S.I. No. 313/1992 - Trade Marks Rules, 1963 (Amendment) Rules, 1992.


S.I. No. 313 of 1992.

TRADE MARKS RULES, 1963 (AMENDMENT) RULES, 1992.

I, DESMOND O'MALLEY, Minister for Industry and Commerce, in exercise of the powers conferred on me by sections 3 and 4 of the Trade Marks Act, 1963 (No. 9 of 1963) as adapted by the Industry, Trade, Commerce and Tourism (Alteration of Name of Department and Title of Minister) Order, 1986 ( S.I. No. 41 of 1986 ) and with the sanction of the Minister for Finance, hereby make the following rules:

1. (1) These Rules may be cited as the Trade Marks Rules, 1963 (Amendment) Rules, 1992.

(2) These Rules shall come into operation on the 12th day of November, 1992.

(3) The Trade Marks Rules, 1963 to 1987, and these Rules may be cited together as the Trade Marks Rules, 1963 to 1992.

2. The Trade Marks Rules, 1963 ( S.I. No. 268 of 1963 ), are hereby amended—

( a ) by the insertion of the following Rule after Rule 110:

"Non-exclusive licence

111. (1) The Controller may, on application therefor to him in writing by a person and on payment of the prescribed fee, grant or refuse to grant to the person a licence (referred to subsequently in these Rules as a non-exclusive licence) authorising the use by that person of part or all of the computerized 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 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 for one year and shall then expire.", and

( b ) by the substitution for Schedule I (inserted by the Trade Marks Rules, 1963 (Amendment) (No. 2) Rules, 1987 ( S.I. No. 331 of 1987 )) of the following Schedule:

"Schedule I

Rule 4.

Fees Payable in Relation to Trade Marks

£

1. On application, not otherwise charged, to register a trade mark, or a series of trade marks under section 25 (1) for a specification of goods included in one class

60.00

2. On application to register a defensive mark or a certification trade mark for a specification of goods included in one class

75.00

3. On request to the Controller to state grounds of his decision under Rule 26 or Rule 43

96.00

4. On notice of opposition before the Controller under section 26 or 43, for each application opposed, by the opponent

23.00

5. On lodging a counter-statement:

( a ) in answer to a notice of opposition under section 26 or 43 for each application opposed, by the applicant or the proprietor, as the case may be

15.00

( b ) by the proprietor in answer to an application:

(i) Under section 34 in respect of each trade mark

15.00

(ii) Under section 35 in respect of each trade mark

15.00

(iii) Under section 40 in respect of each trade mark

15.00

(iv) Under section 41 in respect of each trade mark

15.00

6. On the hearing:

( a ) of each opposition under section 26 or 43, by each party

23.00

( b ) of an application:

(i) Under section 34 by each party

23.00

(ii) Under section 35 by each party

23.00

(iii) Under section 40 by each party

23.00

(iv) Under section 41 by each party

23.00

7. On notice of opposition before the Minister under paragraph 2 of the First Schedule to the Act for each application opposed, by the opponent t

23.00

8. On lodging a counter-statement in answer to a notice of opposition before the Minister under paragraph 2 of the First Schedule to the Act, for each application opposed, by the applicant

15.00

9. On the hearing of each opposition before the Minister under paragraph 2 of the First Schedule to the Act, by each party

23.00

10. For one registration of a trade mark, or a series of trade marks, under section 27 not otherwise charged:

(i) For one mark in respect of each class

81.00

and

(ii) For each additional mark in a series in respect of each class

8.00

11. For one registration of a defensive trade mark, or of a certification trade mark, for a specification of goods included in one class

95.00

12. Upon the addition to the registered entry of a trade mark of a note that the mark is associated with a newly registered mark:

(i) For the first addition

5.00

and

(ii) For each other similar addition

2.50

13. On application to dissolve the association between registered trade marks:

(i) On an application involving two such marks

15.00

and

(ii) for each additional mark

2.50

14. On application to register a registered user of a registered trade mark or to register the same registered user of more than one registered trade mark of the same registered proprietor subject to the same conditions or restrictions in each case:

(i) For one mark

48.00

and

(ii) For every other mark of the proprietor included in the application and statement of case

