Citation and commencement

1. This Order may be cited as the Trade Marks (International Registration) Order 2008 and shall come into force on 1st October 2008.

Interpretation

2. In this Order–

"the Act" means the Trade Marks Act 1994 and "section" means a section of that Act;

"Common Regulations" means the regulations adopted under article 10 of the Madrid Protocol with effect from 1 April 1996 and as amended with effect from 1 April 2002;

"concurrent registered trade mark" means a trade mark as defined in Schedule 4, paragraph 2;

"date of the international registration" means the date of the international registration under Article 3(4) of the Madrid Protocol;

"international application" means an application by way of the Patent Office as office of origin to the International Bureau for registration of a trade mark in the International Register;

"International Register" means the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol;

"international registration" means a registration of a trade mark in the International Register;

"protected international trade mark (UK)" means an international registration which is the subject of a request for extension and which is protected in accordance with section 38 as modified by Schedule 2, paragraph 6 and references to "protection" and "protected" shall be construed accordingly;

"request for extension" means a request for an extension of protection to the United Kingdom under Article 3ter (1) or (2) of the Madrid Protocol which has been notified by the International Bureau;

"the Relative Grounds Order" means the Trade Marks (Relative Grounds) Order 2007(4);

"supplementary register" means the register of international trade marks (UK) required to be maintained under section 63 as modified by Schedule 2, paragraph 8 ;

"the Trade Marks Rules" means the Trade Marks Rules 2008(5) and "trade marks rule" shall be construed accordingly.

International trade marks (UK)

3.–(1) An international registration which is the subject of a request for extension shall be entitled to protection subject to the provisions of the Act, the Relative Grounds Order and the Trade Marks Rules as applied by this Order if the particulars of the request for extension were contained in an application for registration of a trade mark under the Act and such application would satisfy the requirements of the Act (including any imposed by the Trade Mark Rules).

(2) Subject to paragraph (3) a protected international trade mark (UK) shall be treated as if it were a trade mark registered under the Act and the holder shall have the same rights and remedies but shall be subject to the same conditions as the proprietor of a registered trade mark.

(3) The provisions of the Act (except those listed in Schedule 1, Part 1), the Relative Grounds Order and the Trade Marks Rules (except those listed in Schedule 1, Part 2) shall apply to international trade marks (UK) and requests for extension with the following modifications;

(a) references to a registered trade mark shall include references to a protected international trade mark (UK);

(b) references to a proprietor of a registered trade mark shall include references to the holder of a protected international trade mark (UK);

(c) references to an application for registration of a trade mark shall include references to a request for extension;

(d) references to an applicant for registration shall include references to the holder of an international registration in respect of which a request for extension has been made;

(e) references to registration of a trade mark shall include the conferring of protection on an international registration which is the subject of a request for extension;

(f) references to the goods or services for which a trade mark is registered shall include references to the goods or services in respect of which a protected international trade mark (UK) confers protection;

(g) references to the publication of the application include references to the publication of the notice of details of the international registration in the Journal;

(h) references to the register are to the supplementary register;

(i) the modifications set out in Schedule 2; and

(j) such further modifications as the context requires for the purpose of giving effect to those provisions as applied by this Order.

International applications originating in the United Kingdom

4. The provisions set out in Schedule 3 shall apply in relation to the making of applications for international registration by way of the Patent Office as office of origin.

Concurrent registrations and transformation applications

5. The provisions set out in Schedule 4 shall apply in relation to–

(a) the effects of international registration where a trade mark is also registered under the Act; and

(b) the transformation of an application for an international registration, or an international registration, into an application for registration of a trade mark under the Act.

Miscellaneous and General Provisions

6. The provisions set out in Schedule 5 shall apply.

Fees

7. The fees to be paid in respect of any matters arising under this Order shall be those specified in Schedule 6.

Revocations and transitional provisions

8.–(1) The instruments set out in Schedule 7 are revoked ("the previous Orders").

(2) Where immediately before this Order comes into force any time period prescribed by the previous Orders has effect in relation to any act or proceeding and has not expired, the time or period prescribed by the previous Orders and not by this Order shall apply to that act or proceeding.

(3) Except as provided by paragraph (4), where a new step is to be taken on or after 1st October 2008 in relation to any proceedings commenced under the previous Orders this Order shall apply to such proceedings from that date.

(4) Subject to paragraph (5), where prior to the entry into force of this Order:

(a) A Form TM8 and counter-statement have been filed in

(i) opposition proceedings; or

(ii) proceedings for the revocation of a trade mark on the grounds set out in section 46(1)(c) or (d); or

(iii) invalidation proceedings; or

(b) an application for revocation of a trade mark on the grounds set out in section 46(1)(a) or (b) has been filed,

the previous Orders shall apply with regard to the filing of any evidence in relation to those proceedings.

