Jane Lambert
3 May
2000
This
case note first appeared on the Old Colony House website
The Trade Marks Rules 2000 are substantially similar to 1994 Rules but the following are new:
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Applications for registration of 3-dimensional marks and marks in which colour is an element must contain statements to that effect, and an application to register a word mark is to be treated as an application to register the word in the graphical form shown in the application unless there is a statement that it is for the registration of the word without regard to its graphical form (rule 5 (2), (3) and (4)). |
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New procedures are provided for opposition proceedings under s. 38 (2) of the Trade Marks Act 1994 (rule 13). |
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Instead of a common procedure for applications for revocation, declarations of invalidity and rectification there are new separate procedures for revocation on grounds of non-use under s.46 (1) (a) and (b) of the Act (rule 31), revocation under s.46 (1) (c) and (d) (rule 32), declarations of invalidity under s.47 (rule 33) and rectification under s. 64 (rule 34). |
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Provision is made for case management conferences and pre-hearing reviews (rules 36 and 37). |
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Evidence may be given by witness statements verified by statements of truth instead of by statutory declaration or affidavit (rule 55). |
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Time limits for appeals to the appointed person are reduced from one month to 28 days (rules 63 and 64). |
Rule 74 (3) provides that where any new
step is to be taken on or after the 26 April 2000 (coincidentally, the
first anniversary of the CPR) in relation to any proceedings commenced
under the Trade Marks Rules 1994 the new rules shall apply to
proceedings from that date.
New Opposition Procedure
There are two significant differences from the previous practice. The
first applies where an application to register a trade mark is opposed
on the basis of an earlier trade mark. Rule 13 (2) requires the notice
of opposition to include a representation of that mark and the classes
and goods and services in respect of which that mark is registered, or
if it is not registered, used. Where the earlier mark is either:
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a registered trade mark, international trade mark (UK) or Community trade mark which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks; or |
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a Community trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK); |
the notice must also include the
application and/or registration number of that mark and the number of
the publication in which it was published unless it is subject of an
application not yet published. The second significant difference is that
the registrar may grant a renewable extension to the period in which
applicant may file his counter-statement to a notice of opposition under
rule 13 (4) known as "the cooling off period" provided the
opposing party consents.
New Revocation Procedure
Different procedures with different time limits now apply to
applications for revocation of the registration of a trade mark on the
grounds of non-use under s. 46 (1) (a) or (b) of the 1994 Act and
applications for revocation on other grounds. There is also specific
provision for the registrar to ask the parties whether they want a
hearing. Rule 31 (1) requires applications for revocation on grounds of
non-use are now made on Form TM26(N).
The proprietor has 3 months under rule 31 (2) in which to respond to the application by filing a notice and counter statement in Form TM8 and either 2 copies of evidence of use made of the mark or reasons for none-use of the mark. Upon completion of the evidence the parties will be asked whether they wish to be heard.
Applications for revocation of the registration of a mark on the grounds that:
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it has become the common name in the trade for a product or service in consequence of the proprietor's acts or inactivity under s.46 (1) (c) of the 1994 Act, or |
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it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services, in consequence of the use made of it by the proprietor or with his consent in relation to the registered goods or services under s.46 (1) (d), |
are now made on Form TM26 (O) (rule 32
(1)). The proprietor has 6 weeks instead of 3 months in which to respond
(rule 32 (2)) and the applicant 6 weeks instead of 3 months in which to
serve evidence in reply (rule 32 (4)).
Applications for Declaration of Invalidity
An application for a declaration of invalidity under s.47 of the 1994
Act must now be made in Form TM26 (I) (rule 33 (1)). The proprietor now
has 6 weeks instead of 3 months in which to respond and the applicant 6
weeks instead of 3 months in which to file evidence.
Applications for Rectification
Applications for rectification of an error or omission under s.64 (1) of
the 1994 Act are made on Form TM26 (R) together with a statement of the
grounds on which the application is made and any evidence in support of
the grounds (rule 34 (1)). If the application is made by anybody other
than the proprietor of the mark the registrar will serve the application
on the proprietor together with such directions as she thinks fit (rule
34 (2)).
Case Management Conference
The registrar has power to call a case management conference under rule
36 where the parties may be heard with regard to the future conduct of
the proceedings and the proposed exercise of the registrar's powers.
Pre-hearing Review
The Registrar may also direct the parties to attend a pre-hearing review
upon not less than 14 days notice at which she may give such directions
as to the conduct of the hearing as she may think fit under rule 37.
Evidence
Evidence before the registrar continues to be by statutory
declaration or affidavit, but she may direct for a particular case that
evidence may be given by a witness statement verified by a statement of
truth (rule 55 (3)). She can also admit oral evidence in lieu of or in
addition to written evidence (rule 55 (2)). The practice and procedure
of the High Court with regard to witness statements and statements of
truth will apply to proceedings under the The Trade Marks Rules 2000.
Curiously, in view of the metamorphosis of the official referee into the
Technology and Construction Court, rule 58 states that the registrar has
in relation to the examination of witnesses and the disclosure and
production of documents all the powers of an official referee.
Fees
It now costs £200 to apply to register a mark, oppose an application for
registration or apply for revocation of or declaration of invalidity in
respect of a registered mark. No fee is charged for an application for
rectification of the register.
Conclusion
The new Trade Marks Rules are the last of the statutory rules to be
changed following the Patent Office's review of its procedures in the
wake of the Woolf reports. Similar changes had already been made to the
patents, registered designs and design right procedures on the 22
December 1999 by
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the Design Right (Proceedings before Comptroller) (Amendment) Rules 1999. |
These changes in the secondary legislation have now been complemented by the Tribunal Practice Notice Practice in Proceedings Before the Comptroller (TPN 1/2000) and the Costs in Proceedings Before the Comptroller Notice (TPN 2/2000) which import many of the CPR practices with effect from the 26 April 2000.
Important
