Prospective
Regulation 3
Editorial Information
X1This statutory instrument was made under a procedure whereby it ceases to have effect at the end of the period of 28 days beginning with the day on which it was made unless, during that period, the instrument was approved by a resolution of each House of Parliament. It was not approved by Parliament within that period and so has ceased to have effect.
In Article 14a and Annex 1A any reference to:
(a)‘a type 1 designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 1 of the Types Table;
(b)‘a type 2A designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 2 of the Types Table to which paragraph 1 or 2 of column 3 of that row applies;
(c)‘a type 2B designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 2 of the Types Table to which the provisions in column 4 of that row apply;
(d)‘a type 3A designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 3 of the Types Table to which paragraph 1 or 2 of column 3 of that row applies;
(e)‘a type 3B designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 3 of the Types Table to which the provisions in column 4 of that row apply;
(f)‘a type 4A designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 4 of the Types Table to which paragraph 1 or 2 of column 3 of that row applies;
(g)‘a type 4B designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 4 of the Types Table to which the provisions in column 4 of that row apply;
(h)‘a type 5A designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 5 of the Types Table to which paragraph 1 or 2 of column 3 of row 4 of that table applies;
(i)‘a type 5B designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 5 of the Types Table to which the provisions in column 4 of row 4 of that table apply;
(j)‘a type 6A designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 6 of the Types Table to which paragraph 1 or 2 of column 3 of row 4 of that table applies;
(k)‘a type 6B designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 6 of the Types Table to which the provisions in column 4 of row 4 of that table apply;
(l)‘a type 7A designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 7 of the Types Table to which paragraph 1 or 2 of column 3 of row 4 of that table applies;
(m)‘a type 7B designation of origin or geographical indication’ means a designation of origin or geographical indication of the type described in column 2 of row 7 of the Types Table to which the provisions in column 4 of row 4 of that table apply.”
1. Unless paragraph 4 applies, an application to register a trade mark that was pending immediately before exit day or filed during the relevant period must be refused where, if the trade mark is registered, the use of the trade mark will contravene Article 13(1) in relation to a category A designation of origin or geographical indication.
2. Unless paragraph 4 applies, an application to register a trade mark that was pending immediately before exit day or filed during the relevant period must be refused where:
(a)if the trade mark is registered, the use of the trade mark will contravene Article 13(1) in relation to a category B designation of origin or geographical indication, and
(b)after the application for the trade mark is accepted but before the trade mark is registered:
(i)in the case of a type 3B designation of origin or geographical indication:
(aa)the international agreement referred to in paragraph (c) of column 2 of row 3 of the Types Table enters into force, and
(bb)the entry into force of the international agreement is brought to the attention of the registrar before the trade mark is registered;
(ii)in the case of any other category B designation of origin or geographical indication:
(aa)the Secretary of State publishes an Article 52(4) approval notice relating to the designation of origin or geographical indication, and
(bb)the Article 52(4) approval notice is brought to the attention of the registrar before the trade mark is registered.
3. Where an application for a declaration of invalidity is made under the TMA (as applied by Article 14b(1) and modified by Article 14b(2)) in relation to the registration of a trade mark, the registration of a trade mark must be declared to be invalid, unless paragraph 4 applies, if:
(a)the application to register the trade mark was pending immediately before exit day or filed during the relevant period,
(b)the use of the trade mark contravenes, or will, if used, contravene, Article 13(1) in relation to a category B designation of origin or geographical indication, and
(c)in the case of a type 2B, 4B, 5B, 6B or 7B designation of origin or geographical indication, the Secretary of State publishes an Article 52(4) approval notice relating to the designation of origin or geographical indication on or after the day on which the trade mark application is accepted.
4. This paragraph applies where a column 5 date applies in relation to a category A or B designation of origin or geographical indication and, taking account of any priority claimed in respect of an application to register the trade mark referred to in paragraph 1, 2 or 3(a) (as relevant) and on the basis of the information available to the registrar, it appears to the registrar that the date of filing of the trade mark application is earlier than the column 5 date that applies to the relevant designation of origin or geographical indication.