(5) Where proceedings as described in paragraph (4) are consolidated with proceedings commenced on or after 1st October 2008 this Order shall apply with regard to the filing of any evidence in relation to those consolidated proceedings.

Article 3(3)

SCHEDULE 1 Provisions of the Act and Trade Marks Rules which do not apply to International Trade Marks (UK) or requests for extension

PART 1

section 24(2)(b) (assignment or other transmission in relation to use of the trade mark in a particular manner or locality)

section 32(1), (2) and (4) (application for registration)

section 33(1) (date of filing )

section 34 (classification of trade marks)

section 39(2) (withdrawal, restriction or amendment of application)

section 40 (registration)

section 41 (registration: supplementary provisions)

section 42 (duration of registration)

section 43 (renewal of registration)

section 44 (alteration of registered trade mark)

section 45 (surrender of registered trade mark)

section 64(4) (change of name and address by proprietor or licensee)

section 65 (adaptation of entries to new classification)

section 79 (fees)

section 94 (falsification of register)

PART 2

trade marks rule 6 (claim to priority; sections 35 & 36)

trade marks rule 8 (application may relate to more than one class and shall specify the class (Form TM31C))

trade marks rule 9 (determination of classification)

trade marks rule 12(4)(a) (failure to provide an address for service)

trade marks rule 13 (deficiencies in application; section 32)

trade marks rule 46 (form of register; section 63(1))

trade marks rule 47 (entry in register of particulars of registered trade marks; section 63(2) (Form TM24))

trade marks rule 56 (request for information; s.67(1) (Form TM31C))

Article 3(3)(i)

SCHEDULE 2 Modifications to provisions of the Act applied to International Trade Marks (UK)

1.–(1) Section 25 (registration of transactions affecting registered trade mark) is modified as follows.

(2) Omit paragraph (a) of subsection (1) and substitute–

"(a) a person claiming to be entitled to any security interest (whether fixed or floating) over a protected international trade mark (UK) or any right in or under it, or".

(3) Omit paragraphs (a), (b) and (c) of subsection (2) and substitute–

"(a) a change to the ownership of a registration recorded by the International Bureau in the International Register pursuant to article 9 of the Madrid Protocol;

(b) the grant of a licence recorded by the International Bureau in the International Register pursuant to rule 20 bis of the Common Regulations;".

(4) After subsection (2)(e) insert–

"(f) any matter other than as is referred to in paragraphs (a) and (b) above that is recorded in the International Register pursuant to article 9 bis of the Madrid Protocol.".

(5) In subsection (3) omit "Until an application has been made for registration of the prescribed particulars of a registrable transaction" and substitute "Until an application for registration of a matter in the supplementary register pursuant to subsection (1) has been made or an application for registration of a registrable transaction in the International Register (in accordance with Article 9 bis of the Madrid Protocol and rule 20 bis of the Common Regulations) has been made".

(6) In subsection (4)(a) omit "the prescribed particulars of the transaction" and substitute "a transaction in the International Register (in accordance with Article 9 bis of the Madrid Protocol and rule 20 bis of the Common Regulations)".

2. In section 33 (date of filing), for subsection (1), substitute–

"33.–(1) The date of filing of a request for extension shall be the date of the international registration except–

(a) where at the time protection is conferred on an international trade mark (UK) there is a concurrent registered trade mark, the date of filing shall be the date of filing of the registered trade mark; and

(b) where a request for extension is made in accordance with Article 3ter(2) of the Madrid Protocol, the date of filing shall be the date that the request for extension was recorded in the International Register.".

3. In section 35 (claim to priority of convention application), for subsection (5), substitute–

"(5) The manner of claiming priority shall be determined in accordance with the Madrid Protocol and the Common Regulations.".

4. In section 37 (examination of application) omit subsections (3) to (5) and substitute–

"(3) If it appears to the registrar that the requirements for registration are not met, the registrar shall give notice of provisional refusal to the International Bureau.

(4) Where the International Bureau notifies the registrar or the registrar considers that a particular term used to indicate any of the goods or services included in the international registration is–

(a) too vague for the purposes of classification; or

(b) incomprehensible or linguistically incorrect,

the registrar may give notice of provisional refusal to the International Bureau in respect of that term.

(5) Where a decision of the registrar has been notified to the International Bureau pursuant to subsection (3) or (4), the registrar shall give the holder of the international registration an opportunity, within such period as the registrar may specify, to make representations or amend the request for extension by limiting the goods and services.".

