The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019

Regulation 5

SCHEDULE 4 U.K. Amendments to the Rules

Amendments to the Rules U.K.

1.  The Rules are amended in accordance with paragraphs 2 to 11.

Commencement Information

I1 Sch. 4 para. 1 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

2.—(1) Rule 2 is amended as follows. U.K.

(2) In the definition of “fast track opposition”, sub-paragraph (b), for “or in the EU, or is protected in one or another of those territories as an international trade mark (UK) or (EU)” substitute “ or is protected in the UK as an international trade mark (UK) ”.

(3) In paragraph (2) after “in the Act” insert “ , a reference to a schedule is a reference to that schedule to the Act ”.

Commencement Information

I2 Sch. 4 para. 2 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

3.  After rule 2 insert— U.K.

“Comparable trade mark (EU)

2A   These Rules apply to a comparable trade mark (EU) as they apply to other registered trade marks.”

Commencement Information

I3 Sch. 4 para. 3 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

4.—(1) Rule 4 is amended as follows. U.K.

(2) In sub-paragraph (1) omit “by rules under section 79 (fees)”.

(3) In sub-paragraph (2) omit “by those rules”.

(4) After sub-paragraph (2) insert—

“(3) In this rule, “prescribed” means—

(a) in relation to a registered trade mark other than a comparable trade mark (EU), prescribed by rules under section 79 (fees);

(b) in relation to a comparable trade mark (EU), prescribed by virtue of regulations under Schedule 4 to the European Union (Withdrawal) Act 2018.”

Commencement Information

I4 Sch. 4 para. 4 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

5.  After rule 5 insert— U.K.

“Application for registration based upon an existing EUTM application; Schedule 2A paragraph 25

5A— (1) Where an application for registration is made in accordance with paragraph 25 of Schedule 2A, the application for registration under rule 5 must specify—

(a) the number accorded to the existing EUTM application;

(b) the filing date accorded to the existing EUTM application; and

(c) the date of priority (if any) accorded pursuant to a right of priority claimed in respect of the existing EUTM application.

(2) Where—

(a) a right of priority has been claimed (“a priority claim”) in respect of the existing EUTM application; or

(b) the seniority of a registered trade mark or a protected international trade mark (UK) has been claimed (“a seniority claim”) under paragraph 26 of Schedule 2A,

the application for registration under rule 5 must, in addition, specify the information provided in paragraph (3).

(3) The information is—

(a) in relation to a priority claim, the information specified in rule 6(1)(a) to (c); and

(b) in relation to a seniority claim, the number of the registered trade mark or protected international trade mark (UK) from which the trade mark the subject of the application claims seniority and the seniority date.

(4) The registrar may, in any particular case, by notice require the applicant to file, within such period of not less than one month as the notice may specify, such documentary evidence as the registrar may require certifying, or verifying to the satisfaction of the registrar—

(a) the filing date accorded to the existing EUTM application, the representation of the mark and the goods or services covered by the existing EUTM application; and

(b) in relation to a priority claim, the date of filing of the overseas application, the country or registering or competent authority, the representation of the mark and the goods or services covered by the overseas application.”

Commencement Information

I5 Sch. 4 para. 5 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

[F1 6.— (1) Rule 11 is amended as follows. U.K.

(2) At the end of paragraph (1)(d), omit “.” and substitute “;”.

(3) After paragraph (1)(d) insert—

“(e) a proprietor of a comparable trade mark (EU) who sends a derogation notice to the registrar under rule 43A.”.

(4) In paragraph (4), for “another EEA state” substitute “an EEA state”.]

Textual Amendments

F1 Sch. 4 para. 6 substituted (31.12.2020 immediately before IP completion day) by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(a)

Commencement Information

I6 Sch. 4 para. 6 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

[F2 6A.— (1) Rule 12 is amended as follows. U.K.

(2) At the end of paragraph (4)(d), omit “.” and substitute “;”.

(3) After paragraph (4)(d), insert—

“(e) in the case of the proprietor who sends a derogation notice to the registrar, the registrar must proceed as if the proprietor had not sent a derogation notice.”.]