5. As regards paragraph 1 or 2, a column 5 date does not apply in relation to a type 3A, 4A or 5A designation of origin or geographical indication where the EUIA referred to in paragraph (b) in column 2 of the row of the Types Table relating to the designation of origin or geographical indication provides that an application for a trade mark must be refused, regardless of when that application is filed, if the trade mark, if registered, will contravene a provision in the EUIA providing for the protection of the use of the designation of origin or geographical indication
6. As regards paragraph 3, a column 5 date does not apply in relation to a type 3B, 4B or 5B designation of origin or geographical indication where the EUIA referred to in paragraph (b) in column 2 of the row of the Types Table relating to the designation of origin or geographical indication provides that the registration of a trade mark must be invalidated if, regardless of when the application that resulted in the registration of the trade mark is filed, the use of the trade mark contravenes a provision in the EUIA providing for the protection of the use of the designation of origin or geographical indication.
7. Where a designation of origin or geographical indication falls within the definition of more than one type of designation of origin or geographical indication in Article 3a, the column 5 date to be taken into account for the purpose of paragraph 4 is the earliest of the column 5 dates for the relevant types of designation of origin or geographical indication.
8. A trade mark that could be used under Article 14(2) of EU Regulation 1151/2012 M1 immediately before exit day and could be renewed pursuant to that provision may continue to be used and renewed:
(a)notwithstanding that the use of the trade mark would contravene Article 13(1) in relation to a designation of origin or geographical indication registered by the Secretary of State under this Regulation;
(b)provided that no grounds for the invalidation or revocation of the trade mark exist in, or under, the TMA.
9. Where paragraph 8 applies to the use or renewal of a trade mark, this does not affect the use of:
(a)a designation of origin or geographical indication entered on the United Kingdom's PDOs and PGIs Register by the Secretary of State under Article 11(2);
(b)an established protected designation of origin or an established protected geographical indication entered on the United Kingdom's PDOs and PGIs Register pursuant to Article 16;
(c)a designation of origin or geographical indication entered on the United Kingdom's PDOs and PGIs Register following a decision by the Secretary of State to approve an application to register the designation of origin or geographical indication following an application submitted under Article 49.
10. In this Article:
(a)‘an application to register a trade mark’ means an application to register a trade mark filed under the TMA;
(b)‘a category A designation of origin or geographical indication’ means a type 1, 2A, 3A, 4A, 5A, 6A or 7A designation of origin or geographical indication;
(c)‘a category B designation of origin or geographical indication’ means a type 2B, 3B, 4B, 5B, 6B or 7B designation of origin or geographical indication;
(d)‘the column 5 date’, in relation to a designation of origin or geographical indication that is a category A or B designation of origin or geographical indication, means the date specified, or provided for, in column 5 of the Types Table in the row relating to the relevant type of designation of origin or geographical indication;
(e)‘date of filing’:
(i)in the case of an EUTM-based trade mark application, means the filing date referred to in paragraph 25(2)(a)(i) of Schedule 2A to the TMA M2 for the existing EUTM application;
(ii)in the case of an ITM-based trade mark application, means:
(aa)in the case of an application for the registration of a trade mark to which paragraph 28 of Schedule 2B to the TMA M3 applies, the date referred to in paragraph 28(2)(a) of that Schedule for the existing ITM application or existing request for EU extension (as the case may be);
(bb)in the case of an application for the registration of a trade mark to which paragraph 29 of Schedule 2B to the TMA applies, the date referred to in paragraph 29(2)(a) of that Schedule for the existing ITM application or existing request for EU extension (as the case may be);
(iii)in any other case, has the meaning given by section 33 of the TMA;
(f)‘EUTM-based trade mark application’ means an application to register a trade mark to which paragraph 25(1) of Schedule 2A to the TMA applies that is made within the period specified in paragraph 25(2) of that Schedule;
(g)‘existing EUTM application’ has the same meaning as in paragraph 24 of Schedule 2A to the TMA;
(h)‘existing ITM application’ has the same meaning as in paragraph 27(1)(a) of Schedule 2B to the TMA;
(i)‘existing request for EU extension’ has the same meaning as in paragraph 27(1)(b) of Schedule 2B to the TMA;
(j)‘ITM-based trade mark application’ means an application to register a trade mark to which paragraph 28(1) or 29(1) of Schedule 2B to the TMA applies that is made within the period specified in paragraph 28(1)(c) or 29(1)(c) (as the case may be) of that Schedule;
(k)‘the registrar’ has the meaning given by section 62 to the TMA.
