| Guvnor

Enforced by: IPO
Status: Amended (in force with amendments)
Penalty ceiling: Regulated

Does it bind you?

Business-side roles with duties under this instrument.

Any Person4 Applicant3

Plus 22 duties on the regulator, Crown ministers and public bodies — folded into the section list below.

Other Acts binding the same actors

If a role above is yours, these are the other instruments that most often bind it.

Any Person — also bound by 2684 other Acts

Human Medicines Regulations 2012 184 duties

Merchant Shipping Act 1995 144 duties

Insolvency (England and Wales) Rules 2016 104 duties

Communications Act 2003 92 duties

Road Traffic Act 1988 92 duties

Applicant — also bound by 325 other Acts

Insolvency (England and Wales) Rules 2016 46 duties

Human Medicines Regulations 2012 42 duties

The Land Registration Rules 2003 25 duties

Regulation (EU) No 1178/2011 (Aircrew) 20 duties

Value Added Tax Regulations 1995 18 duties

What it requires

Regulations creating concrete business duties or carrying penalties, grouped as the instrument is structured. Titles link to the source text — blue means you’re leaving for legislation.gov.uk.

s.009 Determination of classification Regulated

Other duties (1) — Crown / regulator

Registrar must notify applicants of classification issues and reject unfixed applicationsStatutory regulator

s.010 Prohibition on registration of mark consisting of arms; section 4 Regulated

Other duties (1) — Crown / regulator

Registrar must refuse trade mark applications using protected arms without consentCrown / Minister / Government department

s.011 Address for service Regulated

File a UK address for service in trade mark proceedingsApplicant

s.012 Failure to provide an address for service Regulated

File an address for service within one month if directedAny Person

s.013 Deficiencies in application; section 32 Regulated

Other duties (1) — Crown / regulator

Registrar must notify applicants of trade mark application deficienciesCrown / Minister / Government department

s.014 Notifying results of search Regulated

Other duties (1) — Crown / regulator

Registrar must notify applicants and earlier trade mark owners of conflictsStatutory regulator

s.018 Opposition proceedings: filing of counter-statement and cooling off period (Forms TM8, TM9c & TM9t) Regulated

File Form TM8 counter-statement within the opposition deadlineApplicant

s.019 Opposition proceedings: preliminary indication (Form TM53) Regulated

File Form TM53 within one month if IPO preliminary indication is against youApplicant

s.020 Opposition proceedings: evidence rounds Regulated

File evidence supporting your trade mark oppositionAny Person

s.022 Observations on application to be sent to applicant; section 38(3) Regulated

Other duties (1) — Crown / regulator

Registrar must send trademark applicant copies of third-party observationsCrown / Minister / Government department

s.023 Publication of registration; section 40 Regulated

Other duties (1) — Crown / regulator

Registrar must publish trade mark registration on the Office websiteStatutory regulator

s.028 Registration of a series of trade marks; section 41 (Form TM12) Regulated

Other duties (1) — Crown / regulator

Registrar must accept series trade mark applications if they constitute a seriesStatutory regulator

s.029 Filing of regulations for International collective and certification marks; Schedule 2B, paragraph 4 Regulated

File regulations for international collective or certification marks within 3 months of noticeAny Person

s.034 Reminder of renewal of registration; section 43 Regulated

Other duties (1) — Crown / regulator

Registrar must send renewal reminder notices before trade mark expiryCrown / Minister / Government department

s.036 Delayed renewal and removal of registration; section 43 (Form TM11) Regulated

Other duties (1) — Crown / regulator

Registrar must process delayed trade mark renewals and publish removalsCrown / Minister / Government department

s.040 Application for revocation (on grounds other than non-use): evidence rounds Regulated

Other duties (1) — Crown / regulator

Registrar must set evidence deadlines and notify parties in revocation casesStatutory regulator

s.043 Invalidation or revocation of Existing EUTM: Cancellation notice and procedure on application for derogation; Schedule 2A paragraph 21A Regulated

Other duties (1) — Crown / regulator

Registrar must notify proprietors and decide derogation requestsStatutory regulator

s.051 Supply of certified copies etc; section 63(3) (Form TM31R) Regulated

Other duties (1) — Crown / regulator

Registrar must supply certified or uncertified copies of register entries on requestCrown / Minister / Government department

s.052 Request for change of name or address in register; section 64(4) (Form TM21) Regulated

Other duties (1) — Crown / regulator

Registrar must update trade mark register on name/address change requestStatutory regulator

s.057 Information available before publication; section 67(2) Regulated

Other duties (1) — Crown / regulator

Registrar must allow public inspection of applications before publicationCrown / Minister / Government department

s.058 Inspection of documents; sections 67 & 76(1) Regulated

Other duties (1) — Crown / regulator

Registrar must permit public inspection of trade mark documentsCrown / Minister / Government department

s.060 Proof of authorisation of agent may be required; section 82 (Form TM33) Regulated

