S.I. No. 199 of 1996.  
TRADE MARKS RULES 1996  
I, Richard Bruton, Minister for Enterprise and Employment, in exercise of the powers 
conferred on me by  section 81  of the  Trade Marks Act, 1996  (No. 6 of 1996), and in exercise, 
with the sanction of the Minister for Finance, of the powers conferred on me by section 82 of 
that Act, and in exercise of the powers conferred on me by  section 92  (1) of the  Patents Act, 
1992  (No. 1 of 1992), as amend ed by  section 73  of the  Trade Marks Act, 1996  , hereby make 
the following rules:  
Preliminary  
1 Short title.  
1. These rules may be cited as the Trade Marks Rules, 1996.  
2 Interpretation.  
2. (1) In these Rules, unless the context otherwise requires — 
"the Act" means the  Trade Marks Act, 1996  (No. 6 of 1996);  
"agent" means an agent duly authorised in accordance with these Rules and 
registered in the Register of Trade Mark Agents;  
"form" means a form set out in Schedule 2;  
"Schedule" means one of the Schedules to these rules;  
"section" mean s a section of the Act;  
"specification" means the statement of goods or services in respect of which a trade 
mark is registered or proposed to be registered.  
(2) In these Rules a subsection of a section is indicated by a number enclosed in 
brackets immedia tely following the number of the section.  
3 Commencement.  3. These Rules shall come into operation on the first day of July, 1996.  
4 Fees.  
4. (1) The fees to be paid in relation to any matter under the Act and these Rules shall be 
those specified in Schedu le I. 
(2) Fees shall be paid in the currency of the State. Save as otherwise provided in this 
Rule, payment of a fee or fees by any person shall be made by cheque payable to the 
Minister for Enterprise and Employment and crossed "& Co.", guaranteed to the 
satisf action of the Controller, drawn on any bank carrying on business in the State and 
presented at the Office with the application or the matter to which it relates.  
(3) Payment of a fee or fees by a person who, at the date of payment, is outside the 
State sha ll be made by banker's draft, or Post Office Money Order, payable to the 
Minister for Enterprise and Employment and crossed "& Co.", and sent by post to the 
Office.  
(4) Any fee or fees paid at the Office not exceeding £200 may be paid in cash.  
(5) (a) A re quest for the remission of the whole or part of any fee properly paid shall be 
made in writing.  
(b) No appeal shall lie from any decision of the Controller in respect of such a 
request.  
5 Certificates for use in obtaining registration abroad.  
5. (a) The Co ntroller may issue certificates for use in connection with applications for 
registration abroad of marks which are the subject of applications pending before the 
Controller or which he or she has registered in the register.  
(b) A certificate shall contain such information about a pending application or a 
registration as may be appropriate.  
6 Classification of goods and services.  
6. For the purposes of the registration of trade marks, goods and services shall be classified 
as specified in the Nice Nice Agree ment Concerning the International Classification of 
Goods and Services for the Purposes of the Registration of Marks (1957), as revised at 
Stockholm (1967) and at Geneva (1977), and as amend ed. 
7 Signature of documents.  
7. A document purporting to be signe d by. or on behalf of, a partnership or body corporate 
shall be signed, by any person who is duly authorised to sign the document.  
8 Filing of documents.  8. (a) (i) Any application, notice or other document authorised or required under the Act 
or these Rul es to be delivered to the Controller or any other person may be sent by post.  
(ii) In proving the sending it shall be sufficient to prove that the letter was properly 
addressed, prepaid (when requisite) and posted.  
(b) The Controller may at his or her disc retion allow submission of documents by other 
means subject to such terms or conditions as may be specified by him or her and 
published in the Journal.  
9 Translations.  
9. (1) Where a document or part thereof which is in a foreign language is sent to the 
Controller in connection with any proceedings under the Act or these Rules, a translation 
verified to the satisfaction of the Controller shall also be furnished to the Controller.  
(2) The Controller may refuse to accept any translation which is in his or her  opinion 
inaccurate and thereupon another translation verified as aforesaid shall be furnished, 
together with the appropriate number of copies thereof.  
10 Address for service.  
10. (1) (a) Every applicant and any person concerned in any proceeding under the  Act or 
these Rules and every trade mark proprietor shall give to the Controller an address for 
service in the State and that address may for all purposes under the Act and these Rules 
be treated as the act ual address of the person who has furnished it.  
(b) A letter addressed to such applicant, person or proprietor to his or her address 
for service shall be deemed to be properly addressed.  
(2) For the purposes of this Rule, in a case where the person or proprietor concerned 
desires that the address for se rvice shall consist of the address of an agent who is 
registered in the Register of Trade Mark Agents, the Controller may accept an address 
for service comprising the name of the agent so registered followed by a statement in 
the following terms: "at his o r her address as recorded for the time being in the Register 
of Trade Mark Agents".  
(3) Where an address for service has not been given as required under paragraph (1), 
the Controller shall send the person concerned notice to file an address for service 
within two months of the date of the notice and if that person fails to do so — 
(a) in the case of an applicant under section 37, 51, 52 or 67, the application shall 
be treated as abandoned;  
(b) in the case of a person referred to in section 43(2) or 43(3), t he person shall be 
deemed to have withdrawn from the proceedings; and  (c) in the case of a proprietor of a registered trade mark which is the subject of an 
application under Rule 41, the proprietor shall not be permitted to take part in 
proceedings.  
11 Rev ocation of existing rules &c.  
11. (1) Subject to paragraph (2), the Rules specified in Schedule 3 are hereby revoked.  
(2) The said Rules shall continue to apply to any matter to which by virtue of section 
100 of, and the Third Schedule to the Act, the Act of 1963 continues to apply.  
Application for Registration  
12 Application for registration.  
12. (1) The following documents are hereby prescribed for the purpose of section 38:  
(a) a document indicating that registration of a trade mark is sought and contain ing 
the name and address of the person requesting registration;  
(b) a document containing a representation of the mark the registration of which is 
sought;  
(c) a document in which the goods or services in respect of which the mark is to be 
registered are s tated.  
(2) (a) An application for registration of a trade mark shall be made in Form No. 1 and 
shall contain the information required by that Form.  
(b) Where a right to priority is claimed, the information required by Form No. 1 
concerning claims to priori ty shall be furnished in the Form.  
(3) (a) A representation of a mark shall not exceed 8cm x 8cm in size unless the 
Controller, in the case of a specific application, agrees to a greater size.  
(b) The Controller may request an applicant to submit additiona l representations of 
a mark.  
(c) Where an application indicates that registration of a three -dimensional mark is 
sought, the representation of the mark shall consist of a photographic reproduction 
or a graphic representation of the mark. A number of perspe ctives not exceeding 6 
may be submitted. The representation which most characteristically illustrates the 
mark shall be shown in the space indicated in Form No. 1 and the additional 
perspectives shall be submitted on separate sheets.  (d) The Controller may  give directions either generally, or by reference to a specific 
application for registration, as to the furnishing and form of representation of marks 
for the purpose of applications for registration.  
(4) If an applicant states that a mark, when used, wil l be in a particular colour (or 
colours), this fact shall be published by the Controller when the application for 
registration has been accepted and shall be entered in the register upon registration of 
the mark.  
(5) If the application fee was not submitted with the application and is not received 
within a period of one month from the date of filing of an application for registration as 
determined under section 38(1), the application shall be deemed to have been 
abandoned at the end of that period.  