11. Any reference in this Article to:
(a)‘priority claimed in respect of an application’:
(i)in the case of an EUTM-based trade mark application, means any priority claimed in respect of the existing EUTM application referred to in paragraph 25(2)(a)(ii) of Schedule 2A to the TMA;
(ii)in the case of an ITM-based trade mark application, means any priority claimed in respect of the existing ITM application or the existing request for EU extension referred to in paragraph 28(2)(b) or 29(2)(b) (as the case may be) of Schedule 2B to the TMA;
(iii)in any other case, means any priority claimed in respect of the application pursuant to section 35 of the TMA;
(b)an application to register a trade mark that was ‘pending immediately before exit day’ is to an application that was neither refused, nor resulted in the registration of the trade mark that is the subject of the application, before exit day;
(c)a trade mark includes a reference to:
(i)a collective mark as defined in section 49(1) of the TMA M4;
(ii)a certification mark as defined in section 50(1) of the TMA M5.
1. For the purpose of Article 14a, the following provisions of the TMA apply, with the modifications, in the case of section 47(3) and (5), 74(1), 76(1) and 77(1), specified in paragraph 2:
(a)subsections (3) to (5) and (6) of section 47 (invalidation of trade marks) in relation to an application to invalidate a trade mark referred to in Article 14a(3);
(b)section 72 (registration to be prima face evidence of validity);
(c)section 73 (certificate of validity of contested application);
(d)section 74 (registrar's appearance in proceedings involving the register of trade marks);
(e)section 75 M6 (definition of ‘the court’);
(f)section 76 M7 (appeals) except for subsection (5);
(g)section 77(1) (persons appointed to hear and determine appeals).
2. The modifications are:
(a)section 47 applies as if:
(i)in subsection (3), in the words before paragraph (a), after ‘invalidity’ there were inserted ‘made under this section, as applied by Article 14b(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs on quality schemes for agricultural products and foodstuffs,’;
(ii)in subsection (5), for ‘grounds of invalidity exist’ there were substituted ‘ground for invalidity specified in Article 14a(3) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council exists’;
(b)section 74(1) applies as if, for the words from ‘for’ to ‘the registrar’ there were substituted ‘for a declaration of the invalidity of the registration of a trade mark the registrar’;
(c)section 76(1) applies as if:
(i)in the first paragraph, for the words from ‘this Act’ to the end there were substituted ‘made under Article 14a of Regulation (EU) No 1151/2012 of the European Parliament and of the Council’;
(ii)the second paragraph were omitted;
(d)section 77(1) applies as if, at the end there were inserted ‘as applied by Article 14b(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council’.
3. In the case of the following proceedings, the rules made under section 68 or 69 of the TMA apply to those proceedings as they apply to proceedings involving an application of the type referred to in section 74(1)(b) of the TMA:
(a)an application to invalidate a trade mark referred to in Article 14a(3);
(b)an appeal to the appointed person from a decision of the registrar in relation to an application referred to in paragraph (a).”
Marginal Citations
M1OJ No. L 343, 14.12.2012, p. 1, to which there are amendments not relevant to these Regulations.
M2Schedule 2A is prospectively inserted on exit day by S.I. 2019/269.
M3Schedule 2B is prospectively inserted on exit day by S.I. 2019/638.
