WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
of Intellectual Property Rights IP/N/I/GBR/T/2 
1 May 1996 
(96-1680) 
Original: English! 
anglais/ 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
United Kingdom 
The present document reproduces the Trade Marks Rules 19941, as notified by the 
United Kingdom under Article 63.2 of the Agreement (see document IP/N/lIGBRlI). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE DE 
L'ARTICLE 63:2 DE L'ACCORD 
Royaume-Uni 
Le present document contient le texte du Reglement de 1994 sur les marques 1 , notifie par le 
Royaume-Uni au titre de l'article 63:2 de l' Accord (voir le document IP/N/lIGBRlI). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PA.RRAFO 2 DEL ARTICULO 63 DEL ACUERDO 
Reino Unido 
En el presente documento se reproduce el Reglamento sobre Marcas de Fabrica 0 de Comercio 
de 19941, notificado por el Reino Unido en virtud de 10 dispuesto en el parrafo 2 del articulo 63 del 
Acuerdo (vease e1 documento IP/N/l/GBR/I). 
lIn English only/en anglais seulement/en ingh!s solamente. IP/N/lIGBRlT/2 
Page 2 
STATUTORY INSTRUMENTS 
1994 No. 2583 
TRADEMARKS 
The Trade Marks Rules 1994 
Made - 5th October 1994 
Laid before Parliament 7th October 1994 
Coming into force 31st October 1994 
ARRANGEMENT OF RULES 
Preliminary 
1 Citation and commencement 
2 Interpretation 
3 Forms and directions of the registrar under s. 66 
4 Requirement as to fees 
Application for registration 
5 Application for registration; s. 32 
6 Claim to priority; ss. 35 & 36 
7 Classification of goods and services; s. 34 
8 Application may relate to more than one class and shall specify the class 
9 Prohibition on registration of mark consisting of arms; s. 4 
10 Address for service 
11 Deficiencies in application: s. 32 
Publication, observations, opposition and registration 
12 Publication of application for registration; s. 38(1) 
13 Opposition proceedings; s. 38(2) 
14 Decision of registrar in opposition proceedings 
15 Observations on application to be sent to applicant; s. 38(3) 
16 Publication of registration; s. 40 
Amendment of application 
17 Amendment of application; s. 39 
18 Amendment of application after publication; s. 39 
Division, merger and series of marks 
19 Division of application; s. 41 
20 Merger of separate applications or registrations; s. 41 
21 Registration of a series of trade marks; s. 41 Collective and certification marks IP IN I I/GBR/T 12 
Page 3 
22 Filing of regulations for collective and certification marks; Schs. 1 & 2 
. 23 Amendment of regulations of collective and certification marks; Sch. 1 para. 10 & 
Sch. 2 para. 11 
Disclaimers, limitations and alteration or surrender of registered trade mark 
24 Registration subject to disclaimer or limitation; s. 13 
25 Alteration of registered trade mark; s. 44 
26 Surrender of registered trade mark; s. 45 
Renewal and restoration 
27 Reminder of renewal of registration; s. 43 
28 Renewal of registration; s. 43 
29 Delayed renewal and removal of registration; s. 43 
30 Restoration of registration; s. 43 
Revocation, invalidation and rectification 
31 Procedure on application for revocation, declaration of invalidity and rectification 
of the register; ss. 46, 47 & 64 
The register 
32 Form of register; s. 63(3) 
33 Entry in register of particulars of registered trade marks; s. 63 
34 Entry in register of particulars of registrable transactions; s. 25 . 
35 Application to register or give notice of transaction; ss. 25 & 27(3) 
36 Public inspection of register; s. 63(3) 
37 Supply of certified copies, etc; s. 63(3) 
38 Request for change of name or address in register; s. 64(4) 
39 Removal of matter from register; s. 64(5) 
Change of classification 
40 Change of classification; ss. 65(2) & 76(1) 
41 Opposition to proposals; ss. 65(3) & 76( 1) 
Request for information, inspection of documents and confidentiality 
42 Request for information; s. 67(1) 
43 Information available before publication; s. 67(2) 
44 Inspection of documents; ss. 67 & 76(1) 
45 Confidential documents 
Agents 
46 Proof of authorisation of agent may be required; s. 82 
47 Registrar may refuse to deal with certain agents; s. 88 
Decision of registrar, evidence and costs 
48 Decisions of registrar to be taken after hearing 
49 Evidence in proceedings before registrar; s. 69 
50 Making and subscription of statutory declaration or affidavit 
51 Registrar's power to require documents, information or evidence 
52 Registrar to have power of an official referee; s. 69 
53 Hearings before registrar to be in public 
54 Costs of proceedings; s. 68 
55 Security for costs; s. 68 
56 Decision of registrar 
Appeals 
57 Appeal to person appointed; s. 76 
58 Determination whether appeal be referred to Court; s. 76(3) 
59 Hearing of appeal; s. 76(4) IP/N/lIGBRlT/2 
Page 4 
Correction of irregularities, calculation and extension of time 
60 Correction of irregularities of procedure 
61 Calculation of times and periods 
62 Alteration of time limits 
Filing of documents, hours of business, Trade Marks Journal and translations 
63 Filing of documents by electronic means 
64 Directions on hours of business; s. 80 
65 Trade Marks Journal; s. 81 
66 Translations 
Transitional provisions and revocations 
67 Pending applications for registration; Sch. 3, para. 10(2) 
68 Form for conversion of pending application; Sch. 3, para. 11(2) 
69 Revocation of previous Rules 
Schedules 
Schedule I-Revocations 
Schedule 2-Form of Notice under Sch.3, para. 11 
Schedule 3-Classification of goods (pre-1938) 
Schedule 4--Classification of goods and services 
The Secretary of State, in exercise of the powers conferred upon him by sections 4(4), 13(2), 
25(1), (5) and (6), 34(1), 35(5), 38(1) and (2),39(3),40(4),41(1) and (3), 43(2), (3), (5) and 
(6),44(3),45(2),63(2) and (3), 64(4), 65, 66(2), 67(1) and (2), 68(1) and (3),69, 76(1), 78, 
80(3),81,82 and 88 of, paragraph 6(2) of Schedule I to, paragraph 7(2) of Schedule 2 to, 
and paragraphs 10(2), 11(2), 12 and 14(5) of Schedule 3 to, the Trade Marks Act 1994{a), 
after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals 
and Inquiries Act 1992(b), hereby makes the following Rules:-
Preliminary 
Citation and 1. These Rules may be cited as the Trade Marks Rules 1994 and shall come into force 
commencement on 31st October 1994. 
Interpretation 2.-(1) In these Rules, unless the context otherwise requires-
"the Act" means the Trade Marks Act 1994; 
"the Journal" means the Trade Mar ks Journal pu blished in accordance with rule 65 below; 
"the Office" means the Patent Office; 
"old law" means the Trade MarksAct 1938(c) (as amended) and any rules made thereunder 
existing immediately before the commencement of the Act; 
"proprietor" means the person registered as the proprietor of the trade mark; 
"publish" means publish in the Journal; 
"send" includes give; 
"specification" means the statement of goods or services in respect of which a trade mark 
is registered or proposed to be registered; 
"United Kingdom" includes the Isle of Man. 
(2) In these Rules, except where otherwise indicated, a reference to a section is a 
reference to that section in the Act, a reference to a rule is a reference to that rule in these 
Rules, a reference to a Schedule is a reference to that Schedule to these Rules and a reference 
to a form is a reference to that form as published by the registrar under rule 3 below. 
(3) In these Rules references to the filing of any application, notice or other document 
are to be construed as references to its being sent or delivered to the registrar at the Office. 
(a) ) 994 c.26. 
(b) 1992 c.S3. 
(c) 1938 c.22. 
251060 B· Forms and 
directions r)' 
the registr:' 
unders.66 IP/N/1/GBRlT/2 
Page 5 
3.-(1) Any forms required by the registrar to be used for the purpose of registration 
r:-f a trade mark or any other proceedings before him under the Act pursuant to section 66 
and any directions with respect to their use shall be published and any amendment or 
modification of a form or of the directions with respect to its use shall be published(a). 
(2) A requirement under this rule to use a form as published is satisfied by the use either 
of a replica of that form or of a form which is acceptable to the registrar and contains the 
information required by the form as published and complies with any directions as to the 
use of such a form. 
Requirement as 4.-(1) The fees to be paid in respect of any application, registration or any other 
to fees matter under the Act and these Rules shall be those (if any) prescribed in relation to such 
matter by rules under section 79 (fees)(b). 