13 Claim to priority.  
13. Where a right to priority is claimed under section 40 or 41 there shall be filed, with the 
application or within 3 months of the date of filing thereof, a certificate by the competent 
national au thority verifying to the Controller's satisfaction the date and country of filing, the 
representation of the mark, the goods or services covered by the earlier application and its 
filing number.  
14 Application may be for more than one class.  
14. (1) A sing le application may be made for registration in respect of one or more classes 
of the Nice Agreement.  
(2) Every application shall specify the class or classes to which it relates and shall 
specify the goods or services relating to that class in respect of w hich registration is 
sought.  
(3) The Controller may require the applicant to amend  an application which specifies 
goods or services by reference to a class in which they do not fall, and to pay any 
additional class fee or fees which may be required.  
15 Mat ters not registrable.  
15. The Controller may refuse to accept any application for the registration of a mark upon 
which any of the following appears in the representation of the mark: — 
(a) the word "Patent", "Patented", "Registered", "Copyright", or any ot her word or any 
symbol with a like signification;  
(b) any badge, emblem, or device referred to in section 9(3) unless the written consent 
of the appropriate public authority to the registration is furnished to the Controller;  (c) words or initials preclude d from registration by  section 31  of the  Industrial 
Research and Standards Act, 1961  (No. 20 of 1961).  
Procedure on Receipt of Application  
16 Search.  
16. (1) For the purposes of sections 10 and 11, the scope and metho dology of the search of 
earlier trade marks shall be as determined by the Controller.  
(2) The Controller may at his or her discretion cause a search to be renewed at any time 
before the acceptance of an application.  
17 Publication.  
17. An application for r egistration which has been accepted shall be published in the Journal 
in such manner as the Controller may direct and the Controller shall inform the applicant of 
the acceptance.  
18 Notice of opposition to registration.  
18. (1) Notice of opposition under s ection 43 shall be sent to the Controller within three 
months of the date of publication of the application in the Journal.  
(2) The notice of opposition shall be submitted in duplicate accompanied by the 
prescribed fee or evidence of payment thereof, and s hall include a statement of the 
grounds of opposition.  
(3) The Controller shall on receipt of the notice of opposition send a copy to the 
applicant.  
19 Counter -statement.  
19. (1) Within three months of receipt by the applicant of a copy of the notice of 
opposition, the applicant shall file a counter -statement in duplicate with the Controller, 
accompanied by the prescribed fee or evidence of payment thereof.  
(2) The Controller shall on receipt of a counter -statement forthwith send a copy thereof 
to the opponent and failing receipt of a counter -statement within the prescribed period 
the application shall be deemed to have been withdrawn.  
20 Evidence in support of opposition.  
20. (1) Within three months of receipt by the opponent of the copy of the counter -statement 
under Rule 19, the opponent shall file with the Controller such evidence by way of 
statutory declaration as he or she desires to adduce in support of  his or her opposition and 
shall send to the applicant a copy thereof.  (2) Unless the Controller otherwise directs, an opponent who fails to file evidence 
under this Rule shall be deemed to have abandoned his or her opposition and the 
Controller shall proc eed with the application accordingly.  
21 Evidence in support of application.  
21. If the person opposing the registration files evidence under Rule 20, the applicant shall, 
within three months of receipt of a copy of such evidence, file such evidence by way  of 
statutory declaration as he or she desires to adduce in support of the application with the 
Controller and shall send a copy thereof to the opponent.  
22 Evidence in reply by opponent.  
22. (1) The opponent may, within two months of receipt of a copy of the evidence filed 
with the Controller under Rule 21, file evidence with the Controller by way of statutory 
declaration and shall deliver to the applicant a copy thereof.  
(2) Evidence filed by the opponent under this Rule shall be confined to matters stric tly 
in reply.  
23 Further evidence  
23. No further evidence may be filed unless, in any proceedings before the Controller, the 
Controller gives leave to either the applicant or the opponent to file evidence upon such 
terms as to costs or otherwise as the Con troller may think fit.  
24 Exhibits.  
24. (1) (a) Where there are exhibits to declarations filed in an opposition, a copy or 
impression of such exhibits shall be sent to the other party unless such copy or impression 
cannot conveniently be furnished.  
(b) If such copy or impression cannot conveniently be furnished, the originals shall 
be left with the Controller for inspection by the party concerned, and any dispute 
arising as to whether a copy or impression can conveniently be furnished, shall be 
determined b y the Controller.  
(2) The original exhibits shall be produced at the hearing of an opposition unless the 
Controller otherwise directs.  
25 Hearing.  
25. (1) Upon completion of the evidence the Controller shall give notice to the parties of a 
date for a heari ng, which shall be at least 21 days after the date of the notice unless the 
parties consent to a shorter notice.  (2) Within seven days of receipt of the notice, a party who intends to appear at the 
hearing shall so notify the Controller and shall pay the p rescribed fee.  
(3) A party who fails to notify the Controller in accordance with this Rule may be 
treated as not desiring to be heard, and the Controller may act accordingly,  
26 Amend ment of Application.  
26. (1) Where a notice under section 44(1) restricti ng the goods or services covered by an 
application is received after publication of the application in response to a notice of 
opposition under Rule 18(1) or in the course of opposition proceedings the following 
provisions shall apply:  
(i) the Controller shall, following publication of the restriction, inform the opponent 
of the restriction;  
(ii) an opponent who has been informed by the Controller in accordance with 
subparagraph (i) shall, within one month of the date of the communicatio n from the 
Controller inform the Controller whether he or she wishes to abandon his or her 
opposition, to amend  the notice of opposition filed under Rule 18 or to pursue the 
opposition on the basis of the notice of opposition given;  
(iii) an opponent who d oes not respond to a communication from the Controller 
under subparagraph (i) within the time allowed shall be deemed to have expressed a 
wish to proceed with the notice of opposition as given.  
(iv) where an opponent decides, in response to a communication  under 
subparagraph (i), to amend  the notice of opposition he or she shall inform the 
Controller accordingly and shall, at the same time, furnish to the Controller an 
amend ed notice of opposition in duplicate. A copy of the amend ed notice shall be 
sent 
by the Controller to the applicant. The amend ed notice shall be deemed to be the 
notice of opposition under Rule 18 and Rules 18 to 25 shall apply accordingly;  
(v) where no notice of opposition had been given to the Controller under section 
43(2) before the p ublication of the notice restricting the goods or services covered 
by an application, any notice of opposition under section 43(2) shall relate to the 
published application as restricted by the notice under section  
44(1); and the prescribed period for fili ng of notice of opposition shall, in such 
case, be deemed to commence on the date on which the notice restricting the goods 
or services was published by the Controller.  
(2) Where a request under section 44(3) to amend  an application which has been 
publishe d is filed in response to a notice of opposition under Rule 18(1) or in the 
course of opposition proceedings, and the proposed amend ment affects the representation of the mark or the goods or services covered by the application, the 
Controller shall publis h the proposed amend ment and the provisions of subparagraphs 
(i) to (v) of paragraph (1) shall, subject to the appropriate modifications, apply;  
(3) Where a request under section 44(3) to amend  an application is filed prior to the 
date of publication of th e application and the proposed amend ment affects the 
representation of the mark or the goods or services covered by the application, the 
Controller shall, if he or she accepts the application, cause the application as amend ed 
to be published under section 43(1); and the provisions of Rules 18 to 25 shall 
thereupon apply.  
27 Notification of Controller's decision and grounds.  
27. (1) The decision of the Controller in the exercise of any discretionary power following 
a hearing before him or her shall be notifi ed to the party or parties concerned.  
