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Changes to the Trade Mark Rules

Amendments to the Trade Mark Rules have recently been signed into law and have introduced some important changes to trade mark practice. The main changes introduced are as follows:

Address for Service: The requirement to provide an address for service to the Controller of Patents, Trade Marks and Designs (the “Controller”) now states that this must be an address within the EEA (rather than in the EU).

Ability to file written submissions in lieu of attending a hearing: A new procedure has been introduced whereby parties may choose to submit written submissions instead of attending a hearing. If both parties decide to file written submissions then each party will have an opportunity to respond to the submissions of the other party. The Controller is not empowered to extend the time limits applicable to this new procedure.

Merger of separate applications or registrations: The Controller is now prohibited from merging separate registrations unless the proprietor of the mark certifies that any person having an interest in the registration by virtue of the registrable transaction, e.g. a licence or security interest, has been notified of the proposed merger at least 3 months prior to the date of the request and has not objected to it. The details to be entered in the registrar in relation to the merged registration are also included.

Registration of a series of Trade Marks: the regulations have placed a cap on the number of marks which may appear in a series to 6 marks. The new rules also provide for the payment of a fee for each trade mark in a series in excess of two.

Procedure for an application of a declaration of invalidity: The new rules provide that the same requirements and procedures governing oppositions to registration shall apply to applications for a declaration of invalidity. However the Controller shall not declare a trade mark to be invalid merely because the proprietor has not filed a counter statement.

Hearing time limits: The new rules extend the time limits for making an application to the Controller for a hearing and notifying the Controller of intention to attend a hearing from 10 days to 21 days.
New application form: The schedule to the rules contain a new application form which is to be used when applying for a trade mark.