(2) Any form required to be flied with the registrar in respect of any specified matter shall 
be subject to the payment of the fee (if any) prescribed in respect of that matter by those rules. 
Application for registration 
Applications 5. An application for the registration of a trade mark shall be filed on Form TM3 and 
for registration; shall be subject to the payment of the application fee and such class fees as may be s.32 . 
(Form TM3) appropnate. 
Claim to 6.-(l) Where a right to priority is claimed by reason of an application for protection 
~;.i~~ii; 36 of a trade mark duly filed in a Convention country under section 35 or in another country 
or territory in respect of which provision corresponding to that made by section 35 is made 
under section 36, particulars of that claim shall be included in the application for 
registration under rule 5 above and, where no certificate as is referred to in paragraph (2) 
below is filed with the application, such particulars shall include the country or countries 
and the date or dates of filing. 
Classification 
of goods and 
services; s. 34 
Application 
may relate to 
more than one 
class and shall 
specify the 
class 
(Form TM3A) (2) Unless it has been filed at the time of the filing of the application for regist'ration, 
there shall be filed, within three months of the filing of the application under rule 5, a 
certificate by the registering or other competent authority of that country certifying, or 
verifying to the satisfaction of the registrar, the date of the filing of the application, the 
country or registering or competent authority, the representation of the mark, and the 
goods or services covered by the application. 
7.-(1) For the purposes of trade mark registrations in respect of goods dated before 
27th July 1938, goods are classified in accordance with Schedule 3 to these Rules, except 
where a specification has been converted, whether under the old law or under rule 40 below, 
to Schedule 4. 
(2) For the purposes of trade mark registrations in respect of goods dated on or after 
27th July 1938 and for the purposes of any registrations dated before that date in respect 
of which the specifications were converted under the old law, and for the purposes of trade 
mark registrations in respect of services, goods and services are classified in accordance 
with Schedule 4, which sets out the current version of the classes of the International 
Classification of Goods and Services(c). 
8.-{1) An application may be made for registration in more than one class of Schedule 4. 
(2) Every application shall specify the class in Schedule 4 to which it relates; and if the 
application relates to more than one class in that Schedule the specification contained in 
it shall set out the classes in consecutive numerical order and list under each class the goods 
or services appropriate to that class. 
(3) If the specification contained in the application lists items by reference to a class in 
Schedule 4 in which they do not fall, the applicant may request, by filing Form TM3A, that 
his application be amended to include the appropriate class for those items, and upon the 
payment of such class fee as may be appropriate the registrar shall amend his application 
accordingly. 
(a) The forms required to be used are published in the special edition of the Trade Marks Journal dated 31 st October 
1994. 
(b) See the Trade Marks (Fees) Rules 1994, S.1. 258411994. 
,<c) The International Classification is drawn up under the Nice Agreement concerning the International Classification 
of Goods and Services for the purposes of the Registration of marks of 15th June 1957 (as last revised on 13th May 
1977) (Cmnd 6898). The current version of the International Classification is the Sixth Edition, which entered into 
force on 1st January 1992. IP/NIlIGBRlT/2 
Page 6 
Pro.hibit~on on 9. Where a representation of any arms or insignia as is referred to in section 4(4) appears 
reglsktratlo? t~f on a mark, the registrar shall refuse to accept an application for the registration ofthemark mar consls mg . . . 
of arms; s. 4 unless satIsfied that the consent of the person entItled to the arms has been obtamed. 
Address for 10.-(1) For the purposes of any proceedings before the registrar under these Rules or 
~e;;;c:, TM33) any appeal from a decision of the registrar under the Act or these Rules, an address for 
Deficiencies in 
application: 
s. 32 
Publication of 
application for 
registration; 
s. 38(1) 
Opposition 
proceedings; 
s.38(2) 
(Forms TM7 
&TM8) service in the United Kingdom shall be filed by-
(a) every applicant for the registration of a trade mark; 
(b) every person opposing an application for registration of a trade mark; 
(c) every applicant applying to the registrar under section 46 for the revocation of the 
registration ofa trademark, under section 47 for the invalidation oftheregistration 
of a trade mark, or under section 64 for the rectification of the register; 
(d) every person granted leave to intervene under rule 31(5) (the intervener); and 
(e) every proprietor of a registered trade mark which is the subject of an application 
to the registrar for the revocation, invalidation or rectification of the registration 
of the mark. 
(2) The address for service of an applicant for registration of a trade mark shall upon 
registration of the mark be deemed to be the address for service of the registered proprietor, 
subject to any filing to the contrary under paragraph (1) above or rule 38(2) below. 
(3) In any case in which an address for service is filed at the same time as the filing of 
a form required by the registrar under rule 3 which requires the furnishing of an address for 
service, the address shall be filed on that form and in any other case it shall be filed on Form 
TM33. 
(4) Anything sent to any applicant, opponent, intervener or registered proprietor at his 
address for service shall be deemed to be properly sent; and the registrar may, where no 
address for service is filed, treat as the address for service of the person concerned his trade 
or business address in the United Kingdom, if any. 
(5) An address for service in the United Kingdom may be filed at any time by the 
proprietor of a registered trade mark and by any person having an interest in or charge on 
a registered trade mark which has been registered under rule 34. 
(6) Where an 'address for service is not filed as required by paragraph (1) above, the 
registrar shall send the person concerned notice to file an address for service within two 
months of the date of the notice and if that person fails to do so--
(a) in the case of an applicant as is referred to in sub-paragraph (a) or (c), the 
application shall be treated as abandoned; 
(b) in the case of a person as is referred to in sub-paragraph (b) or (d), he shall be 
deemed to have withdrawn from the proceedings; and 
(c) in the case of the proprietor referred to in sub-paragraph (e), he shall not be 
permitted to take part in any proceedings. 
11. Where an application for registration ofa trademark does not satisfy the requirements 
of section 32(2), (3) or (4) or rule 5 or 8(2), the registrar shall send notice thereof to the 
applicant to remedy the deficiencies or, in the case of section 32(4), the default of payment 
and if within two months of the date of the notice the applicant-
(a) fails to remedy any deficiency notified to him in respect of section 32(2), the 
application shall be deemed never to have been made; or 
(b) fails to remedy any deficiency notified to him in respect of section 32(3) or rule 5 
or 8(2) or fails to make payment as required by section 32(4), the application shall 
be treated as abandoned. 
Publication, observations, oppositions and registration 
12. An application which has been accepted for registration shall be published. 
13.-(1) Notice of opposition to the registration of a trade mark shall be sent to the 
registrar on Form TM7 within three months of the date on which the application was 
published under rule 12, and shall include a statement of the grounds of opposition; the 
registrar shall send a copy of the notice and the statement to the applicant. Decision of 
registrar in 
opposition 
proceedings IP/N/1/GBRlT/2 
Page 7 
(2) Within three months of the date on which a copy of the statement is sent by the 
registrar to the applicant the applicant may file, in conjunction with notice of the same on 
Form TM8, a counter-statement; the registrar shall send a copy of the Form TM8 and the 
counter-statement to the person opposing the application. 
(3) Within three months of the date on which a copy of the counter-statement is sent 
by the registrar to the person opposing the registration, that person shall file such evidence 
by way of statutory declaration or affidavit as he may consider necessary to adduce in 
support of his opposition and shall send a copy thereof to the applicant. 
(4) lfthe person opposing the registration files no evidence under paragraph (3) above, 
he shall, unless the registrar otherwise directs, be deemed to have abandoned his opposition. 
(5) If the person opposing the registration files evidence under paragraph (3) above or 
the registrar otherwise directs under paragraph (4) above, the applicant shall, within three 
months of the date on which either a copy of the evidence or a copy of the direction is sent 
to the applicant, file such evidence by way of statutory declaration or affidavit as he may 
consider necessary to adduce in support of his application, and shall send a copy thereof 
to the person opposing the application. 
(6) Within three months of the date on which a copy of the applicant's evidence is sent 
to him, the person opposing the application may file evidence in reply by statutory 
declaration or affidavit which shall be confined to matters strictly in reply to the applicant's 
evidence, and shall send a copy thereof to the applicant. 
(7) No further evidence may be filed, except that, in relation to any proceedings before 
him, the registrar may at any time if he thinks fit give leave to either party to file evidence 
upon such terms as he may think fit. 
(8) Upon completion of the evidence the registrar shall, if a hearing is requested.by any 
party to the proceedings, send to the parties notice of a date for the hearing. 