(2) A written statement of the grounds of a decision under paragraph (1) shall be 
furnished if application, accompanied by the prescribed fee, is made to the Controller 
by a party to the hearing within one month from t he date of notification of the decision.  
(3) Where, following  inter partes  proceedings, a written statement of grounds is 
furnished to one of the parties the Controller shall furnish every other party with a copy 
of the statement.  
Division, Merger and Seri es of Marks  
28 Division of application.  
28. (1) (a) At any time before a notification of acceptance by the Controller of an 
application has been issued, the applicant may send to the Controller a request for a 
division of the application ("the original app lication") into two or more separate 
applications ("divisional applications"), indicating for each divisional application those 
goods or services of the original application which are to be covered by it. A request for a 
division of an application shall be  accompanied by the prescribed fee.  
(b) A divisional application shall comply with the provisions of Rule 12(2) and (3) 
and shall be treated as a separate application for the purposes of the Act and these 
Rules save that the fee prescribed for the purpose of section 37(3) shall not be 
payable upon the filing of a divisional application. A divisional application shall 
have the same date of filing and priority date (if any) as the original application.  
(c) A request under subparagraph (a) shall, in relation t o the original application, 
have the effect that the goods or services which are to be covered by any divisional 
application shall be excluded from the original application.  
(2) Upon division of an original application in respect of which notice had been g iven 
to the Controller of particulars relating to the grant of a licence, or a security interest or any right in or under the mark, the notice and the particulars shall be deemed to apply 
in relation to each of the divisional applications.  
(3) An applicant  may, after publication of an application, submit a request for a 
division of the application in response to a notice of opposition under Rule 18 or in the 
course of opposition proceedings; and where the applicant does so, the Controller shall 
inform the o pponent and the provisions of Rule 26 (1), (ii), (iii) and (iv) shall apply to 
the opposition proceedings.  
29 Merger of separate applications or registrations.  
29. (1) An applicant who has made separate applications for registration of the same mark 
may, a t any time before a notification of acceptance of any of the applications has issued to 
the applicant, request the Controller to merge the separate applications into a single 
application.  
(2) The Controller shall merge the applications into a single application if satisfied that 
they all — 
(a) are in respect of the same trade mark, and  
(b) bear the same date of filing and priority date (if any),  
(3) Subject to the conditions in paragraph (4 ), a person who is the registered proprietor 
of two or more marks separately registered in his or her name may request the 
Controller to merge the separate registrations into one single registration.  
(4) The conditions referred to in paragraph 3 are:  
(i) each of the separate registrations shall relate to the same mark and have the 
same date of registration (as defined in section 45(3)) and priority date, if any, 
pursuant to section 40 or 41;  
(ii) where a registrable transaction is recorded in the register, in respect of any of 
the marks to be merged, the Controller shall not merge the registrations unless the 
same transaction is recorded in respect of each of the other marks;  
(iii) any of the marks shall not have been registered subject to any disclaimer or 
limitation or, if so registered, the nature of the disclaimer or limitation must be the 
same in respect of each mark.  
(5) The Controller shall, if satisfied that the separate registrations may be merged 
following consideration of a request under paragraph (3), determine the entry to be 
made in the register in relation to the single registration.  (6) Following the entry in the register referred to in paragraph (5), the separate 
registrations shall be deemed to have been removed from the register as of the da te of 
the entry; and the entry shall be deemed to be a registered trade mark for the purpose of 
the Act and these Rules.  
(7) The provisions of paragraphs (3) to (6) shall not apply in relation to marks which 
are collective or certification marks.  
30 Regist ration of a series of trade marks.  
30. (1) (a) The proprietor of a series of trade marks may apply to the Controller for their 
registration as a series in a single registration and there shall be included in such 
application a representation of each mark c laimed to be in the series.  
(b) The Controller may, if satisfied that the marks constitute a series, register them 
in a single registration.  
(2) Where the proprietor of a registered series of trade marks requests the Controller to 
delete a mark in that ser ies, the Controller shall record such deletion in the register.  
Collective and Certification Marks  
31 Application under section 54.  
31. (1) The applicant shall file regulations governing the use of the mark with the 
Controller within six months of the date  of application for registration of a collective mark. 
The regulations shall be accompanied by the prescribed fee.  
(2) For the purpose of paragraphs 7(2) and 7(3) of the First Schedule to the Act, a 
period of 3 months from the date the specified conditions  referred to in these 
subparagraphs are notified to the applicant, is hereby prescribed.  
(3) For the purpose of paragraph 8(1) of the First Schedule to the Act, the regulations 
governing the use of the mark shall be open to public inspection on and from th e date 
of publication of the application in the Journal and the period during which opposition 
to the regulations may be given, or observations made thereon, shall be 3 months from 
the said date of publication.  
(4) A notice of opposition under paragraph 8( 1) of the First Schedule to the Act shall 
contain a statement of the grounds of opposition and shall be accompanied by the 
prescribed fee.  
(5) The Controller shall send a copy of a notice of opposition to the applicant and shall, 
thereafter, determine the procedure to be followed before deciding the issue.  
32 Amend ment of regulations governing use of collective marks.  32. (1) Where regulations governing the use of a collective mark are amend ed, the 
regulations, as amend ed, shall be submitted to the Controller in accordance with paragraph 
10 of the First Schedule to the Act.  
(2) Following acceptance of amend ed regulations, t he Controller shall publish a notice 
in the Journal indicating that copies of the amend ed regulations are available for public 
inspection at the Office.  
33 Application under section 55.  
33. (1) The applicant shall file the regulations governing the use of the mark and pay the 
fee prescribed for this purpose within six months of the date of authorisation to proceed 
under paragraph 7(3) of the Second Schedule to the Act. At the option of the applicant the 
regulations, accompanied by the prescribed fee, may be  filed with the Controller at an 
earlier date.  
(2) Where the Controller authorises an application to proceed, a report shall be 
furnished by him or her to the Minister thereon if the applicant files the regulations 
referred to in paragraph (1) of this Rule . The Minister may, if necessary, hear the 
applicant before giving a direction under paragraph 8 of the Second Schedule to the 
Act. 
(3) For the purposes of paragraphs 8(2) and 8(3) of the Second Schedule to the Act a 
period of 4 months from the date of the  notification of any conditions imposed by the 
Minister is hereby prescribed.  
(4) (a) For the purpose of paragraph 9 of the Second Schedule to the Act, the regulations 
governing the use of the mark shall be open to public inspection on and from the date of  
publication of the application in the Journal in accordance with section 43(1) and the 
period during which opposition may be given, or observations made, under the provisions 
of that Paragraph shall be 3 months from the said date of publication.  
(b) A not ice of opposition under paragraph 9 of the Second Schedule to the Act 
shall contain a statement of the grounds of opposition and shall be accompanied by 
the prescribed fee.  
(c) A notice of opposition shall be filed with the Minister and the opponent shall,  
simultaneously, furnish the Controller with a copy. On receipt of a notice of 
opposition the Minister shall send a copy of the notice to the applicant and shall, 
thereafter, determine the procedure to be followed before he or she decides the 
issue.  
34 Ame ndment of regulations governing use of certification marks.  
34. (1) Where the proprietor of a registered certification mark requests that the regulations 
governing the use of the mark be amend ed, a draft of the regulations showing desired 
amend ments thereo n shall be submitted to the Controller.  (2) Where it appears expedient to do so, the Minister shall cause a request to amend  
regulations under paragraph (1) of this Rule to be published.  
(3) (a) Any person may, within three months of the date of the public ation under 
paragraph (2) of this Rule, give notice to the Minister of opposition to the amend ed 
regulations on the grounds that they do not satisfy paragraph 7(1)(a) of the Second 
Schedule to the Act or that the proprietor of the mark is not competent to certify the 
goods or services for which the mark is registered.  
