2019 No. 638

Exiting The European Union

Designs

Trade Marks

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

Made18th March 2019

Coming into force into force in accordance with regulation 1

The Secretary of State in exercise of powers conferred by section 8(1) of, paragraph 1 of Schedule 4 to, and paragraph 21(b) of Schedule 7 to, the European Union (Withdrawal) Act 2018 M1 and by section 36 of the Registered Designs Act 1949 M2 and by section 78 of the Trade Marks Act 1994 M3 and with the consent of the Treasury makes the following Regulations.

A draft of these Regulations has been approved by resolutions of both Houses of Parliament pursuant to paragraph 1(1) of Schedule 7 to the European Union (Withdrawal) Act 2018.

Annotations:

Marginal Citations

2018 c.16. See section 20(1) of that Act for a definition of “Minister of the Crown”.

1949 c.88.

1994 c.26.

Citation and commencementI11

These Regulations may be cited as the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 and come into force on exit day.

InterpretationI22

In these Regulations—

“1949 Act” means the Registered Designs Act 1949;
“1994 Act” means the Trade Marks Act 1994;
“2005 Regulations” means the Community Design Regulations 2005 M4;
“continuing unregistered Community design” has the meaning given by regulation 4(2);
“Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as amended by Council Regulation (EC) 1891/2006 of 18th December 2006 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs and by the Decision of the European Union of 5th December 2011 on the admission of the Republic of Croatia to the European Union;
“Registered Designs Rules” means the Registered Designs Rules 2006 M5; and
“Trade Marks Rules” means the Trade Marks Rules 2008 M6.

Amendments to the Design Regulation and the 2005 Regulations relating to the creation and application of the supplementary unregistered design etc.I33

1

The Design Regulation is amended by Part 1 of Schedule 1 to create the supplementary unregistered design.

2

The 2005 Regulations are amended by Part 2 of Schedule 1 to apply them to the supplementary unregistered design.

Unregistered Community designs existing immediately before F4IP completion dayI44

1

The amendments to the Design Regulation and the 2005 Regulations made by regulation 3 do not apply to an unregistered Community design which is protected under the Design Regulation immediately prior to F5IP completion day and remains protected on F5IP completion day.

2

That design is referred to as a “continuing unregistered Community design”.

3

The Design Regulation and the 2005 Regulations apply to a continuing unregistered Community design subject to—

a

as regards the Design Regulation, the modifications set out in Part 1 of Schedule 2; and

b

as regards the 2005 Regulations, the modifications set out in Part 2 of Schedule 2.

Certain registered Community designs and international designs to have effect under the 1949 ActI55

Schedule 3 contains amendments to the 1949 Act to make provision:

a

for certain registered Community designs to be treated as registered under the 1949 Act from F6IP completion day and about certain applications for registered Community designs made before F6IP completion day; and

b

for certain international registered designs designating the European Union to be treated as registered under the 1949 Act from F6IP completion day and about certain applications for international designs designating the European Union made before F6IP completion day.

International trade marksI66

Schedule 4 contains amendments to the 1994 Act to make provision for certain international trade marks protected in the European Union to be treated as registered trade marks under the 1994 Act from F7IP completion day and about certain applications for the protection of an international trade mark in the European Union and transformation applications made before F7IP completion day.

Fees payable in respect of re-registered designs, international re-registered designs, and comparable trade marks (IR)I77

Schedule 5 makes provision for the payment of fees in respect of—

a

a re-registered design (as that term is defined for the purposes of Schedule 1A to the 1949 Act as inserted by Schedule 3);

b

an international re-registered design (as that term is defined for the purposes of Schedule 1B to the 1949 Act as inserted by Schedule 3);

c

a comparable trade mark (IR) (as that term is defined for the purposes of Schedule 2B to the 1994 Act as inserted by Schedule 4).

Amendments to the Registered Designs RulesI88

Schedule 6, which contains amendments to the Registered Designs Rules, has effect.

Amendments to the Trade Marks RulesI99

Schedule 7, which contains amendments to the Trade Marks Rules, has effect.

Other amendments to legislationI1010

1

Schedule 8, which contains other amendments to legislation, has effect.

2

Any application or proceeding under the 1994 Act which was made or commenced before the coming into force of these Regulations shall be dealt with under the 1994 Act as it had effect before paragraph (1) comes into force.

RevocationI1111

The Community Designs (Designation of Community Design Courts) Regulations 2005 M7 are revoked.

Chris Skidmore Minister of State for Universities, Science, Research and Innovation Department for Business, Energy and Industrial Strategy

We consent to the making of these regulations

Rebecca HarrisJeremy Quin Two of the Lords Commissioners of Her Majesty's Treasury

SCHEDULE 1Amendments to the Design Regulation and 2005 Regulations relating to the creation and application of the supplementary unregistered design right etc.

