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S T A T U T O R Y I N S T R U M E N T S

2008 No. 1958

TRADE MARKS

The Trade Marks (Fees) Rules 2008

Made - - - - 21st July 2008

Laid before Parliament 23rd July 2008

Coming into force - - 1st October 2008

The Secretary of State makes the following Rules in exercise of the powers conferred by section 79 of the Trade Marks Act 1994(a) (“the Act”) and of the power conferred by the Department of Trade and Industry (Fees) Order 1988(b).

Citation, commencement and interpretation

1.—(1) These Rules may be cited as the Trade Marks (Fees) Rules 2008 and shall come into force on 1st October 2008.

(2) These Rules shall be construed as one with the Trade Marks Rules 2008(c) (“the 2008 Rules”).

Fees payable

2.—(1) The fees to be paid in respect of any matters arising under the Act and the 2008 Rules shall be those specified in the Schedule to these Rules.

(2) In any case where a form specified in the Schedule as the corresponding form in relation to any matter is specified in the 2008 Rules, that form shall be accompanied by the fee specified in respect of that matter (unless the 2008 Rules otherwise provide).

Repayment of fee

3.—(1) Where the registrar— (a) has received a request for expedited examination of an application for registration of a

trade mark under rule 5(2) of the 2008 Rules; and (b) following the expiry of a period of ten business days (as specified in a direction given by

the registrar under section 80 of the Act) beginning on the business day after the date of filing of the application for registration, notifies the applicant, in accordance with rule 15 of the 2008 Rules, whether or not it appears to the registrar that the requirements for registration are met,

the registrar shall repay the fee specified in the Schedule in respect of a request for expedited examination.

(a) 1994 c.26. (b) S.I. 1988/93 as amended by S.I. 1990/1473, which was made under section 102 of the Finance (No. 2) Act 1987 (c.51). (c) S.I. 2008/1797.

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(2) Where a fee has been paid in error, the registrar shall repay the same; and where a fee is paid in excess of the amount specified, the registrar shall remit the amount paid in excess.

Revocations

4. The following instruments are revoked— (a) The Trade Marks (Fees) Rules 2000(a) save insofar as they relate to fees payable in

respect of matters arising under the Trade Marks (International Registration) Order 1996(b)

(b) The Trade Marks (Fees) (Amendment) Rules 2007(c); (c) The Trade Marks and Trade Marks (Fees) (Amendment) Rules 2008(d).

Baroness Morgan of Drefelin Parliamentary Under Secretary of State for Intellectual Property and Quality

21st July 2008 Department for Innovation, Universities and Skills

SCHEDULE Rule 2

Fees Payable

(In this section references to a rule are references to that rule in the 2008 Rules)

Number of corresponding form

Item Amount

£ TM3 Application for registration of a trade mark (rule 5) or a series

of trade marks (rule 28) 200

TM3 Request to the Registrar for expedited examination of application for registration of a trade mark (rule 5(2))

300

TM3 Class fee (rule 5), for each class over one 50 TM3A Application for additional classes following examination of a

mark (rule 8(4)), for each additional class 50

TM5 Request to the registrar for a statement of the reasons for his decision (rule 69(2))

100

TM6 Request to the registrar by the proprietor of a Community trade mark or international trade mark (EC) to be notified of the results of a search of the register (rule 14(4))

50

TM7 Notice of opposition to the registration of a mark (rule 17(1)), to the amendment of an application (rule 25(2)), or to the amendment of the regulations relating to a certification or collective trade mark (rule 30(4)), to the alteration of a registered trade mark (rule 32(3)), to the removal of matter from the register (rule 53(2)(a)), to the reclassification of a mark in accordance with the relevant Nice Classification (rule 55(1))

200

(a) S.I. 2000/137. (b) S.I. 1996/714 as amended by S.I. 2000/138, S.I. 2002/692, S.I. 2004/948, S.I. 2006/763 and S.I. 2006/1080. (c) S.I. 2007/2077. (d) S.I. 2008/11.

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TM9 Request for extension of time (rule 77(2)) 50 TM11 Renewal of registration (rule 35) 200 TM11 Class fee for each class over one (rule 35) 50 TM11 Delayed renewal of registration (rule 36(2)) 50 TM12 Request for division of an application (rule 26(1)) 100 TM13 Request for the restoration and renewal of a registration

removed from the register for failure to renew (rule 37(1)) 100

TM16 Request to enter details of an assignment (rule 49(1)(a)) 50 TM26 (N) Request for the revocation of a registration (on grounds of non-

use) (rule 38) 200

TM26 (O) Request for the revocation of a registration (on grounds other than non-use) (rule 39)

200

TM26 (I) Request for the invalidation of a registration (rule 41) 200 TM31C Request for information about applications and registered trade

marks (rule 56) 20

TM31R Request for certified copy of an entry on the register (rule 51), per certificate

20

TM35 Filing of regulations governing the use of a certification or collective mark (rule 29)

200

TM36 Request to amend regulations governing the use of a certification or collective mark (rule 30(1))

100

EXPLANATORY NOTE

(This note is not part of the Rules)

These Rules prescribe fees in relation to matters arising under the Trade Marks Act 1994 (“the Act”) and the Trade Marks Rules 2008 (SI 2008/1797) (which revoked and replaced the Trade Marks Rules 2000 (SI 2000/136) (“the 2000 Rules”). These Rules revoke and replace the Trade Marks (Fees) Rules 2000 (SI 2000/137) (“the Fees Rules”) insofar as they relate to fees payable under the Act and the 2000 Rules. No change has been made to the level of fees nor to the circumstances in which a fee is payable. The Fees Rules continue to prescribe fees in relation to matters arising under the Trade Marks (International Registration) Order 1996 (SI 1996/714).

Where a form is specified in the Schedule in relation to any matter, that form must be sent to the registrar together with the relevant fee for that matter, unless the Trade Marks Rules 2008 specify otherwise (rule 2).

Rule 3 specifies the circumstances in which the registrar shall repay a fee or any amount paid in excess of the specified fee.

A separate impact assessment has not been produced for this instrument as it is made in consequence of the revocation and replacement of the 2000 Rules by the Trade Marks Rules 2008. However, a full impact assessment of the effect that the Trade Marks Rules 2008 will have on the costs of business and the voluntary sector is available from the UK Intellectual Property Office, Trade Marks Law Section, Concept House, Cardiff Road, Newport NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside that instrument on the OPSI website. Copies have also been placed in the libraries of both Houses of Parliament.

£3.00 Crown copyright 2008

Printed and published in the UK by The Stationery Office Limited under the authority and superintendence of Carol Tullo, Controller of Her Majesty’s Stationery Office and Queen’s Printer of Acts of Parliament. E2836 7/2008 182836T 19585