(b) The notice of opposition shall be accompanied by a statement setting out fully 
the grounds upon which the amend ed regulations are opposed.  
(4) A copy of any notice and statement under para graph (3) of this Rule shall be sent 
by the Minister to the proprietor.  
(5) The Minister shall not decide the matter without giving the parties an opportunity to 
be heard.  
(6) Following the consent of the Minister to amend ed regulations the Controller shal l 
publish a notice in the Journal that copies of the amend ed regulations are available for 
public inspection at the Office.  
Alterations and Surrender of Registered Trade Mark.  
35 Alteration of registered trade mark.  
35. (1) An application under section 49( 1) shall state the reasons therefor and the 
Controller may require the submission by the proprietor of evidence in support of the 
application.  
(2) Where an application under section 49(1) is advertised in the Journal by the 
Controller, any notice of opposi tion under section 49(3) shall be filed with the 
Controller within 3 months of the date of the advertisement of the application. A notice 
of opposition shall state fully the grounds upon which the application is opposed and 
shall be accompanied by the pres cribed fee. Upon receipt of a notice, the Controller 
shall send a copy thereof to the proprietor and shall hear the parties, if so required, 
before he or she decides the matter.  
36 Surrender of registered trade mark.  
36. (1) A notification of surrender of a registered trademark shall be submitted to the 
Controller and shall specify the goods or services covered by the registration in respect of 
which the mark is being surrendered.  
(2) The Controller shall not act upon a no tice of surrender under paragraph (1) unless 
the proprietor, in that notice — (a) certifies that he or she is not precluded by contract or other agreement or 
arrangement from surrendering the mark,  
(b) specifies the name and address of each person entered in the register as having 
an interest in the mark, and  
(c) certifies that each of the persons named under (b) has been notified of the 
proprietor's intention to surrender the mark at least 3 months prior to the date of the 
notice to the Controller and that  none of the persons has objected to the surrender.  
(3) If it appears to the Controller from the register that a person other than the 
proprietor has an interest in the mark and that person's name is not included in the list 
referred to in paragraph (2)(b) , the Controller may require the proprietor to notify that 
person of the proposed surrender and shall not act on the notice to surrender the mark 
until he or she is satisfied that the person notified under this paragraph has not objected 
to the surrender w ithin the period specified in paragraph (2).  
(4) Where the proprietor has complied with the requirements of this Rule, the 
Controller shall enter the surrender of a trade mark in the register and notice of the 
surrender shall be published in the Journal.  
(5) As from the date of publication in the Journal of the notice referred to in paragraph 
(4), the effects of registration shall, to the extent that the mark has been surrendered, 
cease to apply; but no action for infringement shall lie in respect of any ac t done before 
that date.  
Renewal and Restoration  
37 Reminder of renewal of registration.  
37. At any time not earlier than six months nor later than one month before the expiration of 
the registration of a trade mark or any renewal thereof, the Controller s hall (except where 
renewal has already been effected under Rule 38) send to the registered proprietor notice 
that the registration may be renewed as prescribed in that Rule and of the date of expiry.  
38 Renewal of registration.  
38. An application for the r enewal of the registration of a trade mark shall be effected by 
filing a request for renewal under section 48 at any time not earlier than six months before 
the expiration of the registration or any renewal thereof as the case may be, accompanied by 
the pr escribed fee or evidence of payment thereof.  
39 Delayed renewal and removal of registration.  
39. (1) If, on the expiration of the registration of a trade mark or renewal thereof, the 
renewal fee has not been paid the Controller shall publish that fact; and  if, within six 
months from the date of the expiration of the registration or renewal thereof, a request for 
renewal is filed accompanied by the renewal fee and the prescribed additional fee, the 
Controller shall renew the registration and shall inform the  proprietor thereof.  (2) Where a request for renewal is not so filed together with the prescribed renewal and 
additional fees, the Controller shall, subject to Rule 40, remove the mark from the 
register.  
(3) Where the date of issue of a certificate of regi stration of a mark is later than two 
months prior to expiry of the period of 10 years specified in section 47, the following 
provisions shall apply:  
(i) the period within which a request for renewal of registration shall be filed under 
Rule 38 and the pres cribed fee paid shall be the unexpired term of the 10 year 
period or 6 weeks from the date of issue of the certificate of registration, whichever 
is the later.  
(ii) the Controller shall not publish a notice of non -payment under paragraph (1) 
until after th e expiry of the appropriate period provided for in subparagraph (i).  
(iii) the other provisions of this Rule shall apply subject to the modifications in 
subparagraphs (i) and (ii).  
40 Restoration of registration.  
40. (1) Where a mark has been removed from the register for failure to renew its 
registration the Controller may, upon a request filed within six months of the date of 
publication of the removal of the mark accompanied by the appropriate renewal fee and 
approp riate restoration fee, restore the mark to the register and renew its registration if, 
having regard to the circumstances of the failure to renew, the Controller is satisfied that it 
is just to do so.  
(2) The restoration of the registration shall be publis hed in the Journal.  
Revocation, Invalidation and Rectification  
41 Procedure on application for revocation, declaration of invalidity and rectification of the 
register.  
41. (1) An application to the Controller for revocation under section 51 or for a declar ation 
of invalidity under section 52 or for the rectification of an error or omission in the register 
under section 67 shall contain a statement of the grounds on which the application is made 
and shall be accompanied by the prescribed fee.  
(2) Where any a pplication is made under paragraph (1) of this Rule by a person other 
than the proprietor of the registered trade mark, the Controller shall send a copy of the 
application and the statement to the proprietor.  
(3) Within three months of receipt by the propr ietor of the copy of the application and 
the statement the proprietor may file a notice of opposition with the Controller and the 
Controller shall send a copy thereof to the applicant:  Provided that where an application for revocation under section 51(4) i s based on a 
ground of non -use specified in section 5l(1)(a) or (b), the proprietor shall file with 
the notice of opposition evidence of the use by him or her of the mark; and upon 
failure to do so, the Controller may dismiss the opposition and grant the 
application.  
(4) The Controller may require the submission to him or her of any further evidence, 
statement or counter -statement within such time as he or she may decide. Subject to the 
proviso in paragraph (3) above, the Controller shall hear the parties, if so required, 
before deciding upon an application.  
The Register  
42 Form of register.  
42. The register required to be kept by the Controller under section 66(1) may be kept in 
such form as the Controller may determine.  
43 Entry in register of particulars of registered trade marks.  
43. Upon registration, there shall be entered in the register in respect of each trade mark the 
following particulars — 
(a) the date of registration as determined in accordance with section 45(3) (that is to 
say, the date of the filing of the application for registration);  
(b) the date of publication of the registration as provided for in section 45(5);  
(c) the priority date (if any) claimed pursuant to section 40 or 41;  
(d) the name and address of the proprietor;  
(e) the address for service furnished pursuant to Rule 10 above;  
(f) any disclaimer or limitation subject to which the mark is registered;  
(g) the goods or services in respect of which the mark is registered and their class or 
classes;  
(h) where the mark is a collective o r certification mark, that fact; and  
(i) any consent pursuant to section 10(6) by the proprietor of an earlier trade mark or 
other earlier right to which that section relates.  
