Abolition of the Trade Marks and Service Marks Rules 1986 in respect of inter partes proceedings before the Registrar

In an appeal to the High Court by Interlego AG, against, inter alia, the decision of the Registrar to refuse to allow the division of an application proceeding under the old law, Mr Justice Neuberger considered the effect of the transitional arrangements set out in paragraph 10 of Schedule 3 of the 1994 Trade Marks Act.

He found that division was a matter of practice and procedure which applied to applications pending under the old Act by virtue of the transitional arrangements set out in Schedule 3 to, and section 78 of, the 1994 Trade Marks Act. He further found that the combined effect of Rules 1 and 69(1) of the 1994 Rules was to repeal the Trade Marks and Service Marks Rules 1986 without qualification and to replace them with the Trade Marks Rules 1994.

Consequently, the Registrar will apply the Trade Marks Rules 1994, and the Trade Marks (Amendment) Rules 1998, insofar as they relate to matters of practice and procedure, to applications and proceedings continuing under the old law.

In order to assist practitioners to make this change the Registrar will not impose Rule 13 of the Trade Marks (Amendment) Rules 1998 in respect of proceedings ongoing under the Trade Marks Act 1938, until 27 April 1998. Rules 48 to 52 of the Trade Marks and Service Marks Rules 1986 will continue to apply until the close of play on Friday 24 April 1998.

The most significant change that this ruling brings about is that the provisions and timescales set out in Rule 13 will govern all opposition (and rectification) proceedings forthwith. Thus the time allowed for filing evidence in all such proceedings whether under the Trade Marks Act 1938 or Trade Marks Act 1994 will be three months.

Rule 69(2) of the Trade Marks Rules 1994 provides that any period of time already running in accordance with the Trade and Service Marks Rules 1986 shall continue to run and so the Registrar will not revisit time periods in such proceedings that have already been set, nor will be set three monthly periods for the filing of evidence until 27 April 1998.

Practitioners will wish to note that no extensions of time can be granted under the Trade Marks (Amendment) Rules 1998 in respect of filing Forms TM7 or TM8. Therefore, any current application under threatened opposition’ must either have the opposition formalised by filing form TM7 or else at the end of the current extended period the application’s will proceed to registration.

All requests for extensions of time in inter partes proceedings on or after 27 April 1998 must be in accordance with Rule 62 of the Trade Marks (Amendment) Rules 1998 and be filed on form TM9 with the requisite fee and copied to the other party to the proceedings.