File Form TM33 or TM33P when appointed as a trade mark agentAny Person

s.063 Decisions of registrar to be taken after hearing Regulated

Other duties (1) — Crown / regulator

Registrar must give parties a hearing before adverse decisionsStatutory regulator

s.069 Decision of registrar (Form TM5) Regulated

Other duties (1) — Crown / regulator

Registrar must send written decision notice with reasons to all partiesCrown / Minister / Government department

s.073 Hearing and determination of appeal; section 76(4) Regulated

Other duties (1) — Crown / regulator

Appointed person must notify parties of appeal hearing and send reasoned decisionTribunal / Court

s.075 Interrupted day Regulated

Other duties (1) — Crown / regulator

Registrar must extend time limits expiring on an interrupted dayCrown / Minister / Government department

s.076 Delays in communication services Regulated

Other duties (1) — Crown / regulator

Registrar must extend time limits when communication service delays cause missed deadlinesStatutory regulator

s.080 Directions on hours of business; section 80 Regulated

Other duties (1) — Crown / regulator

Registrar must publish directions on IPO office hours and business daysCrown / Minister / Government department

s.081 Trade Marks Journal; section 81 Regulated

Other duties (1) — Crown / regulator

Registrar must publish the Trade Marks JournalCrown / Minister / Government department

65 other provisions — procedural and definitional

s.001 Citation and commencement

s.002 Interpretation

s.002 Comparable trade mark (EU)

s.002 Comparable trade mark (IR)

s.003 Forms and directions of the registrar; section 66

s.004 Requirement as to fees

s.004 Prescribed comparable trade mark (IR) fees

s.005 Application for registration; section 32 (Form TM3)

s.005 Application for registration based upon an existing EUTM application; Schedule 2A paragraph 25

s.005 Application for registration based upon an existing ITM application, existing request for EU extension or transformation application; Schedule 2B paragraph 28, 29 or 33

s.006 Claim to priority; sections 35 & 36

s.007 Classification of goods and services; section 34

s.008 Application may relate to more than one class and shall specify the class (Form TM3A)

s.015 Compliance with request for expedited examination

s.016 Publication of application for registration; section 38(1)

s.017 Opposition proceedings: filing of notice of opposition; section 38(2) (Form TM7)

s.017 Opposition proceedings: filing of notice of fast track opposition; section 38(2) (Form TM7F))

s.021 Procedure for intervention

s.024 Amendment of application; section 39 (Form TM21)

s.025 Amendment of application after publication; section 39 (Form TM7)

s.026 Division of application; section 41 (Form TM12)

s.026 Division of registration; section 41 (Form TM12R)

s.027 Merger of separate applications or registrations; section 41 (Form TM17)

s.029 Filing of regulations for collective and certification marks; Schedules 1 & 2 (Form TM35)

s.029 Filing of regulations for EU collective and certification marks; Schedule 2A, paragraph 4

s.030 Amendment of regulations of collective and certification marks; Schedule 1 paragraph 10 and Schedule 2 paragraph 11 (Forms TM36 & TM7)

s.031 Registration subject to disclaimer or limitation; section 13

s.032 Alteration of registered trade marks; section 44 (Forms TM25 & TM7)

s.033 Surrender of registered trade mark; section 45 (Forms TM22 & TM23)

s.035 Renewal of registration; section 43 (Form TM11)

s.037 Restoration of registration; section 43 (Form TM13)

s.037 Restoration of a European Union trade mark; Schedule 2A, paragraph 28

s.038 Application for revocation (on the grounds of non-use); section 46(1)(a) or (b) (Forms TM8(N) & TM26(N))

s.039 Application for revocation (on grounds other than non-use); section 46(1)(c) or (d) (Forms TM8 & TM26(O))

s.041 Application for invalidation: filing of application and counter-statement; section 47 (Forms TM8 & TM26(I))

s.042 Application for invalidation: evidence rounds

s.043 Setting aside cancellation of application or revocation or invalidation of registration; (Form TM29)

s.044 Procedure on application for rectification; section 64 (Form TM26(R))

s.045 Procedure for intervention

s.046 Form of register; section 63(1)

s.047 Entry in register of particulars of registered trade marks; section 63(2) (Form TM24)

s.048 Entry in register of particulars of registrable transactions; section 25

s.049 Application to register or give notice of transaction; sections 25 & 27(3) (Form TM16, TM24, TM50 & TM51)

s.050 Public inspection of register; section 63(3)

s.053 Removal of matter from register; sections 25(5)(b) and 64(5) (Form TM7)

s.054 Change of classification; sections 65(2) & 76(1)

s.055 Opposition to proposals; sections 65(3), (5) & 76(1) (Form TM7)

s.056 Request for information; section 67(1) (Form TM31C)

s.059 Confidential documents

s.061 Registrar may refuse to deal with certain agents; section 88

s.062 General powers of registrar in relation to proceedings

s.064 Evidence in proceedings before the registrar; section 69

s.065 Registrar to have power of an official referee; section 69

s.066 Hearings before registrar to be in public

s.067 Costs of proceedings; section 68

s.068 Security for costs; section 68

s.070 Decisions subject to appeal; section 76(1)

s.071 Appeal to person appointed; section 76

s.072 Determination whether appeal should be referred to court; section 76(3)

s.074 Correction of irregularities in procedure

s.077 Alteration of time limits (Form TM9)

s.078 Filing of documents by electronic means

s.079 Electronic communications

s.082 Translations

s.083 Revocation of previous rules and proceedings commenced under previous rules

Duty extraction and severity labels are Guvnor’s analysis of the instrument, not the instrument itself. Always verify against the linked source text.

Trade Marks Rules 2008

Does it bind you?

Other Acts binding the same actors

What it requires