in writing require an agent to produce evidence of his authority under section 82.
61. The registrar may refuse to recognise as agent in respect of any business under the Act—
(a) a person who has been convicted of an offence under section 84;
(b) an individual whose name has been erased from and not restored to, or who is suspended from, the register of trade mark agents on the ground of misconduct;
(c) a person who is found by the Secretary of State to have been guilty of such conduct as would, in the case of an individual registered in that register, render that person liable to have their name erased from it on the ground of misconduct;
(d) a partnership or body corporate of which one of the partners or directors is a person whom the registrar could refuse to recognise under paragraph (a), (b) or (c).
62.—(1) Except where the Act or these Rules otherwise provide, the registrar may give such directions as to the management of any proceedings as the registrar thinks fit, and in particular may—
(a) require a document, information or evidence to be filed within such period as the registrar may specify;
(b) require a translation of any document;
(c) require a party or a party’s legal representative to attend a hearing;
(d) hold a hearing by telephone or by using any other method of direct oral communication;
(e) allow a statement of case to be amended;
(f) stay the whole, or any part, of the proceedings either generally or until a specified date or event;
(g) consolidate proceedings;
(h) direct that part of any proceedings be dealt with as separate proceedings;
(i) exclude any evidence which the registrar considers to be inadmissible.
(2) The registrar may control the evidence by giving directions as to—
(a) the issues on which evidence is required; and
(b) the way in which the evidence is to be placed before the registrar.
(3) When the registrar gives directions under any provision of these Rules, the registrar may—
(a) make them subject to conditions; and
(b) specify the consequences of failure to comply with the directions or a condition.
(4) The registrar may at any stage of any proceedings direct that the parties to the proceedings attend a case management conference or pre-hearing review.
63.—(1) Without prejudice to any provisions of the Act or these Rules requiring the registrar to hear any party to proceedings under the Act or these Rules, or to give such party an opportunity to be heard, the registrar shall, before taking any decision on any matter under the Act or these Rules which is or may be adverse to any party to any proceedings, give that party an opportunity to be heard.
(2) The registrar shall give that party at least fourteen days’ notice, beginning on the date on which notice is sent, of the time when the party may be heard unless the party consents to shorter notice.
64.—(1) Subject to rule 62(2) and as follows, evidence filed in any proceedings under the Act or these Rules may be given—
(a) by witness statement, affidavit, statutory declaration; or
(b) in any other form which would be admissible as evidence in proceedings before the court.
(2) A witness statement may only be given in evidence if it includes a statement of truth.
(3) The general rule is that evidence at hearings is to be by witness statement unless the registrar or any enactment requires otherwise.
(4) For the purposes of these Rules, a statement of truth—
(a) means a statement that the person making the statement believes that the facts stated in a particular document are true; and
(b) shall be dated and signed by—
(i) in the case of a witness statement, the maker of the statement,
(ii) in any other case, the party or legal representative of such party.
(5) In these Rules, a witness statement is a written statement signed by a person that contains the evidence which that person would be allowed to give orally.
(6) Under these Rules, evidence shall only be considered filed when—
(a) it has been received by the registrar; and
(b) it has been sent to all other parties to the proceedings.
65. The registrar shall have the powers of an official referee of the Supreme Court as regards—
(a) the attendance of witnesses and their examination on oath; and
(b) the discovery and production of documents,
but the registrar shall have no power to punish summarily for contempt.
66.—(1) The hearing before the registrar of any dispute between two or more parties relating to any matter in connection with an application for the registration of a mark or a registered mark shall be in public unless the registrar, after consultation with those parties who appear in person or are represented at the hearing, otherwise directs.
(2) Nothing in this rule shall prevent a member of the Administrative Justice and Tribunals Council or of its Scottish Committee from attending a hearing in their capacity as such member.
67. The registrar may, in any proceedings under the Act or these Rules, by order award to any party such costs as the registrar may consider reasonable, and direct how and by what parties they are to be paid.
68.—(1) The registrar may require any person who is a party in any proceedings under the Act or these Rules to give security for costs in relation to those proceedings; and may also require security for the costs of any appeal from the registrar’s decision.
(2) In default of such security being given, the registrar, in the case of the proceedings before the registrar, or in the case of an appeal, the person appointed under section 76 may treat the party in default as having withdrawn their application, opposition, objection or intervention, as the case may be.
69.—(1) The registrar shall send to each party to the proceedings written notice of any decision made in any proceedings before the registrar stating the reasons for that decision and for the purposes of any appeal against that decision, subject to paragraph (2), the date on which the notice is sent shall be taken to be the date of the decision.
