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STATUTORY INSTRUMENTS
2013 No. 2235
TRADE MARKS
The Trade Marks (Fast Track
Opposition) (Amendment) Rules 2013
Made        -      -       -      - 4th September 2013
Laid before Parliament  6th September 2013
Coming into force        -      - 1st October 2013
The Secretary of State makes the following rules in exercise of the powers conferred upon the
Secretary of State by sections 38(2) and 78 of the Trade Marks Act 1994(1).
Citation and commencement
1.These Rules may be cited as the Trade Marks (Fast Track Opposition) (Amendment) Rules
2013 and shall come into force on 1st October 2013.
Amendments to the Trade Marks Rules 2008
2.—(1)  The Trade Marks Rules 2008(2) shall be amended as follows—
(2)  In Rule 2(1), after the definition of “the Act” insert—
““fast track opposition” means an opposition—
(a) brought solely on grounds under section 5(1) or 5(2) of the Act,
(b) based on no more than 3 earlier trade marks, each of which is registered in the UK or
in the EU, or is protected in one or another of those territories as an international trade
mark (UK) or (EU),
(c) where proof of use of the earlier marks can be provided with the notice of opposition, and
(d) which the opponent considers may be determined without the need for further evidence
and without an oral hearing.”
(3)  At the beginning of Rule 17(1) omit “Any” and insert “Subject to Rule 17A, any”.
(4)  After Rule 17, insert Rule 17A as follows—
(1)1994 c.26 .
(2)S.I. 2008/1797  as amended by S.I. 2013/444  and to which there are further amendments which are not relevant to these Rules.Document Generated: 2017-09-10
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“Opposition proceedings: filing of notice of fast track opposition; section 38(2) (Form
TM7F))
17A. —(1)  A notice to the registrar of fast track opposition to the registration, including the
statement of the grounds of opposition, may be filed on Form TM7F.
(2)  A notice of fast track opposition to the registration filed on Form TM7F and a notice of
opposition to the registration filed on Form TM7 shall constitute alternatives and an opponent
shall not maintain more than one opposition against the same trade mark application.
(3)  Unless paragraph (4) applies, the time prescribed for the purposes of section 38(2) shall
be the period of two months beginning immediately after the date on which the application
was published.
(4)  This paragraph applies where a request for an extension of time for the filing of Form
TM7 or TM7F has been made on Form TM7A, before the expiry of the period referred to
in paragraph (3) and where this paragraph applies, the time prescribed for the purposes of
section 38(2) in relation to any person having filed a Form TM7A (or, in the case of a company,
any subsidiary or holding company of that company or any other subsidiary of that holding
company) shall be the period of three months beginning immediately after the date on which
the application was published.
(5)  Forms TM7F and TM7A shall be filed electronically using the filing system provided
on the Office website or by such other means as the registrar may permit.
(6)  There shall be included in the statement of the grounds of opposition a representation
of that mark and—
(a)the details of the authority with which the mark is registered or protected;
(b)the registration number of that mark;
(c)the goods and services in respect of which—
(i)that mark is registered, and
(ii)the opposition is based;
(d)the date of completion of the registration procedure or of granting protection to an
international trade mark (UK) or (EU); and
(e)where the registration or protection procedure for the mark was completed before
the start of the period of five years ending with the date of publication, a statement
detailing whether during the period referred to in section 6A(3)(a) (3) the mark has
been put to genuine use in relation to each of the goods and services in respect of
which the opposition is based.
(7)  Where the earlier mark is subject to proof of use under section 6A of the Act, the proof
of use that the opponent wishes to rely upon shall be provided with the notice of fast track
opposition.
(8)  The registrar shall send a copy of Form TM7F to the applicant and the date upon which
this is sent shall, for the purposes of rule 18, be the “notification date”.
(9)  In this rule “subsidiary” and “holding company” have the same meaning as in the
Companies Act 2006 (4).”
(5)  In Rule 19, insert after paragraph (1)—
“(1A)  This rule shall not apply to fast track oppositions.”
(6)  In Rule 20, insert after paragraph (4)—
(3)Section 6A(3)(a) was inserted into the Trade Marks Act 1994 by S.I. 2004/946 .
(4)2006 c. 46 .
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“(5)  Paragraphs (1)–(3) of this Rule shall not apply to fast track oppositions but
paragraph (4) shall apply.”
