Statutory Instruments
2008 No. 1958
Trade Marks
The Trade Marks (Fees) Rules 2008
Made
21st July 2008
Laid before Parliament
23rd July 2008
Coming into force
1st October 2008
The Secretary of State makes the following Rules in exercise of the powers conferred by section 79 of the Trade Marks Act 1994 (“ the Act ”) and of the power conferred by the Department of Trade and Industry (Fees) Order 1988 .
Citation, commencement and interpretation
1. —(1) These Rules may be cited as the Trade Marks (Fees) Rules 2008 and shall come into force on 1st October 2008.
(2) These Rules shall be construed as one with the Trade Marks Rules 2008 (“ the 2008 Rules ”).
Fees payable
2. —(1) Except as provided in rule 3A, the fees to be paid in respect of any matters arising under the Act and the 2008 Rules shall be those specified in the Schedule to these Rules.
(2) In any case where a form specified in the Schedule as the corresponding form in relation to any matter is specified in the 2008 Rules, that form shall be accompanied by the fee specified in respect of that matter (unless the 2008 Rules otherwise provide).
Repayment of fee
3. —(1) Where the registrar—
(a) has received a request for expedited examination of an application for registration of a trade mark under rule 5(2) of the 2008 Rules; and
(b) following the expiry of a period of ten business days (as specified in a direction given by the registrar under section 80 of the Act) beginning on the business day after the date of filing of the application for registration, notifies the applicant, in accordance with rule 15 of the 2008 Rules, whether or not it appears to the registrar that the requirements for registration are met,
the registrar shall repay the fee specified in the Schedule in respect of a request for expedited examination.
(2) Where a fee has been paid in error, the registrar shall repay the same; and where a fee is paid in excess of the amount specified, the registrar shall remit the amount paid in excess.
Temporary fee reduction
3A.—(1) This rule applies to the fees (“the relevant fees”) identified in paragraph (3).
(2) During the period beginning on 30th July 2020 and ending on 31st March 2021, the relevant fees are—
(a) nil, in the case of the fees identified in paragraph (3)(a) and (b);
(b) £1, in the case of the fee identified in paragraph (3)(c).
(3) The relevant fees referred to in paragraph (1) are—
(a) the fee of £100 which must accompany Form TM9,
(b) the fee of £100 which must accompany Form TM13, and
(c) the fee of £50 which must accompany Form TM11 on a delayed renewal of registration under rule 36(2) of the 2008 Rules.
Revocations
4. The following instruments are revoked—
(a) The Trade Marks (Fees) Rules 2000 save insofar as they relate to fees payable in respect of matters arising under the Trade Marks (International Registration) Order 1996
(b) The Trade Marks (Fees) (Amendment) Rules 2007 ;
(c) The Trade Marks and Trade Marks (Fees) (Amendment) Rules 2008 .
Baroness Morgan of Drefelin
Parliamentary Under Secretary of State for Intellectual Property and Quality
Department for Innovation, Universities and Skills
Rule 2
SCHEDULE Fees Payable
(In this section references to a rule are references to that rule in the 2008 Rules)
| Number of corresponding form | Item | Amount |
|---|---|---|
| £ | ||
| TM3 | Standard application for registration of a trade mark (rule 5) or a series of trade marks (rule 28) | 200 |
| e-TM3 | Request to the Registrar for expedited examination of electronic application for registration of a trade mark (rule 5(2)) | 300 |
| TM3 | Class fee (rule 5), for each class over one contained in a standard application | 50 |
| TM3 | Series fee (rule 28(1A)), for each trade mark over two contained in a standard application | 50 |
| e-TM3 | Electronic application for registration of a trade mark (rule 5(1B)) or a series of trade marks (rule 28) | 170 |
| e-TM3 | Class fee (rule 5), for each class over one contained in an electronic application | 50 |
| e-TM3 | Series fee (rule 28(1A)), for each trade mark over two contained in an electronic application | 50 |
| TM3A | Application for additional classes following examination of a mark (rule 8(4)), for each additional class | 50 |
| TM5 | Request to the registrar for a statement of the reasons for his decision (rule 69(2)) | 100 |
| . . . | . . . | . . . |
| TM7 | Notice of opposition to the registration of a mark (rule 17(1)) | 200 |
| TM7 | Notice of opposition to the registration of a mark where the grounds of opposition are based solely on either or both of sub-sections 5(1) and (2) of the Trade Marks Act 1994 | 100 |
| TM7 | Notice of opposition to the amendment of an application (rule 25(2)), or to the amendment of the regulations relating to a certification or collective trade mark (rule 30(4)), to the alteration of a registered trade mark (rule 32(3)), to the removal of matter from the register (rule 53(2)(a)), to the reclassification of a mark in accordance with the relevant Nice Classification (rule 55(1)) | 200 |
| TM7F | Notice of fast track opposition to the registration of a mark (rule 17A) | 100 |
| TM7G | Application to add grounds, other than under section 5(1) or 5(2) of the Act , to an opposition made under Rule 17 (rule 62(1)(e)) | 100 |
| TM9 | Request for extension of time (rule 77(2)) | 100 |
| TM11 | Renewal of registration (rule 35) | 200 |
| TM11 | Class fee for each class over one (rule 35) | 50 |
| TM11 | Delayed renewal of registration (rule 36(2)) | 50 |
| TM12 | Request for division of an application (rule 26(1)) | 100 |
| TM13 | Request for the restoration and renewal of a registration removed from the register for failure to renew (rule 37(1)) | 100 |
| TM16 | Request to enter details of an assignment (rule 49(1)(a)) | 50 |
| TM24 | Request to enter details relating to the grant, amendment or termination of any security interest or the making by personal representatives of an assent or to an order of a court or other competent authority (rule 49(1)(d) and (e)) | 50 |
| TM26 (N) | Request for the revocation of a registration (on grounds of non-use) (rule 38) | 200 |
| TM26 (O) | Request for the revocation of a registration (on grounds other than non-use) (rule 39) | 200 |
| TM26 (I) | Request for the invalidation of a registration (rule 41) | 200 |
| TM31C | Request for information about applications and registered trade marks (rule 56) | 20 |
| TM31R | Request for certified copy of an entry on the register (rule 51), per certificate | 20 |
| TM35 | Filing of regulations governing the use of a certification or collective mark (rule 29) | 200 |
| TM36 | Request to amend regulations governing the use of a certification or collective mark (rule 30(1)) | 100 |
| TM50 | Request to enter details relating to a grant of a licence (rule 49(1)(b)) | 50 |
| TM51 | Request to enter details relating to an amendment to, or termination of a licence (rule 49(1)(c)) | 50 |
| TM55P | Appeal to the person appointed under section 76 in proceedings between two or more parties (rule 71(1A)) | 250 |