(2) Where a statement of the reasons for the decision is not included in the notice sent under paragraph (1), any party may, within one month of the date on which the notice was sent to that party, request the registrar on Form TM5 to send a statement of the reasons for the decision and upon such request the registrar shall send such a statement, and the date on which that statement is sent shall be deemed to be the date of the registrar’s decision for the purpose of any appeal against it.
70.—(1) Except as otherwise expressly provided by these Rules an appeal lies from any decision of the registrar made under these Rules relating to a dispute between two or more parties in connection with a trade mark, including a decision which terminates the proceedings as regards one of the parties or a decision awarding costs to any party (“a final decision”) or a decision which is made at any point in the proceedings prior to a final decision (“an interim decision”).
(2) An interim decision (including a decision refusing leave to appeal under this paragraph) may only be appealed against independently of any appeal against a final decision with the leave of the registrar.
71.—(1) Notice of appeal to the person appointed under section 76 shall be filed on Form TM55 which shall include the appellant’s grounds of appeal and his case in support of the appeal.
(2) Such notice shall be filed with the registrar within the period of 28 days beginning with the date of the registrar’s decision which is the subject of the appeal (“the original decision”).
(3) The registrar shall send the notice and the statement to the person appointed.
(4) Where any person other than the appellant was a party to the proceedings before the registrar in which the original decision was made (“the respondent”), the registrar shall send to the respondent a copy of the notice and the statement and the respondent may, within the period of 21 days beginning with the date on which the notice and statement was sent, file a notice responding to the notice of appeal.
(5) The respondent’s notice shall specify any grounds on which the respondent considers the original decision should be maintained where these differ from or are additional to the grounds given by the registrar in the original decision.
(6) The registrar shall send a copy of the respondent’s notice to the person appointed and a copy to the appellant.
72.—(1) Within 28 days of the date on which the notice of appeal is sent to the respondent by the registrar under rule 71(4);
(a) the registrar; or
(b) any person who was a party to the proceedings in which the decision appealed against was made,
may request that the person appointed refer the appeal to the court.
(2) Where the registrar requests that the appeal be referred to the court, the registrar shall send a copy of the request to each party to the proceedings.
(3) A request under paragraph (1)(b) shall be sent to the registrar following which the registrar shall send it to the person appointed and shall send a copy of the request to any other party to the proceedings.
(4) Within 28 days of the date on which a copy of a request is sent by the registrar under paragraph (2) or (3), the person to whom it is sent may make representations as to whether the appeal should be referred to the court.
(5) In any case where it appears to the person appointed that a point of general legal importance is involved in the appeal, the person appointed shall send to the registrar and to every party to the proceedings in which the decision appealed against was made, notice to that effect.
(6) Within 28 days of the date on which a notice is sent under paragraph (5), the person to whom it was sent may make representations as to whether the appeal should be referred to the court.
73.—(1) Where the person appointed does not refer the appeal to the court, the person appointed shall send written notice of the time and place appointed for the oral hearing of the appeal—
(a) where no person other than the appellant was a party to the proceedings in which the decision appealed against was made, to the registrar and to the appellant; and
(b) in any other case, to the registrar and to each person who was a party to those proceedings.
(2) The person appointed shall send the notice at least fourteen days before the time appointed for the oral hearing.
(3) If all the persons notified under paragraph (1) inform the person appointed that they do not wish to make oral representations then—
(a) the person appointed may hear and determine the case on the basis of any written representations; and
(b) the time and place appointed for the oral hearing may be vacated.
(4) Rules 62, 65, 67 and 68 shall apply to the person appointed and to proceedings before the person appointed as they apply to the registrar and to proceedings before the registrar.
(5) If there is an oral hearing of the appeal then rule 66 shall apply to the person appointed and to proceedings before the person appointed as it applies to the registrar and to proceedings before the registrar.
(6) A copy of the decision of the appointed person shall be sent, with a statement of the reasons for the decision, to the registrar and to each person who was a party to the appeal.
74.—(1) Subject to rule 77, the registrar may authorise the rectification of any irregularity in procedure (including the rectification of any document filed) connected with any proceeding or other matter before the registrar or the Office.
(2) Any rectification made under paragraph (1) shall be made—
(a) after giving the parties such notice; and
(b) subject to such conditions,
as the registrar may direct.
75.—(1) The registrar may certify any day as an interrupted day where—
(a) there is an event or circumstance causing an interruption in the normal operation of the Office; or
(b) there is a general interruption or subsequent dislocation in the postal services of the United Kingdom.
(2) Any certificate of the registrar made under paragraph (1) shall be displayed in the Office and published on the Office website.
(3) The registrar shall, where the time for doing anything under these Rules expires on an interrupted day, extend that time to the next following day not being an interrupted day (or an excluded day).
(4) In this rule—
“excluded day” means a day which is not a business day as specified in a direction given by the registrar under section 80; and
“interrupted day” means a day which has been certified as such under paragraph (1).