Textual Amendments

F2 Sch. 4 para. 6A inserted (31.12.2020 immediately before IP completion day) by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(b)

Commencement Information

I7 Sch. 4 para. 6A in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

7.  In rule 14(3) for “section 6(1)(a) or (b)” substitute “ section 6(1)(a) or (aa) ”. U.K.

Commencement Information

I8 Sch. 4 para. 7 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

8.  In rule 17A(6)(d), omit “or (EU)”. U.K.

Commencement Information

I9 Sch. 4 para. 8 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

9.  After rule 29 insert— U.K.

“Filing of regulations for EU collective and certification marks; Schedule 2A, paragraph 4

29A   Regulations governing the use of a comparable trade mark (EU) which is a collective mark or a certification mark and any translation required to be filed under paragraph 4 of Schedule 2A must be filed within a period of three months following the date of notice from the registrar.”

Commencement Information

I10 Sch. 4 para. 9 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

10.  After rule 37 insert— U.K.

“Restoration of a European Union trade mark; Schedule 2A, paragraph 28

37A   A request for the registration of a comparable trade mark (EU) following the restoration of a European Union trade mark under paragraph 28 of Schedule 2A must include—

(a) a representation of the European Union trade mark;

(b) the registration number of that mark;

(c) the name and address of the proprietor;

(d) the goods or services in respect of which that mark is registered;

(e) the priority date (if any) accorded pursuant to a claim of priority filed in respect of that mark pursuant to the European Union Trade Mark Regulation and the information specified in rule 6(1)(a) to (c) in respect of that priority claim;

(f) the number of the registered trade mark or international trade mark (UK) from which that mark claimed seniority (if any) and the seniority date.”.

Commencement Information

I11 Sch. 4 para. 10 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

[F3 10A.— (1) Rule 43 is amended as follows. U.K.

(2) At the end of paragraph (1)(b), omit “, or” and substitute “;”.

(3) At the end of paragraph (1)(c), omit “,” and substitute “; or”.

(4) After paragraph (1)(c), insert—

“(d) the registration of a comparable trade mark (EU) is revoked or declared invalid to any extent under rule 43A(6),”.

(5) In paragraph (2), after “application and shall” insert “, in the cases referred to in paragraph (1)(a) to (c),”.

(6) In paragraph (3)—

(a) after “TM8” insert “or the derogation notice”;

(b) after “TM26(O)” omit “or” and substitute “,”;

(c) after “TM 26(I)” insert “or notification from the registrar under rule 43(4)(b) that the comparable trade mark (EU) will be revoked or declared invalid to the same extent as the corresponding EUTM”.

Textual Amendments

F3 Sch. 4 paras. 10A, 10B inserted (31.12.2020 immediately before IP completion day) by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c)

Commencement Information

I12 Sch. 4 para. 10A in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

10B.   After rule 43 insert— U.K.

“Invalidation or revocation of Existing EUTM: Cancellation notice and procedure on application for derogation; Schedule 2A paragraph 21A

43A.— (1) A cancellation notice under paragraph 21A of Schedule 2A must—

(a) identify the existing EUTM by the number under which the existing EUTM was registered in the EUTM Register immediately before IP completion day, together with a representation of the mark,

(b) include the following details with regard to the decision pursuant to which the existing EUTM was revoked or declared invalid (whether wholly or partially)—

(i) the date of the decision (including any decision determined on appeal),

(ii) whether the revocation or declaration of invalidity related to all or part of the goods or services for which the existing EUTM was registered,

(iii) where the existing EUTM was revoked (whether wholly or partially) the date on which the revocation took effect,

(c) be accompanied by a copy of the decision (including any decision determined on appeal) pursuant to which the existing EUTM was revoked or declared to be invalid, and

(d) include a statement confirming that the decision pursuant to which the existing EUTM was revoked or declared invalid (whether wholly or partially) has been finally determined.

(2) Where a cancellation notice is submitted to the registrar by the proprietor of the comparable trade mark (EU) which derives from the existing EUTM, the cancellation notice must be accompanied by—

(a) a notice (a “derogation notice”) in writing to the registrar that, based upon the provisions in paragraph 21A(4) of Schedule 2A, the comparable trade mark (EU) should not be revoked or declared invalid (whether wholly or partially), and

(b) a statement of the reasons why paragraph 21A(4) of Schedule 2A applies (a “statement”) together with relevant supporting evidence (“supporting evidence”).