14.-( 1) When the registrar has made a decision on the acceptability of an application 
for registration following the procedure under rule 13, he shall send the applicant and the 
person opposing the application written notice of it, stating the reasons for his decision. 
(2) For the purpose of any appeal against the registrar's decision the date of the 
decision shall be the date when notice of the decision is sent under paragraph (1) above. 
Obs~rva.tions on 15. The registrar shall send to the applicant a copy of any documents containing 
applicatIOn ~o be observations made under section 38(3). sent to applIcant; 
s. 38(3) 
Publication of 
registration; 
s.40 16. On the registration of the trade mark the registrar shall publish the .registration, 
specifying the date upon which the trade mark was entered in the register. 
Amendment of application 
Amendment of 17. A request for an amendment of an application to correct an error or to change the 
application; name or address of the applicant or in respect of any amendment requested after s. 39 
(Form TM21) publication of the application shall be made on Form TM21. 
Amendment 
of application 
after 
publication; 
s. 39 18.-(1) Where, pursuant to section 39, a request is made for amendment of an 
application which has been published and the amendment affects the representation of the 
trade mark or the goods or services covered by the application, the amendment or a 
statement of the effect of the amendment shall also be published. 
(2) Notice of opposition to the amendment shall be sent to the registrar on Form TM7 
within one month of the date on which the application as amenced was published under 
paragraph (1) above, and shall include a statement of the grounds of objection and, in 
particular, how the amendments would be contrary to section 39(2). 
(3) The provisions of rule 13 shall apply to proceedings relating to the opposition to the 
amendment of the application as they apply to proceedings relating to opposition to the 
registration of a trade mark. Division of 
application; 
s.41 
(Form TM12) 
Merger of 
separate 
applications or 
registrations; 
s.41 
(Form TMJ7) IP/N/lIGBRlT 12 
Page 8 
Division, merger and series of marks 
19.-(1) At any time beforeregistration an applicant may send to the registrar a request 
on Form TM12 for a division of his application for registration (the original application) 
into two or more separate applications (divisional applications), indicating for each 
division the specification of goods or services; each divisional application shall be treated 
as a separate application for registration with the same filing date as the original application. 
(2) Where the request to divide an application is sent after publication ofthe application, 
any objections in respect of, or opposition to, the original application shall be taken to 
apply to each divisional application and shall be proceeded with accordingly. 
(3) Upon division of an original application in respect of which notice has been given 
to the registrar of particulars relating to the grant of a licence, or a security interest or any 
right in or under it, the notice and the particulars shall be deemed to apply in relation to 
each of the applications into which the original application has been divided. 
20.-(1) An applicant who has made separate applications for registration of a mark 
may, at any time before preparations for the publication of any of the applications have 
been completed by the Office, request the registrar on Form TM17 to merge the separate 
applications into a single application. 
(2) The registrar shall, if satisfied that all the applications which are the subject of the 
request for merger-
(a) are in respect of the same trade mark, 
(b) bear the same date of application, and 
(c) are, at the time of the request, in the name of the same person, 
merge them into a single application. 
(3) The proprietor of two or more registrations of a trade mark may request the 
registrar on Form TM17 to merge them into a single registration; and the registrar shall, 
if satisfied that the registrations are in respect of the same trade mark, merge them into a 
single registration. 
(4) Where any registration of a trade mark to be merged under paragraph (3) above is 
subject to a disclaimer or limitation, the merged registration shall also be restricted 
accordingly. 
(5) Where any registration ofa trade mark to be merged under paragraph (3) above has 
had registered in relation to it particulars relating to the grant of a licence or a security 
interest or any right in or under it, or of any memorandum or statement of the effect of a 
memorandum, the registrar shall enter in the register the same particulars in relation to the 
merged registration. 
(6) The date of registration of the merged registration shall, where the separate 
registrations bear different dates, be the latest of those dates. 
Registration of 21.-(1) The proprietor of a series of trade marks may apply to the registrar on Form 
a series of . TM3 for their registration as a series in a single registration and there shall be included in trade marks; s.41 such application a representation of each mark claimed to be in the series; and the registrar 
(Form TM12) shall, if satisfied that the marks constitute a series, accept the application. 
(2) At any time before preparations of publication of the application have been 
completed by the Office, the applicant under paragraph (1) above may request on Form 
TM12 the division of the application into separate applications in respect of one or more 
marks in that series and the registrar shall, ifhe is satisfied that the division requested 
conforms with section 41 (2), divide the application accordingly. 
(3) At any time the applicant for registration ofa series of trade marks or the proprietor 
of a registered series of trade marks may request the deletion of a mark in that series, and 
the registrar shall delete the mark accordingly. 
(4) The division of an application into one or more applications under paragraph (2) 
above shall be subject to the payment of a divisional fee and such application and class fees 
as are appropriate. Collective and certification marks IP/N/lIGBRlT/2 
Page 9 
Filing o' 22. Within nine months ofthe date of the application for the registration of a collective 
regulations fur or certification mark, the applicant shall file Form TM35 accompanied bya copy of the 
collective and 
certification regulations governing the use of the mark. 
marks; 
Schs. 1&2 
(Form TM35) 
Amendment of 
regulations of 
collective and 
certification 
marks; Sch. I 
para. 10 and 
Sch. 2 para. 11 
(Forms TM36 
& TM7) 
Registration 
subject to 
disclaimer or 
limitation; s. 13 
Alteration of 
registered 
trade marks; 
s.44 
(Forms TM25 
& TM7) 
Surrender of 
registered 
trade mark; 
s.45 
(Forms TM22 
& TM23) 23.-(1) An application for the amendment of the regulations governing the use of a 
registered collective or certification mark shall be filed on Form TM36. 
(2) Where it appears expedient to the registrar that the amended regulations should be 
made available to the public he shall publish a notice indicating where copies of the 
amended regulations may be inspected. 
(3) Any person may, within three months of the date of publication of the notice under 
paragraph (2) above, make observations to the registrar on the amendments relating to the 
matters referred to in paragraph 6(1) of Schedule 1 in relation to a collective mark, or, 
paragraph 7(1) of Schedule 2 in relation to a certification mark; the registrar shall send a 
copy thereof to the proprietor. 
(4) Any person may, within three months of the date of publication of the notice, file 
notice on Form TM7 to the registrar of opposition to the amendment, accompanied by a 
statement of the grounds of opposition, indicating why the amended regulations do not 
comply with the requirements of paragraph 6(1) of Schedule 1 or, as the case may be, 
paragraph 7(1) of Schedule 2. 
(5) The registrar shall send a copy of the notice and the statement to the proprietor and 
thereafter the procedure in rule 13(2)-(8) shall apply to the proceedings as they apply to 
proceedings relating to opposition to an application for registration. 
Disclaimers, limitations and alteration or surrender of registered trade mark 
24. Where the applicant for registration of a trade mark or the proprietor by notice in 
writing sent to the registrar-
(a) disclaims any right to the exclusive use of any specified element of the trade mark, 
or 
(b) agrees that the rights conferred by the registration shall be subject to a specified 
territorial or other limitation, 
the registrar shall make the appropriate entry in the register and publish such disclaimer or 
limitation. 
25.-(1) The proprietor may request the registrar on Form TM25 for such alteration 
of his registered mark as is permitted under section 44; and the registrar may require such 
evidence by statutory declaration or otherwise as to the circumstances in which the 
application is made. 
(2) Where, upon the request of the proprietor, the registrar proposes to allow such 
alteration, he shall publish the mark as altered. 
(3) Any person claiming to be affected by the alteration may within three months of the 
date of pUblication of the alteration under paragraph (2) send a notice on Form TM7 to 
the registrar of opposition to the alteration and shall include a statement of the grounds of 
opposition; the registrar shall send a copy of the notice and the statement to the proprietor 
and thereafter the procedure in rule 13(2)-(8) shall apply to the proceedings as they apply 
to proceedings relating to opposition to an application for registration. 
26.-(1) Subject to paragraph (2) below, the proprietor may surrender a registered 
trade mark, by sending notice to the registrar-
(a) on Form TM22 in respect of all the goods or services for which it is registered; or 
(b) on Form TM23, in respect only of those goods or services specified by him in the 
notice. 