M4Section 49(1) was substituted by S.I. 2018/825.
M5Section 50(1) was amended by S.I. 2018/825.
M6Section 75 was amended by the Crime and Courts Act 2013 (c. 22), Schedule 9, paragraph 134, S.I. 2005/587.
M7Section 76(6) was inserted by S.I. 2005/587.
| Column 1Row No. | Column 2Description of the designation of origin or geographical indication | Column 3Type A provisions | Column 4Type B provisions | Column 5The specified date |
|---|---|---|---|---|
| 1. | A designation of origin or geographical indication that: (a) relates to a geographical area in the British Islands, and (b) is on the United Kingdom's PDOs and PGIs Register, having been entered on that register pursuant to Article 16(1), when the paragraph 1 trade mark application is accepted. | Not applicable | Not applicable | The date on which the application that resulted in the first registration of the designation of origin or geographical indication was submitted to the European Commission under the relevant pre-exit legislation. |
| 2. | A designation of origin or geographical indication that: (a) relates to a geographical area in the United Kingdom, and (b) for which an application to register the designation of origin or geographical indication was submitted to the European Commission under Article 49(4) of EU Regulation 1151/2012 before exit day. | 1. A designation of origin or geographical indication that is on the United Kingdom's PDOs and PGIs Register when the paragraph 1 trade mark application is accepted and is entered on that register following the approval of an application to which Article 52a(3), as read with paragraph (4) of that Article (pending United Kingdom applications), applies. 2. A designation of origin or geographical indication: (a) that is not on the United Kingdom's PDOs and PGIs Register when the paragraph 1 trade mark application is accepted, (b) to which Article 52a(3), as read with paragraph (4) of that Article, applies, and (c) for which an Article 52(4) notice relating to the application to register the designation of origin or geographical indication is published before the relevant trade mark application is accepted. | A designation of origin or geographical indication to which Article 52a(3), as read with paragraph (4) of that Article, applies but for which an Article 52(4) notice relating to the application to register the designation of origin or geographical indication is not published before the relevant trade mark application is accepted. | The date on which the application to register the designation of origin or geographical indication referred to in point (b) of column 2 was submitted to the European Commission under Article 49(4) of EU Regulation 1151/2012. |
| 3. | A designation of origin or geographical indication that: (a) relates to a geographical area in a third country, (b) was protected in the European Union immediately before exit day pursuant to an EUIA to which the European Union and the third country were contracting parties, and (c) must be protected in the United Kingdom pursuant to an international agreement to which the United Kingdom and the third country are contracting parties that enters into force during the relevant period. | 1. A designation of origin or geographical indication that is on the United Kingdom's PDOs and PGIs Register when the paragraph 1 trade mark application is accepted and is entered on that register pursuant to Article 11(2). 2. A designation of origin or geographical indication that is not on the United Kingdom's PDOs and PGIs Register when the paragraph 1 trade mark application is accepted but must be protected in the United Kingdom pursuant to an international agreement to which the United Kingdom and the third country are contracting parties that enters into force before the paragraph 1 trade mark application is accepted. | A designation of origin or geographical indication that is not on the United Kingdom's PDOs and PGIs Register when the relevant trade mark application is accepted but must be protected in the United Kingdom pursuant to an international agreement to which the United Kingdom and the third country are contracting parties that enters into force on or after the relevant trade mark application is accepted. | The relevant EUIA-based date that applies to the designation of origin or geographical indication in relation to the EUIA referred to in point (b) of column 2. |