(3) Where the proprietor of a comparable trade mark (EU) submits a cancellation notice to the registrar but fails to send a derogation notice, a statement or supporting evidence, the registration of the comparable trade mark (EU) which derives from the existing EUTM identified in the cancellation notice must be revoked or declared invalid to the same extent as the existing EUTM, unless the registrar directs otherwise.

(4) Where the registrar receives a cancellation notice submitted by a person other than the proprietor of the comparable trade mark (EU) which derives from the existing EUTM, the registrar must as soon as reasonably practicable after receipt of the cancellation notice—

(a) send a copy of the cancellation notice to the proprietor of the comparable trade mark (EU) which derives from the existing EUTM identified in the cancellation notice, and

(b) notify the proprietor of the comparable trade mark (EU) which derives from the existing EUTM that based upon the revocation or declaration of invalidity of the existing EUTM, the comparable trade mark (EU) will be revoked or declared invalid to the same extent as the corresponding EUTM.

(5) Where the registrar has become aware of the situation referred to in paragraph 21A(2)(a) of Schedule 2A otherwise than by a cancellation notice, the registrar must as soon as reasonably practicable after becoming aware of that situation, notify the proprietor of the comparable trade mark (EU) which derives from the existing EUTM in the terms provided in paragraph (4)(b).

(6) The proprietor of a comparable trade mark (EU) referred to in paragraph (4) and (5) must, within such period of not less than one month as may be specified in the notice referred to in paragraph (4)(b) and (5), send to the registrar a derogation notice accompanied by a statement and supporting evidence as referred to in paragraph (2), failing which the registration of the comparable trade mark (EU) must be revoked or declared invalid to the same extent as the corresponding EUTM, unless the registrar directs otherwise.

(7) The registrar must, in reaching a decision as to whether paragraph 21A(4) of Schedule 2A applies to a comparable trade mark (EU), have regard to the statement and supporting evidence filed by the proprietor of the comparable trade mark (EU) and must send written notice of the decision to the proprietor, stating the reasons for that decision.

(8) For the purposes of any appeal against a decision referred to in sub-paragraph (7), the date on which the notice is sent must be taken to be the date of the decision.” .]

Textual Amendments

F3 Sch. 4 paras. 10A, 10B inserted (31.12.2020 immediately before IP completion day) by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(c)

Commencement Information

I13 Sch. 4 para. 10B in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

11.—(1) Rule 47 is amended as follows. U.K.

(2) At the end of paragraph (a) insert “ or, in the case of a comparable trade mark (EU), as determined in accordance with paragraph 1 of Schedule 2A ”.

(3) At the end of paragraph (b) insert “ (which in the case of a comparable trade mark (EU) is the date of registration of the corresponding EUTM in the EUTM Register) ”.

(4) After paragraph (c) insert—

“(ca) in the case of a comparable trade mark (EU)—

(i) the priority date (if any) accorded pursuant to a claim of priority filed in respect of the corresponding EUTM pursuant to the European Union Trade Mark Regulation; and

(ii) the number of the registered trade mark or international trade mark (UK) from which the corresponding EUTM claimed seniority (if any) and the seniority date;

(cb) where the mark is registered pursuant to an application referred to in paragraph 26 of Schedule 2A—

(i) the priority date (if any) accorded pursuant to a claim to a right to priority made under paragraph 25(2)(a)(ii) of Schedule 2A; and

(ii) the number of the registered trade mark or international trade mark (UK) from which the application claims seniority (if any) and the seniority date;”.

(5) Omit paragraph (l).

(6) After paragraph (m) M1 insert—

“(n) in the case of a comparable trade mark (EU) an indication that it is derived from an existing EUTM, including the number of the corresponding EUTM [F4 , and where the corresponding EUTM is subject to cancellation proceedings, that cancellation is pending].”.

Textual Amendments

F4 Words in Sch. 4 para. 11(6) inserted (31.12.2020 immediately before IP completion day) by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 11(d)

Commencement Information

I14 Sch. 4 para. 11 in force at 31.12.2020 on IP completion day (in accordance with 2020 c. 1, Sch. 5 para. 1(1)), see reg. 1(1)

Marginal Citations

M1 Paragraph (m) was inserted by S.I. 2018/825, regulation 43.