76.—(1) The registrar shall extend any time limit in these Rules where the registrar is satisfied that the failure to do something under these Rules was wholly or mainly attributed to a delay in, or failure of, a communication service.
(2) Any extension under paragraph (1) shall be—
(a) made after giving the parties such notice; and
(b) subject to such conditions,
as the registrar may direct.
(3) In this rule “communication service” means a service by which documents may be sent and delivered and includes post, facsimile, email and courier.
77.—(1) Subject to paragraphs (4) and (5), the registrar may, at the request of the person or party concerned or at the registrar’s own initiative extend a time or period prescribed by these Rules or a time or period specified by the registrar for doing any act and any extension under this paragraph shall be made subject to such conditions as the registrar may direct.
(2) A request for extension under this rule may be made before or after the time or period in question has expired and shall be made—
(a) where the application for registration has not been published and the request for an extension is made before the time or period in question has expired, in writing ; and
(b) in any other case, on Form TM9.
(3) Where an extension under paragraph (1) is requested in relation to proceedings before the registrar, the party seeking the extension shall send a copy of the request to every other person who is a party to the proceedings.
(4) The registrar shall extend a flexible time limit, except a time or period which applies in relation to proceedings before the registrar or the filing of an appeal to the Appointed Person under rule 71, where—
(a) the request for extension is made before the end of the period of two months beginning with the date the relevant time or period expired; and
(b) no previous request has been made under this paragraph.
(5) A time limit listed in Schedule 1 (whether it has already expired or not) may be extended under paragraph (1) if, and only if—
(a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the registrar, the Office or the International Bureau; and
(b) it appears to the registrar that the irregularity should be rectified.
(6) In this rule—
“flexible time limit” means—
a time or period prescribed by these Rules, except a time or period prescribed by the rules listed in Schedule 1, or
a time or period specified by the registrar for doing any act or taking any proceedings; and
“proceedings before the registrar” means any dispute between two or more parties relating to a matter before the registrar in connection with a trade mark.
78. The registrar may permit as an alternative to the sending by post or delivery of the application, notice or other document in legible form the filing of the application, notice or other document by electronic means subject to such terms or conditions as the registrar may specify either generally by published notice or in any particular case by written notice to the person desiring to file any such documents by such means.
79.—(1) The delivery using electronic communications to any person by the registrar of any document is deemed to be effected, unless the registrar has otherwise specified, by transmitting an electronic communication containing the document to an address provided or made available to the registrar by that person as an address for the receipt of electronic communications; and unless the contrary is proved such delivery is deemed to be effected immediately upon the transmission of the communication.
(2) In this rule “electronic communication” has the same meaning as in the Electronic Communications Act 2000(8).
80. Any directions given by the registrar under section 80 specifying the hours of business of the Office and business days of the Office shall be published on the Office website.
81. The registrar shall publish a journal, entitled “The Trade Marks Journal” containing such information as is required to be published in the Journal under these Rules and such other information as the registrar thinks fit.
82.—(1) Where any document or part thereof which is in a language other than English is filed or sent to the registrar in pursuance of the Act or these Rules, the registrar may require that there be furnished a translation into English of the document or that part, verified to the satisfaction of the registrar as corresponding to the original text.
(2) The registrar may refuse to accept any translation which the registrar considers to be inaccurate in which event there shall be furnished another translation of the document in question verified in accordance with paragraph (1).
83.—(1) The instruments set out in Schedule 2 (“the previous rules”) are revoked to the extent specified.
(2) Where immediately before these Rules come into force, any time or period prescribed by the previous rules has effect in relation to any act or proceeding and has not expired, the time or period prescribed by the previous rules and not by these Rules shall apply to that act or proceeding.
(3) Except as provided by paragraph (4) where a new step is to be taken on or after 1st October 2008 in relation to any proceedings commenced under the previous rules these Rules shall apply to such proceedings from that date.
(4) Subject to paragraph (5) where prior to the entry into force of these Rules-
(a) a Form TM8 and counter-statement have been filed in-
(i) opposition proceedings, or
(ii) proceedings for the revocation of a trade mark on the grounds set out in section 46(1)(c ) or (d); or
(iii) invalidation proceedings; or
(b) an application for revocation of a trade mark on the grounds set out in section 46(1)(a) or (b) has been filed,
the previous rules shall apply with regard to the filing of any evidence in relation to those proceedings.
(5) Where proceedings as described in paragraph (4) are consolidated with proceedings commenced on or after 1st October 2008 these Rules shall apply with regard to the filing of any evidence in relation to those consolidated proceedings.
Baroness Morgan of Drefelin
Parliamentary Under Secretary of State for Intellectual Property and Quality
Department for Innovation, Universities and Skills
7th July 2008