(2) A notice under paragraph (1) above shall be of no effect unless the proprietor in that 
notice-
(a) gives the name and address of any person having a registered interest in the mark, 
and Reminder of 
renewal of 
registration; 
s.43 
Renewal of 
registration; 
s.43 
(Form TMll) 
Delayed 
renewal and 
removal of 
re gist ra tion; 
s.43 
(Form TMJJ) 
Restoration of 
registration; 
5.43 
(Form TMJ3) 
Procedure on 
application for 
revocation, 
declaration of 
invalidity and 
rectification of 
the register; 
ss. 46, 47 & 64 
(Forms TM26 
& TM27) IP/N/lIGBRlT/2 
Page 10 
(b) certifies that any such person-
(i) has been sent not less than three months' notice of the proprietor's intention 
to surrender the mark, or 
(ii) is not affected or if affected consents thereto. 
(3) The registrar shall, upon the surrender taking effect, make the appropriate entry in 
the register and publish the same. 
Renewal and restoration 
27. At any time not earlier than six months nor later than one month before the 
expiration of the last registration ofa trade mark, the registrar shall (except where renewal 
has already been effected under rule 28 below) send to the registered proprietor notice of 
the approaching expiration and inform him at the same time that the registration may be 
renewed in the manner described in rule 28 below. 
28. Renewal of registration shall be effected by filing a request for renewal on Form 
TMl1 at any time within the period of six months ending on the date of the expiration of 
the registration. 
29.-(1) If on the expiration of the last registration of a trade mark, the renewal fee has 
not been paid, the registrar shall publish that fact; and if, within six months from the date 
of the expiration of the last registration, the request for renewal is filed on Form TMll 
accompanied by the appropriate renewal fee and additional renewal fee, the registrar shall 
renew the registration without removing the mark from the register. 
(2) Where no request for renewal is filed as aforesaid, the registrar shall, subject to rule 
30 below, remove the mark from the register. 
(3) Where, in the case of a mark the registration of which (by reference to the date of 
application for registration) becomes due for renewal, the mark is registered at any time 
within six months before the date on which renewal is due, the registration may be renewed 
by the payment of-
(a) the renewal fee within six months after the actual date of registration; or 
(b) the renewal fee and additional renewal fee within the period commencing on the 
date six months after the actual date of registration (that is to say, at the end of the 
period referred to in paragraph (a)) andendingon the date six months after the due 
date of renewal; 
and, where the fees referred to in paragraph (b) are not paid within the period specified in 
that paragraph the registrar shall, subject to rule 30 below, remove the mark from the 
register. 
(4) Where, in the case of a mark the registration of which (by reference to the date of 
application for registration) becomes due for renewal, the mark is registered after the date 
of renewal, the registration may be renewed by the payment of the renewal fee within six 
months of the actual date of registration; and where the renewal fee is not paid within that 
period the registrar shall, subject to rule 30 below, remove the mark from the register. 
(5) The removal of the registration of a trade mark shall be published. 
30.-(1) Where the registrar has removed the mark from the register for failure to 
renew its registration in accordance with rule 29 above, he may, upon a request filed on 
Form TM13 within six months of the date of the removal of the mark accompanied by the 
appropriate renewal fee and appropriate restoration fee, restore the mark to the register 
and renew its registration if, having regard to the circumstances of the failure to renew, he 
is satisfied that it is just to do so. 
(2) The restoration of the registration shall be published, with the date of restoration 
shown. 
Revocation, invalidation and rectification 
31.-(1) An application to the registrar for revocation under section 46 or declaration 
of invalidity under section 47 of the registration of a trade mark or for the rectification of 
an error or omission in the register under section 64 shall be made on Form TM26 together 
with a statement of the grounds on which the application is made. IP/N/1/GBRlT/2 
Page 11 
(2) Where any application is made under paragraph (1) by a person other than the 
proprietor of the registered trade mark, the registrar shall send a copy of the application 
and the statement to the proprietor. 
(3) Within three months of the date on which the registrar sends a copy of the 
application and the statement to the proprietor, the proprietor may file a counter­
statement together with Form TM8 and the registrar shall send a copy thereof to the 
applicant: 
Provided that where an application for revocation is based on the ground of non-use 
under section46(1)(a) or (b), the proprietor shall file (within the period allowed for the filing 
of any counter-statement) evidence of the use by him of the mark; and if he fails so to file 
evidence the registrar may treat his opposition to the application as having been withdrawn. 
(4) Subject to paragraph (2) above and paragraphs (6) and (7) below, the provisions of 
rule 13 shall apply to proceedings relating to the application as they apply to opposition 
proceedings for the registration of a trade mark, save that, in the case of an application for 
revocation on the grounds of non-use under section 46(1)(a) or (b), the application shall be 
granted where no counter-statement is filed. 
(5) Any person, other than the registered proprietor, claiming to have an interest in 
proceedings on an application under this rule may file an application to the registrar on 
From TM27 for leave to intervene, stating the nature of his interest and the registrar may, 
after hearing the parties concerned ifso required, refuse such leave or grant leave upon such 
terms or conditions (including any undertaking as to costs) as he thinks fit. 
(6) Any person granted leave to intervene (the intervener) shall, subject to the terms and 
conditions imposed in respect of the intervention, be treated as a party for the purposes of 
the application of the provisions of rule 13 to the proceedings on an application under this 
rule. 
(7) When the registrar has made a decision on the application following any opposition, 
intervention or proceedings held in accordance with this rule, he shall send the applicant, 
the person opposing the application and the intervener (if any) written notice of it, stating 
the reasons for his decision; and for the purposes of any appeal against the registrar's 
decision the date when the notice of the decision is sent shall be taken to be the date of the 
decision. 
The register 
Form of 32. The register required to be maintained by the registrar under section 63(1) need not 
register; 5.63(1) be kept in documentary form. 
En~ry in 33. In addition to the entries in the register of registered trade marks required to be 
reglt~terl of f made by section 63(2)( a), there shall be en tered in the register in respect of each trade mark 
par ICU ars 0 • h· h f . . 1 registered trade regIstered t erem t e ollowmg partIcu ars-
marks; s.63(2) 
(Form TM24) 
Entry in 
register of 
particulars of 
registrable 
transactions; 
s.25 (a) the date of registration as determined in accordance with section 40(3) (that is to 
say, the date of the filing of the application for registration); 
(b) the actual date of registration (that is to say, the date of the entry in the register); 
(c) the priority date (if any) to be accorded pursuant to a claim to a right to priority 
made under section 35 or 36; 
(d) the name and address of the proprietor; 
(e) the address for service (if any) as furnished pursuant to rule 10 above; 
(f) any disclaimer or limitation of rights under section 13(1)(a) or (b); 
(g) any memorandum or statement of the effect of any memorandum relating to a 
trade mark of which the registrar has been notified on Form TM24; 
(h) the goods or services in respect of which the mark is registered; 
(i) where the mark is a collective or certification mark, that fact; and 
U) where the mark is registered pursuant to section 5(5) with the consent of the 
proprietor of an earlier trade mark or other earlier right, that fact. 
34. Upon application made to the registrar by such person as is mentioned in section 
25(1)(a) or (b) there shall be entered in the register the following particulars ofregistrable 
transactions, that is to say-
(a) in the case of an assignment of a registered trade mark or any right in it-IP/N/lIGBRlT 12 
Page 12 
(i) the name and address of the assignee, 
(ii) the date of the assignment, and 
(iii) where the assignment is in respect of any right in the mark, a description of 
the right assigned; 
(b) in the case of the grant of a licence under a registered trade mark­
(i) the name and address of the licensee, 
(ii) where the licence is an exclusive licence, that fact, 
(iii) where the licence is limited, a description of the limitation, and 
(iv) the duration of the licence if the same is or is ascertainable as a definite 
period; 
(c) in the case of the grant of any security interest over a registered trade mark or any 
right in or under it-
(i) the name and address of the grantee, 
(ii) the nature of the interest (whether fixed or floating), and 
(iii) the extent of the security and the right in or under the mark secured; 
(d) in the case of the making by personal representatives of an assent in relation to a 
registered trade mark or any right in or under it-
(i) the name and address of the person in whom the mark or any right in or 
under it vests by virtue of the assent, and 
(ii) the date of the assent; and 
(e) in the case ofa court or other competent authority transferring a registered trade 
mark or any right in or under it-
(i) the name and address of the transferee, 
(ii) the date of the order, and 
(iii) where the transfer is in respect of a right in the mark, a description of the 
right transferred; 
and, in each case, there shall be entered the date on which the entry is made. 
