Trade Marks Rules, 1996

• Date: 27 June 1996
• Statutory Instrument No.: 199/1996

S.I. No. 199 of 1996.
TRADE MARKS RULES, 1996
ARRANGEMENT OF RULES
Preliminary
Rule
1. Short title.
2. Interpretation.
3. Commencement.
4. Fees.
5. Certificates for use in registration abroad.
6. Classification of goods and services.
7. Signature of document.
8. Filing of documents.
9. Documents in a foreign language.
10. Address for service.
11. Revocation of previous rules.
Application for Registration
12. Form of application.
13. Claim to priority.
14. Application may be for more than one class.
15. Matters not registrable.
Procedures on Receipt of Application
16. Search.
17. Publication.
18. Notice of opposition to registration.
19. Counter - statement.
20. Evidence in support of opposition.
21. Evidence in support of application.
22. Evidence in reply by opponent.
23. Further evidence.
24. Exhibits.
25. Hearing.
26. Amendment of application.
27. Notification of Controller's decision and grounds.
Division, Merger and Series of Marks
28. Division of application.
29. Merger of separate applications or registrations.
30. Registration of a series of trade marks.
Collective and Certification Marks
31. Application under section 54.
32. Amendment of regulations governing use of collective marks.
33. Application under section 55.
34. Amendment of regulations governing use of certification marks.
Alteration or Surrender of Registered Trade Mark
35. Alteration of registered trade mark.
36. Surrender of registered trade mark.
Renewal and Restoration
37. Reminder of renewal of registration.
38. Renewal of registration.
39. Delayed renewal and removal of registration.
40. Restoration of registration.
Revocation, Invalidation and Rectification
41. Procedure on application for revocation, declaration of invalidity and rectification of the register.
The Register
42. Form of register.
43. Entry in register of particulars of registered trade marks.
44. Entry in register of particulars of registrable transactions.
45. Application to register transactions under section 29.
46. Notices under section 31.
47. Public inspection of register.
48. Supply of certified copies, etc..
49. Request for change of name or address in register.
50. Change of classification.
Registered Trade Mark Agents
51. Applications for registration.
52. Proof of authorisation of agent may be required.
53. Entry in the register of trade mark agents.
54. Publication of entries in register of trade mark agents.
55. Payment of annual registration fee.
56. Request for removal from register of trade mark agents.
57. Notice to Controller of application to the Court under subsection (3) of section 88.
58. Application for restoration to register of trade mark agents.
59. Controller may refuse to deal with certain agents.
Powers and Duties of Controller, Evidence and Costs
60. Provision of information and inspection of documents.
61. Hearing.
62. Controller's power to require documents, information or evidence.
63. General power to enlarge time.
64. Costs.
65. Form of statutory declaration.
66. Statutory declaration made outside the State.
67 Notice of seal of officer making declaration to prove itself.
Application to and Orders of Court
68. Application to Court.
69. Order of Court.
Miscellaneous
70. Excluded days.
71. Searches.
72. Pending applications for registration.
73. Time limit for payment of fees required for registration.
74. Power to dispense with evidence, signature &c.
75. General power of amendment.
76. Partial assignments.
77. Non-exclusive licence.
78. Form for conversion of pending application.
79. Forms.
Schedule 1
Fees payable.
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 Act.
Schedule 3
Rules revoked.
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 amended 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" means 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 immediately 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 Schedule 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 satisfaction 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 shall 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 request 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 Controller 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 Agreement 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 amended.
	7 Signature of documents.	7. A document purporting to be signed 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 Rules 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 discretion 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 service 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 or 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), the...