44 Entry in register of particulars of registrable transactions.  44. For the purpose of section 29 the following are the particulars to be entered in the 
register in relation to registrable transactions;  
(a) in the case of an assignment of a registered trade mark or any right in it — 
(i) the name and address of the assignee,  
(ii) the nature and date of the document upon which the interest of the assignee is 
based, and  
(iii) where the assignment is in respect of any right in the mark, a description of the 
right assigned;  
(b) in the case of the grant or assignment of a licence under a registered trade mark — 
(i) the name an d address of the licensee,  
(ii) whether or not the licence is an exclusive or non -exclusive licence,  
(iii) where the licence is limited, a description of the limitation, and  
(iv) the duration of the licence if the same is, or is ascertainable as, a definit e 
period;  
(c) in the case of the grant of any security interest over a registered trade mark or any 
right in or under it — 
(i) the name and address of the grantee,  
(ii) the nature of the interest (whether fixed or floating), and  
(iii) the extent of the sec urity and the right in or under the mark secured;  
(d) in the case of the making by a personal representative of a vesting assent in relation 
to a registered trade mark or any right in or under it — 
(i) the name and address of the person in whom the mark or  any right in or under it 
vests by virtue of the assent,  
(ii) the date of the assent; and  
(iii) the nature of the vesting assent;  
(e) in the case of an order of a court or other competent authority transferring a 
registered trade mark or any right in or un der it — (i) the name and address of the transferee,  
(ii) the date and particulars of the order, and  
(iii) where the transfer is in respect of a right in the mark, a description of the right 
transferred;  
and in each case, there shall be entered the date on which the entry is made.  
45 Application to register transactions under section 29.  
45. (1) An application under section 29(1) shall — 
(a) where the transaction is an assignment, be signed by or on behalf  of the parties 
to the assignment;  
(b) where the transaction falls into any of the other categories specified in section 
29(2) (b) to (d), be signed by or on behalf of the grantor of the right.  
(2) An application under section 29(1) shall be accompanied by  the prescribed fee and 
by a certified copy of the instrument or document upon which the claim of the person 
whose title or interest is to be entered in the register is based.  
(3) Where a transaction is effected by an instrument chargeable with duty, the a pplicant 
shall satisfy the Controller that the instrument has been duly stamped.  
46 Notices under section 31.  
46. (1) Notices given to the Controller in pursuance of section 31 shall comply with the 
requirements specified in Rule 45 in respect of applicati ons under section 29(1).  
(2) If a notice pursuant to section 31 relates to an assignment and it appears to the 
Controller from the notice and accompanying documents that the assignee should be 
recorded in the register as the proprietor of the trade mark in  question, if registered, the 
entry to be made in the register in pursuance of Rule 43(d) shall be construed 
accordingly.  
(3) If a notice pursuant to section 31 relates to a licence, a security interest, a vesting 
assent or an order of a court and it appea rs to the Controller in the case of any such 
transaction that it applies to the trade mark, if and when registered, the Controller shall, 
upon registration, enter the relevant particulars in the register.  
47 Public inspection of register.  
47. The register shall, on payment of the prescribed fee, be open to public inspection at the 
Office during the hours each day that the Office itself is open to the public.  48 Supply of certified copies, &c.  
48. The Controller shall on request accompanied by the prescribed  fee supply a certified 
copy or extract or uncertified copy or extract of any entry in the register.  
49 Request for change of name or address in register.  
49. (1) The Controller shall, on request accompanied by the prescribed fee, by the 
proprietor of a re gistered trade mark or a licensee, enter any change in the name or address 
of the person making the request as recorded in the register and the person concerned shall 
be informed when the change is made in the register.  
(2) The Controller may at any time, on request by any person who has furnished an 
address for service under Rule 10, if the address is recorded in the register, change it 
and the person concerned shall be informed when the change is made in the register.  
50 Change of classification.  
50. (1) Where, in pursuance of section 68(1), the Controller proposes to amend  existing 
entries in the register, the Controller shall give the proprietor of the mark written notice of 
his or her proposals and shall publish the proposals in the Journal.  
(2) Notice of opposition to the proposals may be filed within three months of the date 
of publication of the proposals. A notice shall state the grounds of opposition and shall 
include in particular, any grounds based on matters to which section 68(3) relates.  
(3) The Controller may require or admit any evidence which he or she considers 
relevant to the questions at issue and, if so requested by any opponent, give that 
opponent an opportunity to be heard thereon before deciding the matter.  
(4) If no notice of op position under paragraph (2) of this Rule is filed within the time 
specified, the Controller shall amend  the register in accordance with the proposals 
published under paragraph (1).  
Registered Trade Mark Agents  
51 Application for registration.  
51. (1) An application under section 86 for registration in the Register of Trade Mark 
Agents shall be made in writing to the Controller, shall be accompanied by the prescribed 
fee and shall contain: — 
(a) in case the applic ant is an individual, the first names, surname, date of birth, 
nationality and private address of the individual, the name or style under which he 
or she carries on or proposes to carry on business as a registered trade mark agent 
(if other than his or her  full name), and a statement of his or her educational and 
professional qualifications,  (b) in case the applicant is a partnership, the first names, surname, date of birth and 
nationality of each of the partners, the name or style under which the partnersh ip 
carries on or proposes to carry on business as a registered trade mark agent, and a 
statement that all the partners are registered in the Register of Trade Mark Agents,  
(c) the address at which the applicant carries on or proposes to carry on business a s 
a registered trade mark agent,  
(d) in case the applicant is an individual who proposes to become a member of a 
partnership, the full name or style under which and the address at which the 
partnership carries on, or proposes to carry on, business as a reg istered trade mark 
agent.  
(2) Applications for registration in the Register of Trade Mark Agents shall be 
considered by a Board consisting of the Controller and other persons nominated for the 
purpose by the Minister.  
(3) For the purposes of section 86 a p erson shall possess such educational and 
professional qualifications and be of such personal character as to satisfy the Board, 
after such inquiries, including such oral or written examination in the law and practice 
of trade marks, as the Board deems nece ssary, that such person is fit to practise as a 
registered trade mark agent.  
52 Proof of authorisation of agent may be required  
52. The Controller may by notice in writing sent to an agent require the agent to produce 
evidence of the agent's authority.  
53 Entry in the Register of Trade Mark Agents.  
53. (a) Subject to the provisions of section 86 and these Rules, an applicant shall, upon 
payment of the prescribed fee, be registered by the Controller in the Register of Trade 
Mark Agents.  
(b) The entry in that  register shall include the date of registration and, in case the 
applicant is a partnership, the business name and address thereof and the full name and 
private address and particulars of the qualifications for entry of each of the partners or, 
in any oth er case, the full name, business name (if any), private and business address of 
the applicant together with particulars of the applicant's qualifications for entry, and 
such other particulars as the Controller considers desirable.  
(c) Where the address of an applicant who has been entered in the register changes, the 
Controller shall record the new address on receipt of a written request from the person 
concerned.  
54 Publication of entries in Register of Trade Mark Agents.  54. The Controller shall publish i n the Journal particulars of entries in the Register of Trade 
Mark Agents, and shall so publish before the end of March in each year a list in alphabetical 
order of the names entered in that register.  
55 Payment of annual registration fee.  
55. The prescrib ed annual fee in respect of each registration shall be payable before the 1st 
day of December in each year in respect of the following year, and in case it is not paid 
within one month from that date the Controller shall send to the registered trade mark a gent 
at such agent's registered business address a notice in writing requiring such agent to pay the 
fee on or before a date to be mentioned in the notice, and in the case of failure to pay the fee 
within the time specified in the notice the Controller may  cause the name of such agent to be 
erased from the Register of Trade Mark Agents.  