5. In section 38(2) (publication, opposition proceedings and observations) after "opposition to the registration" insert "in which event the registrar shall give notice of provisional refusal to the International Bureau".

6. After section 38, insert–

"38A. Notices of provisional refusal

(1) A notice of provisional refusal must set out the matters required by Article 5 of the Madrid Protocol and Rule 17 of the Common Regulations.

(2) Except as provided in subsection (3), a notice of provisional refusal may not be given after the expiry of the relevant period.

(3) Where before the expiry of the relevant period the registrar has given notice to the International Bureau–

(a) that the period prescribed for the purposes of section 38(2) expires after the end of the relevant period; or

(b) that the period prescribed for the purposes of section 38(2) expires less than one month before the end of the relevant period;

a notice of provisional refusal may be given after the expiry of the relevant period provided that it is given before the end of the period of one month beginning immediately after the period prescribed for the purposes of section 38(2).

(4) Where the registrar sends the International Bureau a notice of provisional refusal, the registrar must notify the International Bureau as to the final decision (meaning a decision from which no appeal may be brought) on whether the refusal should be upheld.

(5) The relevant period is the period of 18 months beginning with the date the International Bureau sent the registrar the request for extension.

38B. Protection

(1) Where no notice of provisional refusal is given to the International Bureau following publication under section 38(1), the international registration which is the subject of the request for extension shall be protected as a protected international trade mark (UK) with effect from the first day immediately following the end of the period prescribed for the purposes of section 38(2).

(2) Where notice of provisional refusal is given following publication under section 38(1), the international registration which is the subject of the request for extension shall be protected as a protected international trade mark (UK) with effect from the date on which the registrar notifies the International Bureau that the final decision is that the provisional refusal should not be upheld in accordance with section 38A(4).

(3) The reference to the completion of the registration procedure in section 46(1) shall be construed as a reference to the conferring of protection on an international registration in accordance with this section.

(4) When an international registration becomes protected as a protected international trade mark (UK), the registrar shall–

(a) notify the International Bureau that the international registration is protected in the United Kingdom; and

(b) publish a notice specifying the number of the international registration in respect of that trade mark, the date on which protection is conferred and the date and place of publication of the request for extension under section 38(1) in relation to that trade mark.".

7. In section 39 (Withdrawal, restriction or amendment of application) for subsection (1) substitute–

"(1) The goods and services covered by a request for extension may be restricted at any time by the applicant provided that if the request for extension has been published, the restriction must also be published in the Journal and recorded in the supplementary register. ".

8.–(1) Section 63 (the register) shall be modified as follows.

(2) For subsection (1) substitute–

"(1) The registrar shall maintain a register for the purpose of entering transactions under section 25(1) (as modified by paragraph 1 of Schedule 2 to the Trade Marks International Registration) Order 2008) and disclaimers and limitations relating to international trade marks (UK).".

(3) In subsection (3) for the words "shall be kept in such manner as may be prescribed" substitute "need not be kept in documentary form".

(4) After subsection (3) insert–

"(4) Following notification from the International Bureau under rule 28(2) of the Common Regulations the registrar may correct an error or omission in the information entered in the register required to be maintained under subsection (1).".

9. In section 67(2)(a) (Information about applications and registered trade marks) before "in such cases" insert "any information recorded in the International Register or".

Article 4

SCHEDULE 3 International applications originating in the United Kingdom

Application for international registration at the Patent Office

1.–(1) An applicant for the registration of a trade mark, or the proprietor of a registered trade mark, may, subject to the provisions of this paragraph, apply by way of the Patent Office as office of origin for the international registration of the trade mark.

(2) For the purposes of this paragraph an applicant shall be–

(a) a British citizen, a British overseas territories citizen, a British overseas citizen, a British subject or a British protected person;

(b) an individual domiciled in the United Kingdom;

(c) a body incorporated under the law of a part of the United Kingdom; or

(d) a person who has a real and effective industrial or commercial establishment in the United Kingdom.

(3) Where the registrar has reasonable doubts about whether an applicant is eligible, the registrar–

(a) must inform the applicant of the reason for those doubts; and

(b) may require that applicant to file evidence in support of his eligibility.

(4) Where–

(a) the registrar has no doubts or is satisfied as to the applicant´s eligibility; and

(b) the particulars appearing in the application for an international registration correspond with the particulars at that time in the basic application or, as the case may be, the basic registration,

the registrar must submit the application to the International Bureau.

