Statutory guidance

Directions under section 66 of the Trade Marks Act 1994 given in relation to legislative changes introduced by the Trade Marks Regulations 2018

Published 13 February 2019

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Directions under section 66 of the Trade Marks Act 1994 given in relation to legislative changes introduced by the Trade Marks Regulations 2018.

1. The registrar has given the following Directions pursuant to section 66 of the Trade Marks Act 1994 (“the Act”).

2. These direct the use of new and amended forms to accommodate legislative changes introduced by the Trade Marks Regulations 2018 (“the Regulations”), S.I. 2018/825, to the Act and the Trade Mark Rules 2008 (“the Rules”).

3. These Directions:

  • direct the use of new form TM12R, set out in Schedule 1, for dividing a trade mark registration, as provided by regulation 39 of the Regulations inserting new Rule 26A in the Rules;

  • direct the use of amended form TM26I, as set out in Schedule 2, for a declaration of invalidity. This has been updated in accordance with regulation 23(9) of the Regulations inserting new s.47(5A) into the Act. The previous version of form TM261 will no longer be accepted after these Directions come into force;

  • direct the use of amended forms TM7 and TM7F, as set out in Schedule 3 and Schedule 4, to notify of an opposition. These forms have been updated in accordance with regulation 19(2) of the Regulations inserting new s.38(2A) and (28) into the Act. The previous version of forms TM7 and TM7F will no longer be accepted after these Directions come into force;

  • direct the use of the online TM3 for making an application to register a trade mark which is not represented via traditional graphical means as permitted by s.1 of the Act as amended by regulation 3 of the Regulations. This includes, for example, applications where a trade mark is represented using an MP4, MP3, OBJ and STL file format.

    4. These Directions come into force on 14 January 2019.

Tim Moss
Chief Executive and Comptroller General

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