56 Request for removal from Register of Trade Mark Agents.  
56. Any person reg istered in the Register of Trade Mark Agents desiring to be removed 
therefrom shall make a request to that effect in writing to the Controller, who shall 
thereupon amend  that Register accordingly.  
57 Notice to Controller of application to the Court under s ubsection (3) of section 88.  
57. Where a person applies to the Court under section 88(3) for cancellation of a decision by 
the Controller, the notice to the Controller of such application shall be in writing and shall 
be given at the time when the person s o applies to the Court. The notice shall be 
accompanied by a copy of the application.  
58 Application for restoration to Register of Trade Marks Agents.  
58. (1) A person desiring to be restored to the Register of Trade Mark Agents under section 
89(3) shall make an application to that effect in writing to the Controller.  
(2) An application under section 89(4) shall be in writing.  
59 Controller may refuse to deal with certain agents.  
59. The Controller may refuse to recognise in respect of any business under t he Act — 
(a) an individual whose name has been erased from and not restored to, or who is 
suspended from, the Register of Trade Mark Agents;  
(b) a person who is found by the Minister to have been guilty of such conduct as 
would, in the case of an individua l registered in that register, render such person liable 
to have his or her name erased from it on the ground of misconduct;  
(c) a partnership or body corporate of which one of the partners or directors is a person 
whom the Controller could refuse to recog nise under paragraph (a) or (b) of this Rule;  (d) any solicitor whose name has been struck off the role of solicitors maintained under 
the Solicitors Acts, 1954 to 1994, and has not since been restored.  
Powers and Duties of Controller, Evidence and Costs  
60 Provision of information and inspection of documents.  
60. (1) In addition to any other information or documents which the Controller is under the 
Act or these Rules authorised or obliged to provide or to make available for inspection, the 
following provi sions of this Rule shall apply in relation to information or documents 
relating to applications for registration of trademarks and registered trademarks.  
(2) Following the filing of applications for registration, the Controller shall permit the 
inspection of copies of the applications as made in accordance with Rule 12(2) and of 
certificates filed under Rule 13.  
(3) For the purpose of section 70(1), the following documents and information are 
hereby prescribed — 
(a) the documents in paragraph (2);  
(b) any w ritten statements of the grounds of decisions of the Controller which have 
been prepared in respect of  inter partes  proceedings;  
(c) notices of opposition submitted under Rule 18;  
(d) applications under Rule 35(1);  
(e) notifications of surrender under Rule  36(1);  
(f) applications under Rule 41(1);  
(g) in relation to an application for registration, information as to whether, prior to 
its publication, a notice was given or a request made under section 44 and the 
outcome of any such notice or request;  
(h) any instrument or document submitted to the Co ntroller under Rule 45(2) which 
is retained in the Office and which the person who submitted it agrees may be 
inspected;  
(4) A request under section 70(1) shall be in writing. If the request is for the provision 
of information, it shall be accompanied by t he prescribed fee.  
(5) Where a request is for the inspection of documents, the Controller shall inform the 
person making it of the time, or times, at which the documents specified in the request may be inspected at the Office. The prescribed fee for inspec tion of documents at the 
Office shall be paid at the time the inspection takes place.  
61 Hearing  
61. (1) For the purposes of section 71 the Controller shall give the applicant, proprietor or 
party concerned notice that he or she may be heard.  
(2) Save as o therwise provided by these Rules, an application for a hearing shall be 
made within ten days from the date of notice by the Controller under paragraph (1) and 
shall be accompanied by the prescribed fee.  
(3) Upon receiving an application for a hearing the C ontroller shall notify any other 
party to the proceedings and if such a party desires to attend and be heard he or she 
shall inform the Controller accordingly within 10 days of notification and pay the 
prescribed fee. The Controller shall give the party or  parties concerned not less than ten 
days' notice of the time of the hearing unless the parties consent to shorter notice.  
(4) A party who fails to attend a hearing appointed in accordance with this Rule may be 
treated as not desiring to be heard and the C ontroller may act accordingly.  
(5) If in  inter partes  proceedings either party intends to refer at the hearing to any 
document not already mentioned in the proceedings, he or she shall give to the other 
party and to the Controller at least 7 days' notice o f his or her intention, together with 
details of each document to which he or she intends to refer.  
62 Controller's power to require documents, information or evidence.  
62. The Controller may, at any stage of any proceedings before him or her, direct that such 
documents, information or evidence as he or she may require shall be filed within such 
period as he or she may specify.  
63 General power to enlarge time.  
63. (1) The time or periods:  
(a) prescribed by these Rules, other than the times or periods presc ribed by the 
rules mentioned in paragraph (2) below, or  
(b) specified by the Controller for doing any act or taking any proceedings,  
may, at the request of the person or party concerned, be extended by the Controller 
if he or she thinks fit, upon such noti ce to any other person or party affected and 
upon such terms as he or she may direct.  
(2) The Rules excepted from paragraph (1) of this Rule are Rule 10(3) (failure to file 
address for service), Rule 12(5) (time limit for payment of application fee), Rule 18(1) (time for filing opposition to registration), Rule 19(1) (time for filing counter -
statement), Rule 39 (delayed renewal) and Rule 40 (restoration of registration).  
(3) Subject to paragraph (4) below, a request for extension under paragraph (1) above 
shall be made before the time or period in question has expired.  
(4) If the request under paragraph (1) is made not later than two months after the expiry 
of the time or period in question the Controller may, at his or her discretion, extend the 
period or t ime if he or she is satisfied with the explanation for the delay in requesting 
the extension and it appears to him or her that any extension would not disadvantage 
any other person or party affected by it. A person availing of the provisions of this 
paragr aph shall pay the prescribed fee at the time the request for extension is made.  
(5) Where the period within which any party to proceedings before the Controller may 
file evidence under these Rules is to begin upon the expiry of any period in which any 
other party may file evidence and that other party notifies the Controller that he or she 
does not wish to file any, or any further, evidence the Controller may direct that the 
period within which the first mentioned party may file evidence shall begin on such  
date as may be specified in the direction and shall notify all parties to the dispute of 
that date.  
(6) Where any period of time specified in the Act or these Rules for the giving, making 
or filing of any notice, application or other document expires on a day certified by the 
Controller as being one on which there is a general interruption or subsequent 
dislocation in the postal service of the State, the period shall be extended to the first 
day following the end of the period of interruption or dislocation.  
64 Costs.  
64. (1) In the event of an opposition to the registration of a mark being uncontested by  the 
applicant the Controller, in deciding whether costs should be awarded to the opponent shall 
consider whether proceedings might have been avoided if reasonable notice had been given 
by the opponent to the applicant before the notice of opposition was l odged.  
(2) The States prescribed for the purposes of section 72(2) are the other Member States 
of the European Communities.  
Statutory Declarations  
65 Form of statutory declaration.  
65. (a) A statutory declaration required by the Act or these Rules or used in any 
proceedings before the Controller thereunder shall be headed in the matter to which it 
relates and shall be drawn up in the first person, and shall be divided into paragraphs 
consecutively numbered, and each paragraph shall so far as is possible be confined to one 
subject.  (b) Every statutory declaration shall state the description and true place of abode of the 
person making the declaration, and shall bear the name and address of the person 
leaving it and shall state on whose behalf it is left.  
66 Statutory declaration made outside the State.  
66. A statutory declaration required by the Act or these Rules or used in any proceedings 
before the Controller thereunder shall, if made and subscribed outside the State, be made 
and subscribed before a person authorised by law to administer an oath in the country in 
which it is made.  