| 4. | A designation of origin or geographical indication that: (a) relates to a geographical area in a third country, and (b) was protected in the European Union immediately before exit day pursuant to an EUIA to which the European Union and the third country were contracting parties. | 1. A designation of origin or geographical indication that is on the United Kingdom's PDOs and PGIs Register when the paragraph 1 trade mark application is accepted and is entered on that register following the approval of an application to register the designation of origin or geographical indication submitted to the Secretary of State under Article 49 during the relevant period. 2. A designation of origin or geographical indication: (a) that is not on the United Kingdom's PDOs and PGIs Register when the paragraph 1 trade mark application is accepted, (b) for which an application to register the designation of origin or geographical indication is submitted to the Secretary of State under Article 49 during the relevant period, and (c) for which an Article 52(4) approval notice relating to the application is published before the paragraph 1 trade mark application is accepted. | A designation of origin or geographical indication: (a) that is not on the United Kingdom's PDOs and PGIs Register when the relevant trade mark application is accepted, and (b) for which an application to register the designation of origin or geographical indication is submitted to the Secretary of State under Article 49 during the relevant period and that application: (i) is not submitted before the relevant trade mark application is accepted, or (ii) is submitted before the relevant trade mark application is accepted but for which an Article 52(4) notice relating to the application to register the designation of origin or geographical indication is not published before the relevant trade mark application is accepted. | The relevant EUIA-based date that applies to the designation of origin or geographical indication in relation to the EUIA referred to in point (b) of column 2 |
| 5. | A designation of origin or geographical indication: (a) that relates to a geographical area in a third country, (b) for which an assessment relating to the protection of the designation of origin or geographical indication was being carried out, or a request for protection, or an application for assessment for protection, was submitted, before exit day in respect of the designation of origin or geographical indication under an EUIA, and (c) for which no decision was been made pursuant to the EUIA before exit day as to whether the designation of origin or geographical indication should be protected in the European Union. | See the entry in row 4 of this column. | See the entry in row 4 of this column. | The relevant EUIA-based date that applies to the designation of origin or geographical indication in relation to the EUIA referred to in point (b) of column 2. |
| 6. | A designation of origin or geographical indication that: (a) relates to a geographical area in a third country, and (b) was on the European Commission's PDOs and PGIs Register immediately before exit day M8. | See the entry in row 4 of this column. | See the entry in row 4 of this column. | The date on which the application that resulted in the first registration of the designation of origin or geographical indication was submitted to the European Commission under the relevant pre-exit legislation. |
| 7. | A designation of origin or geographical indication: (a) that relates to a geographical area in a third country, and (b) for which an application to register the designation of origin or geographical indication was submitted to the European Commission under Article 49(4) or (5) of EU Regulation 1151/2012 before exit day that was neither refused nor resulted in the registration of the designation of origin or geographical indication on the European Commission's PDOs and PGIs Register before exit day. | See the entry in row 4 of this column. | See the entry in row 4 of this column. | The date on which the application to register the designation of origin or geographical indication referred to in point (b) of column 2 was submitted to the European Commission under Article 49(4) or (5) of EU Regulation 1151/2012. |
1. In the table in this Part:
(a)‘an Article 52(4) notice’ means a notice published by the Secretary of State under Article 52(4);
(b)‘the European Commission's PDOs and PGIs Register’ means the register established and maintained by the European Commission pursuant to Article 11(1) of EU Regulation 1151/2012;
(c)‘the paragraph 1 trade mark application’ means the application to register a trade mark referred to in Article 14a(1);
(d)‘the relevant pre-exit Regulation’ means:
(i)in the case of an application to register a designation of origin or geographical submitted to the European Commission under Council Regulation (EEC) No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs M9, Article 5 or 12a of that Regulation, as relevant;
(ii)in the case of an application to register a designation of origin or geographical submitted to the European Commission under Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs M10, Article 5 of that Regulation;
(iii)in the case of an application to register a designation of origin or geographical submitted to the European Commission under EU Regulation 1151/2012, Article 49(2) or (5) of that Regulation, as relevant;
(e)‘the relevant trade mark application’ means a trade mark application of the type referred to in Article 14a(2) or (3)(a), as relevant;
(f)‘the relevant EUIA-based date’ means the relevant EUIA-based date determined in accordance with Part 2.