5.00

15. On application by the registered proprietor of one or more trade marks under paragraph (a) of section 36 (7) to vary the entry, or entries, or a registered user thereof:

(i) For one mark

39.00

(ii) For every other mark of the proprietor, for which the same user is registered, included in the application

5.00

16. On application by the registered proprietor or registered user of one or more trade marks under paragraph (b) of section 36 (7) for cancellation of the entry, or entries, of a registered user thereof:

(i) For one mark

15.00

and

(ii) For every other mark of the proprietor for which the same user is registered, included in the application

2.50

17. On application under paragraph (c) of section 36 (7) to cancel the entry, or entries, of a registered user of one or more trade marks:

(i) For one mark

15.00

and

(ii) For every other mark of the same proprietor, for which the same user is registered, included in the application

2.50

18. On notice under Rule 88 of intention to intervene in one proceeding for the variation or cancellation of entries of a registered user of trade marks

8.00

19. On application under Rule 75 to enter in the register and advertise a certificate of validity given under section 53:

(i) For the first registration certified

8.00

and

(ii) For every other registration certified in the same certificate

2.50

20. On application under section 37 (4) and Rule 65 for extension of time for registering a corporation as subsequent proprietor of trade marks on one assignment:

(i) Not exceeding two months

12.00

(ii) Not exceeding four months

23.00

(iii) Not exceeding six months

31.00

21. On application for certificate of the Controller under section 30 (5) and Rule 68:

(i) For the first mark proposed to be assigned

39.00

(ii) For every other mark of the same proprietor to be included in the assignment

2.50

22. On application for approval of the Controller under section 30 (6) or paragraph 6 of the Second Schedule to the Act and Rule 68:

(i) For the first mark

39.00

and

(ii) For every other mark of the same proprietor included in the same assignment or transmission

2.50

23. On application under section 30 (7) and Rule 69 for publication of notice of assignment of trade marks in use, without goodwill:

(i) For one mark assigned

20.00

and

(ii) For every other mark assigned with the same devolution of title

5.00

24. On application for extension of time for applying for publication of notice of assignment of trade marks in use, without goodwill, in respect of one devolution of title:

(i) Not exceeding one month

12.00

(ii) Not exceeding two months

23.00

(iii) Not exceeding three months

33.00

25. On application to register a subsequent proprietor of a trade mark, or of two or more trade marks standing in the same name and where the devolution of title is the same in each case:

( a ) If made within six months from the date of acquisition of proprietorship or the coming into force of these Rules:

(i) For one mark

48.00

and

(ii) For every other mark, included in the application

5.00

( b ) If made after the expiration of six months but within twelve months from the date of acquisition of proprietorship or the coming into force of these Rules:

(i) For one mark

56.00

and

(ii) For every other mark, included in the application

5.00

( c ) If made after the expiration of twelve months from the date of acquisition of proprietorship or the coming into force of these Rules:

(i) For one mark

64.00

and

(ii) For every other mark, included in the application

5.00

26. On application to enter any change in the name or description of a proprietor or a registered user of a trade mark, or of two or more trade marks standing in the same name, where there has been no change in the proprietorship or in the identity of the user and where the change is the same in each case:

(i) For one mark

12.00

and

(ii) For every other mark, included in the application

5.00

27. For altering one or more entries of the trade or business address of a registered proprietor or a registered user of a trade mark where the address in each case is the same and is altered in the same way (unless exempted from fee under Rule 72):

(i) For the first entry

8.00

and

(ii) For every other entry

5.00

28. For altering one or more entries of an address for service in the register included in one application for alteration, where the address and the alteration in each case are the same:

(i) For the first entry

8.00

and

(ii) For every other entry

5.00

29. For renewal of registration of a trade mark at expiration of last registration

223.00

30. For renewal of registration of a series of trade marks under section 29 (2) at expiration of last registration:

(i) For the first mark of the series

223.00

and

(ii) For every other mark of the series

5.00

31. Additional fee under Rule 56

15.00

32. Restoration fee under Rule 57

39.00

33. On application to the Controller for leave to add to or alter a registered trade mark, or two or more registered trade marks of the same proprietor, being identical marks, the addition or alteration to be made in each case being the same:

(i) For one mark

39.00

and

(ii) For every other mark, included in the application

20.00

34. For every entry in the register of a rectification thereof or an alteration therein, not otherwise charged

20.00

35. On application for rectification of the register or removal of a trade mark from the register:

(i) Under section 34

39.00

(ii) Under section 35

39.00

(iii) Under section 40

39.00

(iv) Under section 41

39.00

36. On application for leave to intervene in proceedings for rectification of the register or removal of a trade mark from the register:

(i) Under section 34

23.00

(ii) Under section 35

23.00

(iii) Under section 40

23.00

(iv) Under section 41

23.00

37. On request to amend an application for registration, or on request by the registered proprietor of a trade mark for the entry of a disclaimer or memorandum in the register, or for the cancellation of the registration or to amend the specification of goods entered in the register, or to correct a clerical error in any entry in the register

20.00

38. On application to the Minister referred to in Rule 81, to expunge or vary the registration of a certification trade mark, or to vary the deposited regulations of a certification trade mark or of certification trade marks of the same registered proprietor where the regulations are substantially the same

27.00

39. On application by the registered proprietor of a certification trade mark for alteration of the regulations deposited in respect thereof:

(i) For the regulations of one such registration

15.00

(ii) For the same or substantially the same regulations of each other registration proposed to be altered in the same way and included in the same application

5.00

40. On request for a search under Rule 109 in respect of one class:

(i) Without application for the Controller's advice under Rule 16

16.00

(ii) With application for the Controller's advice under Rule 16

32.00

41. On request for the Controller's preliminary advice, for each trade mark submitted in respect of goods in one class

16.00

42. For certificate of the Controller other than certificate under section 27 (2)

12.00

43. ( a ) For inspection of—

(i) the register, or

(ii) any other document open to public inspection under Rule 106,

or

( b ) For making a search amongst such classified representations of trade marks as are made available on paper—

(i) For each quarter of an hour

1.50

and

(ii) For any period of less than a quarter of an hour not reckoned under (i)

1.50

44. For typed office copies of documents, for each 100 words or less

2.50

45. For photocopying documents, for each page

0.25

46. For certifying office copies, mss, typed, printed or photographic, each

2.50

47. When the block required under Rule 34 exceeds two inches either in breadth or in depth:

(i) For every inch or part of an inch over two inches in breadth

5.00

and

(ii) For every inch or part of an inch over two inches in depth

5.00

48. On application to the Controller, not otherwise charged, for extension of time to appeal under section 25 (6) or 26 (8), for each month and in respect of each application

15.00

49. On application under Rule 24, 25 or 92 for a hearing

33.00

50. For making a search, by means of the Patent Office computerized 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 to paper of the results of the search:

(i) (I) For each quarter of an hour

7.50

(II) For any period of less than a quarter of an hour not reckoned under (I)

7.50

(ii) For each record in excess of 30 relating to a trade mark in the computer print-out to paper

0.25

51. For inspection of all or any part of the trade mark register available on computer:

(i) For each quarter of an hour

5.00

and

(ii) For any period of less than a quarter of an hour not reckoned under (i)

5.00

52. For computer print-out or output to electronic media paper of trade mark data open to public inspection other than as at item 50:

(i) For each trade mark record in respect of which data is requested other than as at (ii)

20.00

(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 at item 54

53. For access, by means of telephone or other data transmission media from outside the Patents Office, to the information specified in items 50 and 51 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

250.00

54. On application for an authorisation under Rule 111

100.00

and

(i) In the case of a search of the trademark database made available under Rule 111 carried out by a person other than the licensee, an additional fee of 20 per cent. of any fee charged by the licensee 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.".

GIVEN under my Official Seal, this 24th day of September, 1992.

DESMOND O'MALLEY,

Minister for Industry and Commerce.

The Minister for Finance hereby sanctions the making of the foregoing Rules.

GIVEN under the Official Seal of the Minister for Finance this 27th day of October, 1992.

BERTIE AHERN,

Minister for Finance.

EXPLANATORY NOTE.

The rules provide for certain trade mark information to be made available, electronically, by the Controller of Patents, Designs and Trade Marks.