Application to 35.-(1) An application to register particulars of a transaction to which section 25 
register or give applies or to give notice to the registrar of particulars of a transaction to which section 27(3) notice of transaction; applies shall be made, subject to paragraph (2) below, 
55.25 & 27(3) (a) relating to an assignment or transaction other than a transaction referred to in 
(Forms TM16. sub-paragraphs (b) to (d) below, on form TMI6,' TM24. TM50& 
TM51) (b) relating to a grant of a licence, on form TM50; 
(c) relating to an amendment to, or termination ofa licence, on form TM51; 
(d) relating to the grant, amendment or termination of any security interest, on form 
TM24; and 
(e) relating to the making by personal representatives of an assent or to an order of 
a court or other competent authority, on form TM24. 
(2) An application under paragraph (1) above shall-
(a) where the transaction is an assignment, be signed by or on behalf of the parties to 
the assignment; 
(b) where the transaction falls within sub-paragraphs (b), (c) or (d) of paragraph (1) 
above, be signed by or on behalf of the grantor of the licence or security interest; 
or be accompanied by such documentary evidence as suffices to establish the transaction. 
(3) Where the transaction is effected by an instrument chargeable with duty, the 
application shall be subject to the registrar being satisfied that the instrument has been duly 
stamped. 
(4) Where an application to give notice to the registrar has been made of particulars 
relating to an application for registration of a trade mark, upon registration of the trade 
mark, the registrar shall enter those particulars in the register. 
~ublic . 36.-(1) The register shall be open for public inspection at the Office during the hours 
tnsJ;lectlOn603f(3) of business of the Office as published in accordance with rule 64 below. regIster; s. 
(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. IP/N/lIGBRlT/2 
Page 13 
Supply of 37. The registrar shall supply a certified copy or extract or uncertified copy or extract, 
certiti,.(f '-0pies as requested on Form TM31R, of any entry in the register. etc; S." J 
(Form TMJ1R) 
Request for 
change of 
name or 
address in 
register; 
s.64(4) 
(Forms TM21 
& TM33) 
Removal of 
matter from 
register; 
s.64(5) 
(Form TM7) 
Change of 
classification; 
ss.65(2) & 76( I) 38.-(1) The registrar shall, on a request made on Form TM21 by the proprietor ofa 
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 34, enter any change in his name 
or address as recorded in the register. 
(2) The registrar may at any time, on a request made on Form TM33 by any person who 
has furnished an address for service under rule 10 above, if the address is recorded in the 
register, change it. 
39.-(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) he may, where he considers it appropriate, publish his intention to remove that 
matter, and 
(b) where any person appears to him to be affected by the removal, he shall sendnotice 
of his intention to that person. 
(2) Within three months of the date on which his intention to remove the matter is 
published, or notice of his intention 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) above may file, in 
writing-
(i) his objections, if any, to the removal, or 
(ii) a request to have his objections heard orally; 
and where such opposition or objections are made, rule 47 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, he shall not remove it. . 
(4) Where there has been no response to the registrar's notice he may remove the 
matter; where representations objecting to the removal of the entry have been made 
(whether in writing or orally) the registrar may, if he is of the view after considering the 
objections that the entry or any part thereof has ceased to have effect, remove it or, as 
appropriate, the part thereof. 
Change of classification 
40.-(1) Subject to section 65(3), the registrar may-
(a) in order to reclassify the specification of a registered trade mark founded on 
Schedule 3 to one founded on Schedule 4, or 
(b) consequent upon an amendment of the International Classification of Goods and 
Services referred to in rule 7(2) above, 
make such amendments to entries on the register as he considers necessary for the purposes 
of reclassifying the specification of the registered trade mark. 
(2) Before making any amendment to the register under paragraph (1) above the 
registrar shall give the proprietor ofthe mark written notice of his proposals for amendmen t 
and shall at the same time advise him that-
(a) he may make written objections to the proposals, within three months of the date 
of the notice, stating the grounds of his objections, and 
(b) if no written objections are received within the period specified the registrar will 
publish the proposals and he will not be entitled to make any objections thereto 
upon such publication. 
(3) If the proprietor makes no written objections within the period specified in 
paragraph (2)(a) above or at any time before the expiration of that period gives the registrar 
written notice of his intention not to make any objections, the registrar shall as soon as 
practicable after the expiration of that period or upon receipt of the notice publish the 
proposals. 
(4) Where the proprietor makes written objections within the period specified in 
paragraph (2)(a) above, the registrar shall, as soon as practicable after he has considered 
the objections, publish the proposals or, where he has amended the proposals, publish the 
proposals as amended; and his decision shall be final and not subject to appeal. IP/N/1/GBRlT/2 
Page 14 
O;o;,~s;!;~~ to 41.-(1) Notice of any opposition shall be filed on Form TM7 within three months of 
~s.65(3) &. 76(1) the date of publication of the proposals under rule 40 above and there shall be stated in the 
notice the grounds of opposition and, in particular, how the proposed amendments would 
be contrary to section 65(3). 
(2) The registrar may require or admit evidence directed to the questions in issue and 
if so requested by any person opposing the proposal give that person the opportunity to be 
heard thereon before deciding the matter. 
(3) If no notice of opposition under paragraph (1) above 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 
his decision shall be final and not subject to appeal. 
Request for information, inspection of documents and confidentiality 
42. A request for information relating to an application for registration or to a Request for 
information; 
s.67(1) registered trade mark shall be made on Form TM3IC. 
(Form TM31C) 
Inf~rmation 43. Before publication of an application for registration the registrar shall make 
avablll.ablt~ b~fore available for inspection by the public the application and any amendments made to it and 
pu Ica IOn, . I . d' .. h' d I 35 s.67(2) any partIcu ars contame m a notlce gIven to t e regIstrar un er ru e . 
Inspection of 44.-(1) Subject to paragraphs (2) and (3) below, the registrar shall permit all documents 
documents; filed or kept at the Office in relation to a registered mark or, where an application for the 
ss. 67 & 76(1) 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) above until he has completed any procedure, or the stage in 
the procedure which is relevant to the document in question, which he is required or 
permitted to carry out under the Act or these Rules. 
(3) The right of inspection under paragraph (1) above does not apply to­
(a) any document until fourteen days after it has been filed at the Office; 
(b) any document prepared in the Office solely for use therein; 
(c) any document sent to the Office, whether at its request or otherwise, for inspection 
and subsequent return to the sender; 
(d) any request for information under rule 42 above; 
(e) any document issued by the Office which the registrar considers should be treated 
as confidential; 
(f) any document in respect of which the registrar issues directions under rule 45 
below 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 his opinion disparages any person 
in a way likely to damage him; or 
(b) any document filed with or sent to the Office before 31st October 1994. 
(5) No appeal shall lie from a decision of the registrar under paragraph (4) above not 
to make any document or part of a document available for public inspection. 
Confidential 45.-(1) Where a document other than a form required by the registrar and published 
documents in accordance with rule 3 above is filed at the Office and the person filing it requests, at the 
time of filing or within fourteen days of the filing, that it or a specified part of it be treated 
as confidential, giving his reasons, 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. IP/N/1/GBRlT/2 
Page 15 
(4) The registrar may where he 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. 
Proof of 
authorisation 
of agent may 
be required; 
s. 82 
(Form TM33) 
Registrar may 
refuse to deal 
with certain 
agents; s. 88 
Decisions of 
registrar to be 
taken after 
hearing 
Evidence in 
proceedings 
before 
registrar; s.69 
Making and 
subscription of 
statutory 
declaration or 
affidavit (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. 
Agents 
46.-(1) Where an agent has been authorised under section 82, the registrar may in any 
particular case require the personal signature or presence of the agent or the person 
authorising him to act as agent. 
(2) Where after a person has become a party to proceedings before the registrar, he 
appoints an agent for the first time or appoints one agent in substitution for another, the 
newly appointed agent shall file Form TM33, and 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 
he files that form. 
(3) The registrar may by notice in writing sent to an agent require him to produce 
evidence of his authority. 
47. 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 him liable 
to have his 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) 
above. 
Decision of registrar, evidence and costs 
48.-(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 
before him, give that party an opportunity to be heard. 
(2) The registrar shall give that party at least fourteen days' notice of the time when he 
may be heard unless that party consents to shorter notice. 
49.-(1) Where under these Rules evidence may be admitted by the registrar in any 
proceedings before him, it shall be by the filing of a statutory declaration or affidavit. 
(2) The registrar may in any particular case take oral evidence in lieu of or in addition 
to such evidence and shall, unless he otherwise directs, allow any witness to be cross­
examined on his statutory declaration, affidavit or oral evidence. 