2. In the table in Part 1, in a case where the relevant EUIA-based date applies, the relevant EUIA-based date means:
(a)the date provided for in paragraph 3, or
(b)where paragraph 3 does not apply, the date provided for in the relevant point of paragraph 4, or paragraph 5 or 6, as relevant to the designation of origin or geographical indication.
3. In a case where the EUIA referred to in paragraph (b) in column 2 of the row of the Types Table relating to a designation of origin or geographical indication contained priority provisions that applied to the designation of origin or geographical indication, the relevant EUIA-based date is the priority date provided for in the EUIA that applied to that designation of origin or geographical indication.
4. In a case of a type 3 or 4 designation of origin or geographical indication to which paragraph 3 does not apply, the relevant EUIA-based date is:
(a)in a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to an amendment made to the EUIA (without the need for further action to be taken under the EUIA), the date on which the amendment entered into force;
(b)in a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to a provision in the EUIA that was provisionally applied before exit day (without the need for further action to be taken under the EUIA), the date on which the provision was provisionally applied;
(c)in a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to an amendment made to the EUIA that was provisionally applied before exit day (without the need for further action to be taken under the EUIA), the date on which the amendment was provisionally applied;
(d)in a case of a designation of origin or geographical indication that was protected in the European Union immediately before exit day following the submission and processing of a request, or application, for protection or assessment (however described) under a provision in the EUIA providing for such requests, or applications, the date the request, or application, for protection or assessment was submitted under the EUIA;
(e)in any other case, including a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to provisions in the EUIA that applied from the date that the EUIA entered into force (without the need for further action to be taken under the EUIA), the date on which the relevant EUIA entered into force.
5. In a case of a type 5 designation of origin or geographical indication to which paragraph 3 does not apply and for which a request, or an application, for protection or assessment (however described) was submitted before exit day under the EUIA, the relevant EUIA-based date is the date the request, or application, for protection or assessment was submitted under the EUIA.
6. Any reference in this Part to:
(a)‘the priority date’ means the date provided for in priority provisions in an EUIA as the date that must be taken into account when determining whether an application for a trade mark may be granted, including:
(i)a calendar date specified in the EUIA;
(ii)a date relating to the happening of a specified event;
(b)‘priority provisions’ means provisions in an EUIA that governed the relationship between trade marks and designations of origin and geographical indications that provided (however expressed):
(i)that, in the circumstances specified in the EUIA, an application for a trade mark must be refused if the application for the trade mark was filed after a date provided for in the EUIA,
(ii)that, in the circumstances specified in the EUIA, the registration of a trade mark must be invalidated if the application that resulted in the registration of that trade mark was filed after a date provided for in the EUIA, or
(iii)for both the refusal of applications for trade marks, and the invalidation of the registration of trade marks, as provided for in points (i) and (ii);
(c)‘without the need for further action to be taken under the EUIA’, in relation to a designation of origin or geographical indication protected in the European Union immediately before exit day pursuant to an EUIA, means that the provisions in the EUIA providing for the designation of origin or geographical indication to be protected in the European Union did not require a request or application (however described) to be submitted by the contracting third country under the EUIA in relation to the protection of the designation of origin or geographical indication or require an assessment to be carried out under the EUIA in relation to the designation of origin or geographical indication.”]
Marginal Citations
M8The European Commission's register relating to designations of origin and geographical indications for agricultural products and foodstuffs (DOOR) is available electronically from https://ec.europa.eu/agriculture/quality/door/list.html. A hard copy of the register as it stood immediately before exit day is available for inspection free of charge at the offices of the Department for Environment, Food and Rural Affairs, Second Floor, Seacole Block, 2 Marsham Street, London SW1P 4DF.
M9OJ No. L 208, 24.7.1992, p. 1, repealed by Council Regulation (EC) No 510/2006 (OJ No. L 93, 31.3.2006, p. 12).
M10OJ No. L 93, 31.3.2006, p. 12, repealed by Regulation (EU) No 1151/2012 of the European Parliament and of the Council (OJ No. L 343, 14.12.2012, p. 1).