67 Notice of seal of officer taking declaration to prove itself.  
67. Any document purporting to have affixed, impressed, or subscribed thereto or thereon 
the seal or signature of a ny person authorised to take a declaration, in testimony that the 
declaration was made and subscribed before such person, may be admitted by the Controller 
without proof of the genuineness of the seal or signature, or of the official character of the 
perso n or such person's authority to take the declaration.  
Applications to and Orders of Court  
68 Application to Court.  
68. Every application to the Court under the Act in relation to any matter which is a function 
of the Controller shall be notified forthwith to the Controller by the applicant.  
69 Order of Court.  
69. (a) Where an order has been made by the Court in any matter under the Act relating to 
a function of the Controller, the person in whose favour the order has been made, or such 
one of them if there is more than one, as the Controller may direct, shall forthwith leave at 
the Office an attested copy thereof.  
(b) The register shall, if necessary, thereupon be rectified or altered by the Controller.  
Miscellaneous  
70 Excluded days.  
70. Whenever the last d ay fixed by the Act, or by these Rules, for doing any act or thing at 
the Office falls on any of the days on which the Office is not open (which days shall be 
excluded days for the purposes of the Act and these Rules), it shall be lawful to do any such 
act or thing on the first day which is not an excluded day next following such excluded day, 
or days, if two or more of them occur consecutively.  
71 Searches.  
71. On application, accompanied by payment of the prescribed fee, the Controller may cause 
a search to be made in respect of specified goods or services to ascertain whether or not at 
the date of the search any mark is on record which resembles a trade mark of which duplicate representations accompany the application, and shall cause the person making 
such request to be notified of the result of the search.  
72 Pending applications for registration.  
72. (1) Where an application which was pending at the commencement of the Act is to be 
dealt with in accordance with the old law, the provisions of Rule 73 as regards the issue by 
the Controller of a request for payment of the fee for registration and the time  within which 
such fee shall be paid shall apply to such application if the fee for registration had not been 
paid at commencement.  
(2) (i) Where, in relation to an application to which paragraph (1) applies, the date of 
issue of the certificate of registr ation of the mark concerned is later than 2 months prior to 
the expiry of a period of seven years from the date of filing of that application, the period 
within which an application shall be made for renewal of the registration of the mark shall 
be the une xpired term of the seven year period or six weeks from the date of issue of the 
certificate of registration, whichever is the later.  
(ii) In relation to an application to which subparagraph (i) applies, a notice of non -
payment of a registration renewal fee  shall be published by the Controller upon 
expiry of the appropriate period provided for in that subparagraph if the fee remains 
unpaid at the expiry of that period.  
(iii) Subject to paragraph (ii), paragraphs (1) and (2) of Rule 39 shall apply.  
73 Time li mit for payment of fees required for registration.  
73. The prescribed period for the purposes of section 45(2) shall be two months from the 
date of issue by the Controller of a request for payment of the fee prescribed for registration.  
74 Power to dispens e with evidence, signature, &c.  
74. Where, under these Rules, any person is required to do any act or to sign any document, 
or to make any declaration on behalf of himself or of any body corporate, or any document 
or evidence is required to be produced to or left with the Controller or at the Office, and it is 
shown to the satisfaction of the Controller that from any reasonable cause such person is 
unable to do such act or thing or to sign such document or to make such declaration or that 
such document or e vidence cannot be produced or left as aforesaid, it shall be lawful for the 
Controller, upon the production of such evidence and subject to such terms as he or she 
thinks fit, to dispense with any such act or thing, signature, declaration, document or 
evidence.  
75 General power of amend ment.  
75. Any document for the amend ing of which no special provision is made by the Act or 
these Rules may be amend ed, and any irregularity in procedure which in the opinion of the 
Controller may be obviated without detrimen t to the interests of any person may be 
corrected, if and on such terms and in such manner as the Controller thinks fit; provided 
that, without prejudice to the Controller's power to extend any time or periods under Rule 63 and except where such irregulari ty is attributable wholly or in part to an error, default or 
omission on the part of the Office, the Controller shall not direct that any period of time 
specified in the Act or Rules shall be altered.  
76 Partial assignments.  
76. (1) Where an assignment of a registered trade mark is limited so that it applies in 
relation to some only of the goods or services for which the mark is registered, Rule 45 
shall apply in respect of an application to the Controller under section 29.  
(2) The Controller shall enter in  the register the relevant particulars in relation to the 
assignment.  
(3) At the same time as the entry referred to in paragraph (2) is made, the Controller 
shall register the mark in the name of the assignee as proprietor in respect of the goods 
or servic es to which the assignment relates; and such registration shall, for the purposes 
of the Act and these Rules, be deemed to be an independent registration.  
(4) Where an assignment of a registered trade mark is limited so that it applies in 
relation to use o f the mark in a particular manner or in a particular locality, the 
provisions of paragraphs (1) to (3) shall, with the necessary modifications, apply in 
respect of any application under section 29; and, in addition, the following provisions 
shall apply:  
(i) in the case of an assignment which is limited so that it applies in relation to use 
of a trade mark in a particular manner, the registration pursuant to paragraph (3) 
shall include the representation of the mark in the particular manner in which it is 
to be used;  
(ii) in the case of an assignment which is limited so that it applies in relation to use 
of the mark in a particular locality, the registration pursuant to paragraph (3) shall 
have effect as if it resulted from an application for registration in respect of which 
the applicant had agreed to a territorial limitation to the same effect under the 
provisions of section 17.  
77 Non -exclusive licence.  
77. (1) The Controller may, on application therefor to him or her in writing by a person and 
on payment o f the prescribed fee, grant or refuse to grant to the person a licence (referred 
to in this rule as a non -exclusive licence) authorising the use by that person of part or all of 
the computerised trade mark data base open to public inspection.  
(2) A non -exclusive licence shall be subject to such conditions and restrictions (if any) 
as the Controller may impose, at the time of the grant of the licence or subsequently, 
and specify in the licence or in another document given or sent to the holder of the 
licence . (3) The Controller may, if he or she is satisfied that there has been a contravention of a 
condition or restriction of a non -exclusive licence, revoke the licence.  
(4) A non -exclusive licence shall, unless previously revoked remain in force until such 
period as may be determined by the Controller.  
78 Form for conversion of pending application.  
78. A notice to the Controller under paragraph 9(3) of the Third Schedule to the Act, 
claiming to have the registrability of a mark determined in accordance with the provisions of 
this Act, shall be in Form No. 2.  