(5) In this Schedule–

(a) "basic application" means an application for registration of a trade mark in the United Kingdom in respect of which application is made for international registration;

(b) "basic registration" means a trade mark registered in the United Kingdom in respect of which application is made for international registration.

Termination of basic application or basic registration

2.–(1) This paragraph applies where the registrar submits an application to the International Bureau in accordance with paragraph 1 and the basic application or basic registration is terminated.

(2) Where, before the end of the relevant period, a basic application or basic registration is terminated, the registrar shall request that the International Bureau cancel the International Registration.

(3) A basic application is terminated where it is–

(a) not accepted;

(b) refused; or

(c) withdrawn (including deemed as such).

(4) A basic registration is terminated where the rights in the registered trade mark cease to have effect.

(5) Where a basic application or basic registration is terminated in respect of some only of the goods or services for which the trade mark is registered (or is sought to be registered), the request must relate only to those goods and services.

(6) The relevant period is the period of 5 years beginning with the date of the international registration.

(7) But if during that period the registrar becomes aware of proceedings which may result in the termination of the basic application or basic registration, the registrar must notify the International Bureau accordingly, stating that no final decision has been made.

(8) On completion of the proceedings referred to in paragraph (7) the registrar must promptly notify the International Bureau of their outcome.

Division or merger of basic application or basic registration

3.–(1) This paragraph applies where the registrar submits an application to the International Bureau in accordance with paragraph 1 and–

(a) the basic application is divided into two or more applications; or

(b) two or more basic applications or basic registrations are merged into a single application or registration.

(2) Where, before the end of the relevant period, a basic application is divided or two or more basic applications or basic registrations are merged, the registrar shall notify the International Bureau and shall indicate–

(a) the number of the international registration or, where the mark has not been registered, the number of the basic application;

(b) the name of the applicant or the holder of the relevant trade mark; and

(c) the number of each application resulting from the division or the number of the application or registration resulting from the merger.

(3) The relevant period is the period of 5 years beginning with the date of the international registration.

Article 5

SCHEDULE 4 Transformation applications and concurrent registrations

Transformation applications

1.–(1) A transformation application is an application to register a trade mark under the Act where–

(a) the mark was the subject of an international registration and the international registration was the subject of a request for extension; and

(b) the international registration was cancelled at the request of the Office of origin under Article 6(4) of the Madrid Protocol.

(2) But an application shall only be treated as a transformation application where the goods and services cited in it are identical to some or all of the goods and services included in the international registration.

(3) Any application made under the Act which is a transformation application shall state that it is made by way of transformation.

(4) Such an application may only be made before the end of the period of three months beginning with the date on which the international registration was cancelled.

(5) A transformation application may only be made by the person who was the holder of the international registration immediately before it was cancelled.

(6) Where on or before the date the transformation application was made, the trade mark is protected as an international trade mark (UK), the mark shall be registered under the Act; and it shall have the date of filing of the cancelled international trade mark (UK).

(7) Where on that date the trade mark is not so protected, the transformation application shall be treated as an application to register under the Act and it shall have the date of filing of the request for extension relating to that mark.

(8) Where in relation to the international registration a right of priority was claimed on the basis of a Convention application, the transformation application shall have the same right of priority.

Concurrent registrations

2.–(1) This paragraph applies where at the time protection is conferred on an international trade mark (UK) there is a concurrent registered trade mark.

(2) A registration is concurrent where–

(a) the proprietor of the registered trade mark is the holder of the protected international trade mark (UK);

(b) the registered trade mark is the same as the protected international trade mark (UK);

(c) the goods and services in relation to which protection is conferred by the international trade mark (UK) include all those for which the registered trade mark is registered.

(3) The protected international trade mark (UK) shall be treated as being registered under the Act as of the date of registration of the registered trade mark.

(4) The priorities claimed in respect of the registered trade mark may also be claimed in respect of the international trade mark (UK).

(5) The provisions of this paragraph shall continue to apply after the registered trade mark lapses or is surrendered, but shall cease to apply if or to the extent that it is revoked or declared invalid.

(6) On the application of the holder of the protected international trade mark (UK) the registrar shall note the international registration in the register against the registered trade mark.

(7) For the purposes of paragraph (6), the holder of the international trade mark (UK) shall make an application to the registrar using Form TM28.

Article 6

SCHEDULE 5 Miscellaneous and General Provisions

Correction of international registration

1.–(1) Where the International Bureau notifies the registrar that it has corrected an international registration and the correction either–

(a) substantially affects the identity of the trade mark; or

(b) alters the goods or services covered by the international registration,

the registrar may treat the notification as a new request for extension.

