Registered Trade Mark Rule Changes

Posted in Community Trade Marks on by Admin

From 1 October 2012, the rules governing the optional service through which owners of Community trade marks (and International trade marks protected by the EU) may be notified about subsequent national applications for similar marks, and the rules about merging registered national trade marks, will change.


The optional notification service for owners of Community and International (EU) trade marks will be discontinued so alternative ways of obtaining information relating to similar new trade marks filed at the UK Intellectual Property Office, such as watching services, should be considered. Owners of UK and International (UK) registered trade marks will be unaffected by this change as the automatic notification service will continue as normal for such marks.


The UK trade mark register still contains a significant number of registrations based on applications filed many years ago, before it was possible for a registration to cover multiple classes. It has been sensible practice for such registrations to be merged, where possible, to reduce renewal costs. Under the new rules, registrations included for merger will have to relate to the same trade mark and be owned by the same proprietor, but must also bear the same filing date. Consequently, owners of old registrations for identical marks filed on different days should submit any merger actions as soon as possible prior to 1 October 2012 as such actions will not be permitted after this date. The UK Intellectual Property Office has confirmed that there will be no official fee for merger actions.

The new rules will also exclude from merger any trade mark which (i) is the subject of revocation or invalidation proceedings; and/or (ii) is the basis for an International Registration and is still within the five-year period in which the International Registration is dependent on the continuation of the national mark.