79 Forms.  
79. The forms mentioned in these Rules are those set out in Schedule 2.  
Schedule 1  
Fees Payable  
Rule 4  
 
£ 
1. On application to register a trade mark under section 37:  60 
2. Class fees —  
(i) for each class over one:  60 
(ii) for each additional class to which rule 14(3) refers:  60 
3. Application for a hearing:  50 
4. Notice of opposition: (a) to the registration of a mark 
(rule 18); (b) to the regulations relating to a collective or 
certification trade mark (rule 31(4) or rule 33(4)(b)); or (c) 
to the alteration of a registered trade mark (rule 35):  50 
5. On lodgin g a counterstatement (rule 19):  30 6. On request for a written statement on the grounds of a 
decision made by the Controller (rule 27(2)):  150 
7. On notice under section 44(1) or on request under section 
44(3) to amend  an application:  30 
8. On request for division of application (rule 28):  100 
9. On request to merge either applications or registrations 
(rule 29):  100 
10. On filing of regulatio ns governing the use of a 
certification or collective mark (rule 31 or rule 33):  100 
11. On request to amend  regulations governing the use of a 
certification or collective mark (rule 32 or rule 34):  100 
12. On notification of surrender of a registered tr ade mark 
(rule 36):  50 
13. Renewal of registration (rule 38):  200 
Class fee for each class over one:  100 
Additional fee for renewal of registration (rule 39(1)):  50 
14. On request for the restoration and renewal of a 
registration removed from the register for failure to renew 
(rule 40):  100 
15. On request for revocation or invalidation of a 
registration, or rectification of an error or omission in the 
register (rule 41): 100 
16. On application to record a registrable transaction (rule 
45): 50 17. On request for any of the matters referred to in rule 48:  20 
18. On request for alteration of a trade mark (rule 35) or for 
a change of name or address (rule 49):  50 
19. On request for information about an application or a 
registered trade mark (rule 60) for each item of information 
requested:  20 
20. On request for extension of time (rule 63(4)) for each 
month of extension beyond the prescribed period:  50 
21. On application to register of a transaction under section 
29 (rule 45) and on notice under section 31 (rule 46):   
(i) for one mark  50 
(ii) for each other mark included in the application  5 
22. For registration of a trade mark —  
(i) where the application is dealt with in accordance 
with the Act of 1963:  81 
(ii) in any other case:  140 
23. On request for a search under rule 71 in respect of one 
class:  30 
24. For making a search by means of the Patents Office's 
computerised trade mark search system, of the classified 
representations of trade mark data, kept at the Office on 
computer and open to public inspection, and for a print -out 
or output to electronic media or paper of the results of the 
search:   (i) for each quarter of an hour or part thereof:  10 
(ii) for each record in excess of 30 relating to a trade 
mark in the computer print -out to paper:  0.25 
25. For inspection of all or any part of the trade mark 
register available on computer: for each quarter of an hour 
of part thereof:  10 
26. For (a) inspection of the register or any document open 
to public inspection, or (b) for making a search amongst 
such classified representations of trade marks as are made 
available on paper for each quarter of an hour or part 
thereof:  2.50 
27. For computer print -out or output to electronic 
media/paper of trade mark data open to public inspection 
other than as at item 24:   
(i) for each trade mark record in respect of which data 
is requested other than as at (ii):  20 
(ii) for each trade mark  record sought on the basis of 
time period or sequence number, by persons 
complying with conditions imposed by the Controller, 
the fees set out as at item 29.   
28. For access, by means of telephone or other data 
transmission media from outside the Patents  Office, to the 
information specified in items 24 and 25 for the purpose of 
searching or inspecting such information and for a 
computer print -out of the results of the search, the 
appropriate fee set out in those items, and in addition:  250 
29. On applica tion for an authorisation under rule 77  100 
and  (i) in the case of a search of the trademark database 
made available under rule 77 carried out by a person 
other than the licensee, an additional fee of 20 per 
cent. of any fee charged by the licence for the use of 
that database.   
(ii) in the case of such  a search by the licensee, an 
additional fee of £7 in respect of the search of the first 
class and £1 in respect of each subsequent class.   
30. For photocopying documents, per page:  0.25 
31. For certifying office copies, manuscripts, typed printed 
or pho tographic, each:  3 
32. On giving notice under paragraph 9 of the Third 
Schedule to the  Trade Marks Act, 1996  : 50 
33. On application for registration in the Register of Trade 
Mark Agents:  200 
34. For registration in the Register of Trade Mark Agents:  100 
35. Annual fee for renewal of registration as a trade mark 
agent payable before 1st December each year in respect of 
the following year.  200 
Schedule 2  
FORMS  
Form 
No. 1  Application for registration of a trade mark.  
Form 
No. 2  Notice under paragraph 9(2) of the Third Schedule to 
the Trade Marks Act, 1996  . 
Form No. 1  Reference No. of Applicant or Authorised Agent....................  
APPLICATION FOR REGISTRATION OF A TRADE MAR K 
The Applicant(s) named herein hereby request(s) the registration of the trade mark, the 
representation of which is shown below, on the basis of the following information:  
1. Applicants(s)  
Name:  
Nationality and Address:  
2. Representation of Mark (not to exc eed 8cm x 8cm):  
Type of Mark (please indicate as appropriate if the present application relates to any of 
the following)  
a collective mark  
a certification mark  
a series of trade marks  
a three -dimensional mark (If this is relevant any additional perspective s much be 
shown on separate sheets).  
3. Goods/Services  
The goods/services in respect of which registration of the mark represented at 2 is requested 
are: 
Number of Class:  
Goods/Services Description  
4. Use of Mark (indicate as appropriate)  
It is hereby decl ared, in relation to the goods/services indicated at 3,  
that the mark to which this application relates is being used by the Applicant(s) or with 
the consent of the Applicant(s)  that the Applicant(s) indicated at 1 has/have a bona fide intention that the m ark to 
which this application relates should be used in relation to the goods/services indicated 
at 3 
5. Claim to priority (give the information below where a right to priority is claimed)  
A right of priority is claimed on the basis of an earlier applicati on for registration of the 
mark as represented in 2, which was filed in a country or territory within the meaning of 
section 40 or 41 in respect of the same, or some of, the goods/services to which the 
present application relates. The details of the earlie r application are as follows:  
Country/Territory  Date of Filing  
6. Colour (complete where appropriate)  
The mark, in use, is/will be in the colour(s)..............................(please specify) and the 
Applicant wishes that upon registration the Register shall contain an indication to that 
effect.  
7. Disclaimer or Limitation (indicate and complete as appro priate)  
Right to the exclusive use of the following element(s) of the mark is disclaimed:  
The rights conferred by registration of the mark shall be subject to the following 
limitations:  
8. Registered Trade Mark Agent Authorised  
The following has been appoi nted to act on behalf of the Applicant(s) in all proceedings 
connected with this application for registration and any proceedings arising subsequent to 
registration.  
Name of Agent  Address  
9. Address for Service (indicate and complete as appropriate)  
same as at 8  
state hereunder the address where no Agent authorised to act  
10. Fees:  
The prescribed fees in the amount of £ .............are enclosed with this application.  11. Signature (the application may be signed by or on behalf of the Applicant(s) or by th e 
Agent named at 8).  
Date:  
To: The Controller of Patents, Designs & Trade Marks,  
45 Merrion Square,  
Dublin 2.  
Form No. 2  
Notice under paragraph 9(2) of Third Schedule to the  Trade Marks Act, 1996  
1. Application No.  
2. Name and address of Applicant(s)  
3. Notice  
The Applicant(s) named herein hereby gives/give notice to the Controller that the 
registr ability of the mark, the subject of the application identified above, is to be 
determined in accordance with the provisions of the  Trade Marks Act, 1996  . 
It is acknowledged th at this Notice is irrevocable.  
Signed:  
Date:  
Schedule 3  
Rule 11  
Rules Revoked  
Statutory Instrument 
Number  Title  
No. 268  Trade Marks Rules, 1963  
No. 76  Trade Marks Rules, 1963 ( Amend ment) 
Rules, 1964  No. 35  Register of Trade Mark Agent Rules, 
1964  
No. 371  Register of Trade Mark Agent 
(Amend ment) Rules, 1985  
No. 313  Trade Marks Rules, 1963 ( Amend ment) 
Rules, 1992.  
GIVEN under my Official Seal, this 27th day of June, 1996.  
RICHARD BRUTON  
Minister for Enterprise and Employment  
The fees prescribed by the foregoing Rules are hereby  
sanctioned by the Minister for Finance.  
GIVEN under the Official Seal of the Minister for Finance, this  
27th day of June, 1996.  
RUAIRI QUINN  
Minister for Finance