50.-(1) Any statutory declaration or affidavit filed under the Act or these Rules shall 
be made and subscribed as follows-
(a) in the United Kingdom, before any justice of the peace or any commissioner or 
other officer authorised by law in any part of the United Kingdom to administer 
an oath for the purpose of any legal proceedings; 
(b) in any other part ofRer Majesty's dominions or in the Republic ofIreland, before 
any court, judge, justice of the peace or any officer authorised by law to administer 
an oath there for the purpose of any legal proceedings; and 
(c) elsewhere, before a commissioner for oaths, notary public, judge or magistrate. 
(2) Any document purporting to have affixed, impressed or subscribed thereto or 
thereon the seal or signature of any person authorised by paragraph (1) above to take a 
declaration may be admitted by the registrar without proof of the genuineness of the seal 
or signature, or of the official character of the person or his authority to take the 
declaration. IP/N/1/GBRlT/2 
Page 16 
Registrar's . 51. At any stage of any proceedings before the registrar, he may direct that such 
dPower to treqUlredocuments, information or evidence as he may reasonably require shall be filed within such ocumen s, . d h 'f information or peno as e may specl y. 
evidence 
Registrar to 
have power of 
an official 
referee; s. 69 
Hearings 
before 
registrar to be 
in public 
Costs of 
proceedings; 
s.68 
Security for 
costs; s. 68 
Decision of 
registrar 
(Form TM5) 
Appeal to 
person 
appointed; 
s. 76 
Determination 
whether 
appeal should 
be referred to 
court; s. 76(3) 52.-(1) The registrar shall in relation to the examination of witnesses on oath and the 
discovery and production of documents have all the powers of an official referee of the 
Supreme Court. 
(2) The rules applicable to the attendance of witnesses before such a referee shall apply 
in relation to the attendance of witnesses in proceedings before the registrar. 
53.-(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 mar k shall be in public unless the registrar, after consul ta tion with those parties 
who appear in person or are represented at the hearing, otherwise directs. 
(2) Nothing in this rule shall prevent a melnber of the Council on Tribunals or of its 
Scottish Committee from attending a hearing in his capacity as such. 
54. The registrar may, in any proceedings before him under the Act or these Rules, by 
order award to any party such costs as he may consider reasonable, and direct how and by 
what parties they are to be paid. 
55.-(1) The registrar may require any person who is a party in any proceedings before 
him under the Act or these Rules to give security for costs in relation to those proceedings; 
and he may require security for the costs of any appeal from his decision. 
(2) In default of such security being given, the registrar, in the case of the proceedings 
before him, or, in the case of an appeal, the person appointed under section 76 may treat 
the party in default as having withdrawn his application, opposition, objection or 
intervention, as the case may be. 
56.-(1) When, in any proceedings before him, the registrar has made a decision 
following a hearing or, if a hearing has not been requested, after considering any 
submission in writing, he shall send notice of his decision in writing to each party to the 
proceedings, and for the purpose of any appeal against the registrar's decision, subject to 
paragraph (2) below, the date of the decision shall be the date when the notice is sent. 
(2) Where a statement of the reasons for the decision is not included in the notice sent 
under paragraph (1) above, any party may, within one month of the date on which the 
notice was sent to him, request the registrar on form TM5 to send him 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. 
Appeals 
57.-(1) Notice of appeal to the person appointed under section 76 shall be sent to the 
registrar within one month of the date of the registrar's decision which is the subject of the 
appeal accompanied by a statement in writing of the appellant's grounds of appeal and of 
his case in support of the appeal. 
(2) The registrar shall send the notice and the statement to the person appointed. 
(3) Where any person other than the appellant was a party to the proceedings before 
the registrar in which the decision appealed against was made, the registrar shall send to 
that person a copy of the notice and the statement. 
58.-(1) Within one month of the date on which the notice of appeal is sent by the 
registrar under rule 57(3) above; 
(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, he shall send 
a copy of the request to each party to the proceedings. Hearing of 
appeal; s. 76(4) 
Correction of 
irregularities 
of procedure 
Calculation of 
times and 
periods IP/NIl/GBRlT/2 
Page 17 
(3) A request under paragraph (l)(b) above shall be sent to the registrar; 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 one month of the date on which a copy of a request is sent by the registrar 
under paragraph (2) or (3) above, 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, he shall send to the registrar and to every party to the 
proceedings in which the decision appealed against was made, notice thereof. 
(6) Within one month of the date on which a notice is sent under paragraph (5) above, 
the person to whom it was sent may make representations as to whether the appeal should 
be referred to the court. 
59.-(1) Where the person appointed does not refer the appeal to the court, he shall 
send notice of the time and place appointed for the 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 provisions of rule 48(2) and rules 49 to 55 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. 
(3) The person appointed shall send a copy of his decision, with a statement of his 
reasons therefor, to the registrar and to each person who was a party to the proceedings 
before him. 
Correction of irregularities, calculation and extension of time 
60.-(1) Any irregularity in procedure in or before the Office or the registrar may be 
rectified, subject to paragraph (2) below, on such terms as he may direct. 
(2) In the case of an irregularity or prospective irregularity-
(a) which consists of a failure to comply with any limitation as to times or periods 
specified in the Act, these Rules or the old law as that law continues to apply and 
which has occurred or appears to the registrar as likely to occur in the absence of 
a direction under this rule, and 
(b) which is attributable wholly or in part to an error, default or omission on the part 
of the Office or the registrar and which it appears to him should be rectified, 
he may direct that the time or period in question shall be altered in such manner as he may 
specify. 
(3) Paragraph (2) above is without prejudice to the registrar's power to extend any time 
or periods under rule 62 below. 
61.-(1) Where, on any day, there is-
(a) a general interruption or subsequent dislocation in the postal services of the 
United Kingdom, or 
(b) an event or circumstances causing an interruption in the normal operation of the 
Office, 
the registrar may certify the day as being one on which there is an "interruption" and, where 
any period of time specified in the Act or these R ules for the giving, making or filing of any 
notice, application or other document expires on a day so certified the period shall be 
extended to the first day next following (not being an excluded day) which is not so certified. 
(2) Any certificate of the registrar given pursuant to this rule shall be posted in the 
Office. 
(3) Ifin any particular case the registrar is satisfied that the failure to give, make or file 
any notice, application or other document within any period oftime specified in the Act or 
these Rules for such giving, making or filing was wholly or mainly attributable to a failure 
or undue delay in the postal services in the United Kingdom, the registrar may, ifhe thinks 
fit, extend the period so that it ends on the day of the receipt by the addressee of the notice, IP/N/lIGBR/T/2 
Page 18 
Alteration of 
time limits 
(Form TM9) 
Filing of 
documents by 
electronic 
means 
Directions on 
hours of 
business; s. 80 
Trade Marks 
Journal; s. 81 
Translations application or other document (or, if the day of such receipt is an excluded day, on the first 
following day which is not an excluded day), upon such notice to other parties and upon 
such terms as he may direct. 
(4) In this rule "excluded day" means a day which is not a business day of the Office 
under the registrar's direction pursuant to section 80, as published in accordance with 
rule 64 below. 
62.-( 1) The time or periods-
(a) prescribed by these Rules, other than the times or periods prescribed by the rules 
mentioned in paragraph (3) below, or 
(b) specified by the registrar for doing any act or taking any proceedings, 
may, at the request of the person or party concerned, be extended by the registrar as he 
thinks fit, upon such notice to any other person or party affected and upon such terms as 
he may direct. 
(2) A request for the extension of a period prescribed by these Rules which is filed after 
the application has been published under rule 12 above shall be on Form TM9 and shall 
in any other case be on that form if the registrar so directs. 
(3) The rules excepted from paragraph (1) above are rule 10(6) (failure to file address 
for service), rule 11 (deficiencies in application), rule 13(1) (time for filing opposition), 
rule 13(2) (time for filing counter-statement), rule 29 (delayed renewal) and rule 30 
(restoration of registration). 
(4) Subject to paragraph (5) below, a request for extension under paragraph (1) above 
shall be made before the time or period in question has expired. 
(5) Where the request for extension is made after the time or period has expired, the 
registrar may, at his discretion, extend the period or time if he is satisfied with the 
explanation for the delay in requesting the extension and it appears to him that any 
extension would not disadvantage any other person or party affected by it. 
(6) Where the period within which any party to any proceedings before the registrar 
may file evidence under these Rules is to begin upon the expiry of any period in which any 
other party may file evidence and that other party notifies the registrar that he does not wish 
to file any, or any further, evidence the registrar may direct that the period within which 
the first mentioned party may file evidence shall begin on such date as may be specified in 
the direction and shall notify all parties to the dispute of that date. 