(2) Where paragraph (1)(a) applies, any earlier request for protection shall be deemed to have been withdrawn and any resulting protection granted to the international trade mark (UK) shall be treated as having been declared invalid.

(3) Where paragraph (1)(b) applies and–

(a) the correction extends the goods and services covered by the request for extension, the new request for extension shall apply only to the additional goods and services; or

(b) the correction restricts the goods and services covered by the international registration, to the extent it relates to goods and service outside the restriction, an earlier request for protection shall be treated as having been withdrawn, and any resulting protection granted to the international trade mark (UK) shall be treated as having been declared invalid.

Assignment

2.–(1) A protected international trade mark (UK) may only be assigned to an eligible person.

(2) An eligible person is–

(a) a national of any country which is a party to the Madrid Protocol;

(b) an individual domiciled in such a country;

(c) a body incorporated under the law of such a country; and

(d) a person who has a real and effective industrial or commercial establishment in such a country.

Judicial notice

3.–(1) Judicial notice shall be taken of the following–

(a) the Madrid Protocol and the Common Regulations;

(b) copies issued by the International Bureau of entries in the International Register;

(c) copies of the periodical gazette published by the International Bureau in accordance with rule 32 of the Common Regulations.

(2) Any document mentioned in paragraph (1)(b) or (c) shall be admissible as evidence of any instrument or other act of the International Bureau so communicated.

(3) Where in relation to the international registration a right of priority was claimed on the basis of a Convention application, the transformation application shall have the same right of priority.

Revocation

4. Where the protection of a protected international trade mark (UK) is revoked or declared invalid to any extent, the registrar shall notify the International Bureau, and–

(a) in the case of a revocation, the rights of the proprietor shall be deemed to have ceased to exist to that extent as from–

(i) the date of the application for revocation, or

(ii) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date;

(b) in the case of a declaration of invalidity, the trade mark shall to that extent be deemed never to have been a protected international trade mark (UK).

Requests for Information

5. A request for information relating to a protected international trade mark (UK) must be made on Form TM31M.

Communication of information to the International Bureau

6. Notwithstanding any other enactment or rule of law, the registrar may communicate to the International Bureau any information which the United Kingdom is required to communicate by virtue of this Order or pursuant to the Madrid Protocol or Common Regulations.

Transmission of fees to the International Bureau

7. The registrar may accept for transmission to the International Bureau fees payable to the International Bureau in respect of an application for international registration originating in the United Kingdom or a renewal of such an international registration, subject to such terms and conditions as the registrar may specify, either generally by published notice, or in any particular case by written notice to the applicant desiring to make payment by such means.

Article 7

SCHEDULE 6 Fees

Article 8

SCHEDULE 7 Revocations

EXPLANATORY NOTE

(This note is not part of the Order)

This Order modernises and replaces The Trade Marks (International Registration) Order 1996 (SI 1996 No 714 as amended) ("the Order"). The Order is made under powers conferred by section 54 of the Trade Mark Act 1994 "TMA") and gives effect in the UK to the provisions of the Madrid Protocol, which is the system by which trade marks can be registered internationally and subsequently protected in the holder´s choice of designated states or territories.

The Order has been amended five times since it came into force, normally in the wake of changes to domestic trade mark rules. Recent changes to the domestic rules have resulted in a new statutory instrument (SI 2008 No 1797, The Trade Marks Rules 2008, the "rules") which come into force on 1st October 2008.

Substantive changes introduced by those rules need also (to the extent that they are applicable) to be applied to international marks (UK) through the mechanism of this new Order.

Furthermore, this Order recasts the old Order to make it as comprehensive an instrument as possible avoiding some of the vaguer provisions used in the earlier Order. Thus, specific provisions of the TMA and rules are applied, disapplied or modified in the light of Madrid Protocol provisions. Specific provision for fees is now made in this Order and the layout has been made more convenient. In other respects however the status quo of the existing Order is preserved and the only substantive changes are those that derive from changes to the rules. Like its predecessor, this Order must be interpreted in a way which is entirely consistent with the Madrid Protocol and regulations that attach thereto. The Fees payable in relation to international registration are now incorporated within this Order.

As the Order contains no changes of substance other than in relation to the application of the Trade Marks Rules 2008 no separate impact assessment has been prepared in respect of it. A full impact assessment has been prepared in relation to the Trade Marks Rules and is available from the UK Intellectual Property Office, Trade Marks Law Section, Concept House, Cardiff Road, Newport NP10 8QQ. Copies of this impact assessment are annexed to the Explanatory Memorandum relating to the rules which is available on the OPSI website and copies of it have been placed in the libraries of both Houses of Parliament.