(7)  In Rule 62—
(a)for paragraph (1)(e) substitute—
“(e)   allow a statement of case to be amended, provided that—
(i)where an application is made to add grounds of opposition other than
under subsections 5(1) or (2) of the Act, the application shall be made
on Form TM7G; and
(ii)in the case of fast track oppositions the registrar may only permit a
statement of case to be amended to add additional or alternative earlier
registered or protected trade marks as additional grounds of opposition
under subsections 5(1) or 5(2) of the Act, provided that the total number
of earlier trade marks relied upon may not exceed three;”
(b)for paragraph (1)(g) substitute—
“(g)   consolidate proceedings provided that where a fast track opposition is
consolidated with other non-fast track proceedings, it shall no longer be treated
as a fast track opposition;”;
(c)after “inadmissible” in paragraph (1)(i) insert—
“;
(j)direct that with effect from the date specified in the direction opposition
proceedings which have been commenced on Form TM7F as a fast track
opposition but which do not satisfy the criteria for a fast track opposition
may continue as if the opposition proceedings were an opposition to the
registration commenced under Rule 17 on Form TM7”;
(d)after paragraph (4) insert—
“(5)  In the case of a fast track opposition—
(a)proceedings shall be held orally only if the Office requests it or if either party
to the proceedings requests it and the registrar considers that oral proceedings
are necessary to deal with the case justly and at proportionate cost; and
(b)the parties shall be given at least fourteen days’ notice beginning on the date
on which the notice is sent, of the time when the oral proceedings are to take
place unless each party to the proceedings consents to shorter notice.
(6)  In the case of a fast track opposition, where no oral hearing is held, the registrar
shall give the parties the opportunity to provide arguments in writing before reaching
a decision that is adverse to either party.”
(8)  After Rule 63(2) insert paragraph (3)—
“(3)  This Rule shall not apply to fast track opposition proceedings.”
(9)  In Rule 71—
(a)at the beginning of paragraph (1) omit “Notice” and insert “Subject to paragraph (1A),
notice”;
(b)after paragraph (1) insert—
“(1A)  Where the appeal arises in proceedings between two or more parties, notice of
appeal to the person appointed under section 76 shall be filed on Form TM55P, which
shall include the appellant’s grounds of appeal and his case in support of the appeal.”;
(c)for paragraph 71(2) substitute—
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“(2)  Forms TM55 or TM55P shall be filed within the period of 28 days beginning
immediately after the date of the registrar’s decision which is the subject of the appeal
(“the original decision”).”
4th September 2013Younger of Leckie
Parliamentary Under-Secretary of State for
Business, Innovation and Skills
Department for Business, Innovation and Skills
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EXPLANATORY NOTE
(This note is not part of the Rules)
These Rules amend The Trade Marks Rules 2008 (S.I. 2008/1797 ) (the “2008 Rules”) to provide for
an additional fast track opposition procedure under the Trade Marks Act 1994 (the “Act”).
A new definition of fast track opposition is inserted in Rule 2 of the 2008 Rules. The definition
has four elements so that a fast track opposition is brought solely on grounds under section 5(1) or
5(2) of the Act, is based on no more than 3 earlier trade marks, each of which is registered in the UK
or in the EU, or is protected in one or another of those territories as an international trade mark (UK)
or (EU), where proof of use of the earlier marks can be provided with the notice of opposition, and
which the opponent considers can be determined without the need for further evidence and without
an oral hearing.
The new Rule 17A sets out the procedure for filing a notice of fast track opposition on Form
TM7F which is to be filed electronically.
Rules19 and 20(1)–(3) are disapplied from fast track oppositions but Rule 20(4), which provides
that the registrar may at any time give leave to either party to file evidence upon such terms as the
registrar thinks fit, does apply.
Rules 62(1)(e) and (g) set out rules concerning the amendment of the statement of case and the
consolidation of proceedings for fast track oppositions.
A new Rule 62(5) provides that a dispute relating to a fast track opposition may be heard before
the registrar only if the Office requests it or if either party to the proceedings requests it and the
registrar considers that oral proceedings are necessary in that case.
A new Rule 62(6) provides that where no oral hearing is held, the registrar shall give the parties
an opportunity to set out their arguments in writing before reaching a decision.
Rule 63 is disapplied from fast track oppositions.
Rule 71 provides that when an appeal arises in proceedings between two or more parties then the
notice of appeal to the person appointed shall be filed on Form TM55P.
A full impact assessment of the effect that this instrument will have on the costs of business and
the voluntary sector is available from the Intellectual Property Office, Concept House, Cardiff Road,
Newport NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside
the instrument on www.legislation.gov.uk. Copies have also been placed in the libraries of both
Houses of Parliament.
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