Filing of documents, hours of business, Trade Marks Journal and translations 
63. The registrar may, at his discretion, 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 he 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. 
64. 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(a) and posted in 
the Office. 
65. The registrar shall publish ajournal, entitled "The Trade Marks Journal", containing 
particulars of any application for theregistration ofa trademark (including a representation 
of the mark), such information as is required to be published under these Rules and such 
other information as the registrar thinks fit. 
66.-( 1) Where any document or part thereofwhich 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 is in his opinion inaccurate 
and thereupon another translation of the document in question verified as aforesaid shall 
be furnished. 
(a) See the special edition of the Trade Marks Journal dated 3 I st October 1994. Transitional provisions and revocations IP/N/lIGBR/T/2 
Page 19 
Pen~ .... 67. Where an application for registration of a mark made under the old law is 
ap~hcatl?"ls for advertised on or after 31 st October 1994, the period within which notice of opposition may 
~~~~~,at\On; be filed shall be three months from the date of advertisement, and such period shall not be 
para. 10(2) extendible. 
Form f~r 68. A notice to the registrar under paragraph 11 (2) of Schedule 3 to the Act, claiming 
con~~rs\Ons of to have the registrability of the mark determined in accordance with the provisions of the 
~~~li~:~ion; Sch. Act, shall be in the form set out in Schedule 2 to these Rules. 
3, para. 11(2) 
Revocation of 
previous Rules 69.-(1) The rules specified in Schedule 1 are hereby revoked. 
(2) Except as provided by rule 67 above, where-
(a) immediately before these Rules come into force, any time or period prescribed by 
the Rules hereby revoked has effect in relation to any act or proceeding and has 
not expired, and 
(b) the corresponding time or period prescribed by these Rules would have expired or 
would expire earlier, 
the time or period prescribed by those Rules and not by these Rules shall apply to that act 
or proceeding. 
5th October 1994 fan Tay/or 
Parliamentary Under Secretary of State for Trade and Technology 
Department of Trade and Industry IP/NIlIGBRlT/2 
Page 20 
Rules revoked SCHEDULE 1 
REVOCATIONS 
The Trade Marks and Service Marks Rules 1986 
The Trade Marks and Service Marks (Amendment) Rules 1988 
The Trade Marks and Service Marks (Amendment) Rules 1989 
The Trade Marks and Service Marks (Amendment) Rules 1990 
The Trade Marks and Service Marks (Amendment) (No. 2) Rules 1990 
The Trade Marks and Service Marks (Amendment) Rules 1991 
The Trade Marks and Service Marks (Amendment) Rules 1994 Rule 69 
Reference 
S . I. 1 98 6/l 3 1 9 
S.I.198811112 
S.1. 198911117 
S.1. 1990/l459 
S.L 199011799 
S.1. 1991/l431 
S. I. 1994/2549 SCHEDULE 2 
FonnTMlS IP/N/1/GBRlT/2 
Page 21 
Rule 68 
Notice under Schedule 3, paragraph 11 of the Act: Claim to have registrability of a mark applied 
for before 31 st October 1994 determined under the Act (Conversion of application) 
1. Your reference 
2. Give details of the application you made under 
the Trade Marks Act 1938 
3. Full name, address and postcode of the 
applicant 
Trade Marks ADP number 
(if you know it) 
4. Name of agent (if appropriate) address for 
service in the United Kingdom which all 
correspondence should be sent to (including 
postcode) 
Trade Marks ADP number 
(if you know it) Number Class 
I claim to have the registrability of the mark determined in accordance with the provisions of the 
Trade Marks Act 1994. I acknowledge that this notice is irrevocable. 
Signature 
Name (block capitals) 
Date 
Name and daytime telephone number of person we should contact 
State the number of any sheets attached to this form 
Reminder 
You cannotamendamark under the 1994 Act. If you want to amend the markyoumustfileform TM21 
before or with this form. 
The new filing date of your converted application will be the 31st October 1994, which is the 
commencement date of the 1994 Act. 
Form TM15 IP/N/lIGBRlT/2 
Page 22 
SCHEDULE 3 
CLASSIFICATION OF GOODS (PRE-1938) Rule 7(1) 
Class 1 Chemical substances used in manufactures. photography, or philosophical research, and 
anti-corrosives. 
Class 2 Chemical substances used for agricultural, horticultural, veterinary and sanitary purposes. 
Class 3 Chemical substances prepared for use in medicine and pharmacy. 
Class 4 Raw, or partly prepared, vegetable, animal, and mineral substances used in manufactures, 
not included in other Classes. 
Class 5 Unwrought and partly wrought metals used in manufacture. 
Class 6 Machinery of all kinds, and parts of machinery, except agricultural and horticultural 
machines and their parts included in Class 7. 
Class 7 Agricultural and horticultural machinery, and parts of such machinery. 
Class 8 Philosophical instruments, scientific instruments. and apparatus for useful purposes; 
instruments and apparatus for teaching. 
Class 9 Musical instruments. 
Class 10 Horological instruments. 
Class 11 Instruments, apparatus, and contrivances, not medicated, for surgical or curative purposes, 
or in relation to the health of men or animals. 
Class 12 Cutlery and edge tools. 
Class 13 Metal goods, not included in other Classes. 
Class 14 Goods of precious metals and jewellery, and imitations of such goods and jewellery. 
Class 15 Glass. 
Class 16 Porcelain and earthenware. 
Class 17 Manufactures from mineral and other substances for building or decoration. 
Class 18 Engineering, architectural, and building contrivances. 
Class 19 Arms, ammunition, and stores, not included in Class 20. 
Class 20 Explosive substances. 
Class 21 Naval architectural contrivances and naval equipments not included in other Classes. 
Class 22 Carriages. 
Class 23 (a) Cotton yarn; Cb) Sewing cotton. 
Class 24 Cotton piece goods. 
Class 25 Cotton goods not included in other Classes. 
Class 26 Linen and hemp yarn and thread. 
Class 27 Linen and hemp piece goods. 
Class 28 Linen and hemp goods not included in other Classes. 
Class 29 Jute yarns and tissues, and other articles made of jute, not included in other Classes. 
Class 30 Silk, spun, thrown, or sewing. 
Class 31 Silk piece goods. 
Class 32 Silk goods not included in other Classes. 
Class 33 Yarns of wool, worsted, or hair. 
Class 34 Cloths and stuffs of wool, worsted, or hair. 
Class 35 Woollen and worsted and hair goods, not included in other Classes. 
Class 36 Carpets, floor-cloth, and oil-cloth. 
Class 37 Leather, skins unwrought and wrought, and articles made ofleather not included in other 
Classes. 
Class 38 Articles of clothing. 
Class 39 Paper (except paper hangings), stationery, and bookbinding. 
Class 40 Goods manufactured from india-rubber and gutta-percha not included in other Classes. 
Class 41 Furniture and upholstery. 
Class 42 Substances used as food or as ingredients in food. 
Class 43 Fermented liquors and spirits. 
Class 44 Mineral and aerated waters, natural and artificial, including ginger beer. 
Class 45 Tobacco, whether manufactured or unmanufactured. 
Class 46 Seeds for agricultural and horticultural purposes. 
Class 47 Candles, common soap, detergents; illuminating, heating, or lubricating oils; matches; and 
starch, blue, and other preparations for laundry purposes. 
Class 48 Perfumery (including toilet articles, preparations for the teeth and hair, and perfumed 
soap). 
Class 49 Games of all kinds and sporting articles not included in other Classes. Class 50 Miscellaneous:-IP/N/lIGBR/T/2 
Page 23 
(1) Goods manufactured from ivory, bone or wood, not included in other Classes. 
(2) Goods manufactured from straw or grass, not included in other Classes. 
(3) Goods manufactured from animal and vegetable substances, not included in other Classes. 
(4) Tobacco pipes. 
(5) Umbrellas, walking sticks, brushes and combs for the hair. 
(6) Furniture cream, plate powder. 
(7) Tarpaulins, tents, rick-cloths, rope (jute or hemp), twine. 
(8) Buttons of all kinds other than of precious metal or imitations thereof. 
(9) Packing and hose. 
(10) Other goods not included in the foregoing Classes. IP/N/lIGBR/T/2 
Page 24 
SCHEDULE 4 
CLASSIFICATION OF GOODS AND SERVICES 
Goods Rule 7(2) 
Class 1 Chemicals used in industry, science and photography, as well as in agriculture, horticulture 
and forestry; un processed artificial resins, unprocessed plastics; manures; fire extinguishing 
compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; 
tanning substances; adhesives used in industry. 
