Statutory Instruments
2009 No. 2089
Intellectual Property
The Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009
Made
23rd July 2009
Laid before Parliament
30th July 2009
Coming into force
Rules 20 to 22
4th October 2009
Remainder
1st October 2009
The Secretary of State makes the following Rules in exercise of the powers conferred by sections 41, 78 and 79 of the Trade Marks Act 1994( 1 ) and section 123 of the Patents Act 1977( 2 ).
In accordance with articles 5 and 7 of the Department of Trade and Industry (Fees) Order 1988( 3 ), the Secretary of State has taken into account the functions and matters specified in Parts 2 and 4 of Schedule 1 and Parts 1 and 2 of Schedule 2 to that Order.
In accordance with paragraph 24 of Schedule 7 to the Tribunals, Courts and Enforcement Act 2007( 4 ), the Secretary of State has consulted the Administrative Justice and Tribunals Council before making these Rules.
Citation and commencement
1. These Rules may be cited as the Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009.
2. Rules 20 to 22 of these Rules come into force on 4th October 2009 and all other rules come into force on 1st October 2009.
Amendments to the Trade Marks Rules 2008
3. The Trade MarksRules 2008( 5 ) are amended as follows.
4. In rule 2(1), for the definition of “the Office” substitute—
“ “ the Office ” means the Patent Office which operates under the name “Intellectual Property Office”; ” .
5. In rule 5, omit paragraph (1) and insert—
“ (1) An application for the registration of a trade mark (other than a transformation application, which shall be filed on Form TM4) shall be filed on Form TM3 or, where the application is filed in electronic form using the filing system provided on the Office website, on Form e-TM3.
(1A) Where an application is filed on Form TM3 (a “standard application”) the application shall be subject to the payment of the standard application fee and such class and series fees as may be appropriate.
(1B) Where an application is filed on Form e-TM3 (an “electronic application”) the application shall be subject to the payment of the e-filed application fee and such class and series fees as may be appropriate, which shall be payable at the time the electronic application is made and if they are not so paid the application shall be subject to the payment of the standard application fee referred to in paragraph (1A) and such class and series fees as may be appropriate. ” .
6. In rule 5, at the beginning of paragraph (2) insert “Subject to paragraph (6)”.
7. In rule 5(3), for the words “Form TM3 which shall be filed electronically using the filing system provided on the Office website, or by such other means as the registrar may permit in any particular case,” substitute “Form e-TM3”.
8. In rule 5, after paragraph (5) add—
“ (6) Where it appears to the registrar that the period (the “routine period”) within which applicants are routinely notified of the outcome of an examination under section 37 is equal to or less than the period specified in paragraph (5), the registrar may suspend the right of applicants to file a request for expedited examination until such time as the routine period exceeds the period specified in paragraph (5) and the registrar shall, in each case, publish a notice on the Office website to this effect. ” .
9. In rule 13(2), for the words “one month” substitute “14 days”.
10. In rule 26(1), for the words “for a division” substitute “to divide the specification”.
11. In rule 28, omit paragraph (1) and insert—
“ (1) An application may be made in accordance with rule 5 for the registration of a series of trade marks in a single registration provided that the series comprises of no more than six trade marks.
(1A) Where an application for registration of a series of trade marks comprises three or more trade marks, the application shall be subject to the payment of the prescribed fee for each trade mark in excess of two trade marks. ” .
12. In rule 28, omit paragraphs (3), (4) and (7).
13. In rule 77(2)(a), after “extension” insert “relates to a time or period other than one specified under rule 13 and”.
Amendments to the Trade Marks (Fees) Rules 2008
14. The Schedule to the Trade Marks (Fees) Rules 2008( 6 ) is amended as follows.
15. In the entry “TM3 – Application for registration of a trade mark (rule 5) or a series of trade marks (rule 28) – 200”, before “Application” insert “Standard”.
16. In the entry “TM3 – Request to the Registrar for expedited examination of application for registration of a trade mark (rule 5(2)) – 300”, for “TM3” substitute “e-TM3” and before “application” insert “electronic”.
17. In the entry “TM3 – Class fee (rule 5), for each class over one – 50”, after “over one” insert “contained in a standard application”.
18. After the entry “TM3 - Class fee (rule 5), for each class over one – 50” insert the following—
| “ 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 ” |
19. In the entry “TM9 – Request for extension of time (rule 77(2)) - 50” for “50” substitute “100”.
Amendments to the Patents (Fees) Rules 2007
20. The Patents (Fees) Rules 2007( 7 ) are amended as follows.
21. In rule 3, at the end of paragraph (1)(b) insert “(except where an application is filed in electronic form or using electronic communications in accordance with directions given under section 124A and the application is accompanied by the fee, in which case the application fee is £20)”.
22. After rule 3 insert the following rule—
“ Electronic filing fee reduction
3A. Where Form 9A or 10 is filed in electronic form or using electronic communications in accordance with directions given under section 124A, the fee specified in Schedule 1 in respect of a request for a search in accordance with rule 27 of the 2007 Rules or a request for a substantive examination in accordance with rule 28 of the 2007 Rules shall in each case be reduced by £10. ” .
Transitional Provisions
23.Rule 12 shall not apply to an application for registration of a series of trade marks which was filed before 1st October 2009.
David Lammy
Minister for Higher Education and Intellectual Property
Department for Business, Innovation and Skills
23rd July 2009
1977 c.37 . Section 123 was amended by the Copyright, Designs and Patents Act 1988 (c.48) , Schedule 5, paragraph 29, and the Patents Act 2004 (c.16) , Schedule 2, paragraph 26.
S.I. 1988/93 , amended by S.I. 1990/1473 , both of which were made under section 102 of the Finance (No.2) Act 1987 (c. 51) .
S.I. 2008/1797 , to which there are amendments not relevant to these Rules.