The Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023

Explanatory Note

(This note is not part of the Regulations)

These Regulations restate retained EU law deriving from directly effective rights arising under the Treaty on the Functioning of the European Union and the Agreement on the European Economic Area which concern the exhaustion of rights of the holder of an intellectual property right. The general principle of the exhaustion of intellectual property rights (with adaptations for each intellectual property regime) is that once a good that is subject to an intellectual property right has been placed on the market or put into circulation in the United Kingdom or the European Economic area by the holder of that right or with their consent or licence the holder cannot generally oppose further dealings in that product by asserting the holder’s rights.

The principle of exhaustion forms part of retained EU law as a result of section 3 or 4 (as appropriate) of the European Union (Withdrawal) Act 2018 (c. 16) (“the 2018 Act”). Provision made by the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019 (S.I. 2019/265) (“the 2019 Regulations”) ensured that retained EU law relating to exhaustion of intellectual property rights continues to operate effectively. Restating the retained EU law will ensure that the principle of exhaustion continues to operate following the repeal of section 4 of the 2018 Act by section 2 of the Retained EU Law (Revocation and Reform) Act 2023 (c. 28).

These regulations restate retained EU Law as a result of the repeal of section 4 of the 2018 Act by amending provisions of the Registered Designs Act 1949 (c. 88), the Patents Act 1977 (c. 37), the Copyright, Design and Patents Act 1988 (c. 48), the Trade Marks Act 1994 (c. 26), the Community Design Regulations 2005 (S.I. 2005/2339) and the 2019 Regulations.

Regulation 2 amends section 24G the Registered Design Act 1949 to provide that the principle of exhaustion continues to operate effectively in relation to articles which are made to a registered design.

Regulation 3 amends section 60 of the Patents Act 1977 to provide that the principle of exhaustion continues to operate effectively in relation to products which are subject to a patent.

Regulation 4 amends—

(a) section 27 of the Copyright, Designs and Patents Act 1988 to provide that the principle of exhaustion continues to operate effectively in relation to copyright works, and

(b) sections 226 and 228 of that Act to provide that the principle of exhaustion continues to operate in relation to articles that are subject to a design right.

Regulation 5 amends sections 12 and 17 of the Trade Marks Act 1994 to provide that the principle of exhaustion continues to operate in relation to goods that bear a registered trade mark.

Regulation 6 amends the Community Design Regulations 2005 to provide that the principle of exhaustion continues to operate in relation to articles which are made to a supplementary unregistered design.

Regulation 7 amends the 2019 Regulations by omitting regulation 2 in consequence of the repeal of section 4 of the 2018 Act at the end of 2023.

A full impact assessment has not been produced for this instrument as no, or no significant, impact on the private, voluntary or public sector is foreseen.

A copy of this instrument and the Explanatory Memorandum is available from the Intellectual Property Office, Concept House, Cardiff Road, Newport, South Wales, NP10. The Explanatory Memorandum is also available alongside this legislation on the Legislation UK website at www.legislation.gov.uk