Class 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; 
colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, 
printers and artists. 
Class 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring 
and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. 
Class 4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; 
fuels (including motor spirit) and illuminants; candles, wicks. 
Class 5 Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for 
medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental 
wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. 
Class6Common metals and their alloys; metal building materials; transportable buildings of metal; 
materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, 
small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included 
in other classes; ores. 
Class 7 Machines and machine tools; motors and engines (except for land vehicles); machine 
coupling and transmission components (except forland vehicles); agricultural implements; incubators 
for eggs. 
Class 8 Hand tools and implements (hand operated); cutlery; side arms; razors. 
Class 9 Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, 
measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; 
apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, 
recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash 
registers, calculating machines, data processing equipment and computers; fire-extinguishing 
apparatus. 
Class 10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes 
and teeth; orthopaedic articles; suture materials. 
Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, 
water supply and sanitary purposes. 
Class 12 Vehicles; apparatus for locomotion by land, air or water. 
Class 13 Firearms; ammunition and projectiles; explosives; fireworks. 
Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not 
included in other classes; jewellery, precious stones; horological and chronometric instruments. 
Class 15 Musical instruments. 
Class 16 Paper, cardboard and goods made from these materials, not included in other classes; 
printed matter; bookbinding material; photographs; stationery; adhesives for stationery orhousehold 
purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); 
instructional and teaching material (except apparatus); plastic materials for packaging (not 
included in other classes); playing cards; printers' type; printing blocks. 
Class 17 Rubber. gutta-percha, gum, asbestos, mica and goods made from these materials and not 
included in other classes; plastics in extruded form for use in manufacture; packing, stopping and 
insulating materials; flexible pipes, not of metal. 
Class 18 Leather and imitations of leather, and goods made of these materials and not included in 
other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking 
sticks; whips, harness and saddlery. 
Class 19 Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and 
bitumen; non-metallic transportable buildings; monuments, not of metal. 
Class 20 Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, 
reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and 
substitutes for all these materials, or of plasti..:s. 
Class 21 Household or kitchen utensils and containers (not of precious metal or coated therewith); 
combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning 
purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, 
porcelain and earthenware not included in other classes. 
Class 22 Ropes, string, nets, tents, awnings, tarpaUlins, sails, sacks and bags (not included in other 
classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials. Class 23 Yarns and threads, for textile use. IP IN I lIGBRlT 12 
Page 25 
Class 24 Textiles and textile goods, not included in other classes; bed and table covers. 
Class 25 Clothing, footwear, headgear. 
Class 26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; 
artificial flowers. 
Class 27Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; 
wall hangings (non-textile). 
Class 28 Games and playthings; gymnastic and sporting articles not included in other classes; 
decorations for Christmas trees. 
Class 29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and 
vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats. 
Class 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago. artificial coffee; flour and preparations made 
from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, 
mustard; vinegar, sauces (condiments); spices; ice. 
Class 31 Agricultural, horticultural and forestry products and grains not included in other classes; 
live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, 
malt. 
Class 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit 
juices; syrups and other preparations for making beverages. 
Class 33 Alcoholic beverages (except beers). 
Class 34 Tobacco; smokers' articles; matches. 
Services 
Class 35 Advertising; business management; business administration; office functions. 
Class 36 Insurance; financial affairs; monetary affairs; real estate affairs. 
Class 37 Building construction; repair; installation services. 
Class 38 Telecommunications. 
Class 39 Transport; packaging and storage of goods; travel arrangement. 
Class 40 Treatment of materials. 
Class 41 Education; providing of training; entertainment; sporting and cultural activities. 
Class 42 Providing of food and drink; temporary accommodation; medical, hygienic and beauty 
care; veterinary and agricultural services; legal services; scientific and industrial research; computer 
programming; services that cannot be placed in other classes. . IP/N/lIGBR/T/2 
Page 26 
EXPLANATORY NOTE 
(This note is not part o/the Rules) 
These Rules revoke and replace the Trade Marks and Service Marks Rules 1986 (S.l. 
198611319, as amended). They re-enact, with modifications and amendments of a drafting 
nature, several provisions of the 1986 Rules and make several changes of substance in order 
to give effect to the provisions of the Trade Marks Act 1994 ("the Act"). 
The changes of substance are as follows-
(a) forms that are required by the registrar to be used for the purposes of registration 
and of any proceedings before him are not prescribed under these Rules; they are, 
however, required to be published in the Trade Marks Journal and users may, as 
before, satisfy the requirement to file on a form by filing either a replica of the form 
or a form acceptable to the registrar (rule 3); 
(b) a single application may relate to goods and services classified in more than one 
class of the classification (rule 8); 
(c) the requirements for providing an address for service have been simplified so that 
it is clear that such an address is only required for the purposes of any proceedings 
before the registrar (rule 10); 
(d) the time limits for correcting deficiencies in any application are clearly set out in 
a single rule (rule 11); 
(e) provision has been made for the filing of observations by third parties on the 
acceptability of marks, as is to be the case for the Community trade mark system 
to be introduced under Council Regulation (EC) No. 40/94 of 20th December 
1993; copies of such observations are to be sent to the applicant (rule 15); 
(t) amendment of an application is restricted to corrections of errors or changes in the 
name and address of the applicant (where these appear in the mark) (rule 17); 
(g) provision has been made for the division of applications (rule 19); 
(h) provision has been made for the merging of applications providing this takes place 
before their publication for opposition purposes (rule 20); 
(i) following the introduction of registration of collective marks in section 49 of the 
Act, provision is made for the filing of regulations concerning their use, and for 
their amendment and opposition to such amendment (rules 22 and 23); 
U) provision is made for the publication of voluntary disclaimers (rule 24); 
(k) provision is made for the entry onto the register of details concerning registrations 
in addition to those prescribed by section 63(2) of the Act (rule 33); 
(1) provision is made for the entry of details of registered transactions covered by 
section 25 of the Act (rule 34); 
(m) provision is made for the amendment of entries in the regIster consequent upon 
changes in the system of classification which have been agreed internationally(rule 
40) and for opposition to such changes (rule 41); 
(n) the provisions concerning the confidentiality of documents and the public's right 
to inspect documents filed at the Patent Office have been clarified (rules 43,44 and 
45); 
(0) provision has been made for the acceptance of affidavits in addition to statutory 
declarations, and the manner of subscription has been simplified to make it easier 
for overseas applicants to meet the Patent Office's requirements (rule 50); 
(p) provision is made for appeals to the person appointed by the Lord Chancellor 
under section 76 and for the procedure relating to the hearing of appeals by that 
person (rules 57 and 59); 
(q) the procedures to be followed when correcting an error or an irregularity in 
procedure have been clarified (rule 60); 
(r) provision is made for the extension of times or periods prescribed by these Rules 
or specified by the registrar (rule 62); 
(s) the provisions governing the filing of documents cover filing by electronic means, 
thus making further rule changes (to cater for future developments) unnecessary 
(rule 63); 
(t) the hours of business of the Office and business days of the Office as specified by 
the registrar are to be published in the Trade Marks Journal and posted in the 
Office (rule 64); IP/N/lIGBRlT/2 
Page 27 
(u) formal provision is made for the publication of the Trade Marks Journal (rule 65); 
(v) rule 67 provides that in the case of a pending application (i.e. one made under the 
old law) which is advertised on or after 31 st October 1994, the period within which 
notice of opposition may be filed shall be three months from the date of 
advertisement and that such period shall not be extendible; 
(w) rule 68 prescribes the form of the notice to the registrar claiming to have the 
registrability ofa pending mark which has not been advertised before 31st October 
1994 determined in accordance with the Act; and 
(x) rule 69 provides that any unexpired time or period prescribed by the Rules revoked 
by these Rules shall continue to apply to any act or proceedings to which they 
applied before their revocation. 
The addresses for the filing of documents at the Patent Office are prescribed in the Patent 
Office (Address) Rules 1991 (S.I. 1991/675), namely-
(i) Cardiff Road, Newport, Gwent NP9 1 RH; and 
(ii) 25 Southampton Buildings, London WC2A lAY. 
A compliance cost assessment is available, copies of which have been placed in the 
libraries of both Houses of Parliament. Copies of the assessment are also available from the 
Intellectual Property Policy Directorate of the Patent Office, Room 3/13, Hazlitt House, 
45 Southampton Buildings, London WC2A IAR. 