Regulation 3

PART 1Design Regulation and supplementary unregistered designs

IntroductoryI121

1

The Design Regulation is amended as set out in this Part.

2

A reference in this Part to an Article is to an Article of the Design Regulation.

Substitution of Article 1 – supplementary unregistered designsI132

For Article 1, substitute—

Article 1Supplementary unregistered design
1
A design which complies with the conditions contained in this Regulation is referred to as a “supplementary unregistered design”.
2
A design shall be protected as a supplementary unregistered design, if made available to the public in the manner provided for in this Regulation.
3
But a design that is made available to the public before F8IP completion day is not protected under this Regulation.

Omission of Article 2 (European Union Intellectual Property Office)I143

Omit Article 2.

Amendments to Article 3 (definitions)I154

In Article 3, after point (c), insert—

d
‘qualifying country’ and ‘qualifying territory’ mean a country or territory designated by regulations made under Article 7.

Amendments to Article 4 (requirements for protection)I165

In Article 4(1), for “Community”, substitute “ supplementary unregistered ”.

Amendments to Article 5 (novelty)I176

In Article 5(1)—

a

in point (a)—

i

for “an”, substitute “ a supplementary ”;

ii

omit “Community”;

b

omit point (b).

Amendments to Article 6 (individual character)I187

In Article 6(1)—

a

in point (a)—

i

for “an”, substitute “ a supplementary ”;

ii

omit “Community”;

b

omit point (b).

Substitution of Article 7 (disclosure)I198

For Article 7, substitute—

Article 7Disclosure
1
Subject to paragraph 4, for the purposes of applying Articles 5 and 6, a supplementary unregistered design shall be deemed to have been made available to the public where paragraph 2 or 3 applies.
2
This paragraph applies where before F9IP completion day, the design was published or exhibited, used in trade or otherwise disclosed except where those events could not have become known in the normal course of business to the circles specialised in the sector operating within the European Union.
3
This paragraph applies where on or after F9IP completion day but before the date mentioned in Articles 5(1)(a) or 6(1)(a), the design was published or exhibited, used in trade or otherwise disclosed except where those events could not have become known in the normal course of business to the circles specialised in the sector operating within the United Kingdom, a qualifying country or a qualifying territory.
4
A design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.
5
For the purposes of this Regulation, a “qualifying country” is a country designated as such, and a “qualifying territory” is a territory designated as such, in Regulations made by the Secretary of State.
6
Regulations under paragraph 5 are to be made by statutory instrument and are subject to annulment in pursuance of a resolution of either House.

Amendments to Articles 8 to 10 (technical function, interconnections, public policy and morality)I209

In Articles 8, 9 and 10(1), for “Community”, in each place it appears, substitute “ supplementary unregistered ”.

Amendments to Article 11 (commencement and term of protection of the unregistered Community design)I2110

In Article 11—

a

in the heading—

i

before “unregistered”, insert “ supplementary ”;

ii

omit “Community”;

b

in point 1—

i

for “an”, substitute “ a supplementary ”;

ii

omit “Community”, the in the first place it appears;

iii

for “Community”, in the second place it appears, substitute “ United Kingdom, a qualifying country or a qualifying territory ”;

c

in paragraph 2, for “Community”, in both places it appears, substitute “ United Kingdom, a qualifying country or a qualifying territory ”.

Omission of Articles 12 and 13 (registered Community design: commencement, term of protection and renewal)I2211

Omit Articles 12 and 13.

Amendment to the heading of section 3 of Title 2 (right to the Community design)I2312

In the heading of section 3 of Title 2, for “Community”, substitute “ supplementary unregistered ”.

Amendments to Article 14 (right to the Community design)I2413

In Article 14—

a

for “Community”, in each place it appears, including in the heading, substitute “ supplementary unregistered ”;

b

in point 3, omit “or specified under national law”.

Amendments to Article 15 (claims relating to the entitlement to a Community design)I2514

In Article 15—

a

in the heading, for “Community”, substitute “ supplementary unregistered ”;

b

in point 1—

i

for “an”, substitute “ a supplementary ”;

ii

omit “Community”, in the first place it appears;

iii

omit from “, or a registered” to “name of,”;

iv

for “the Community”, substitute “ that ”;

c

in point 2, for “Community”, substitute “ supplementary unregistered ”;

d

in point 3—

i

omit “the date of publication of a registered Community design or”;

ii

for “an”, substitute “ a supplementary ”;

iii

omit “Community”, in the second place it appears;

iv

for “the unregistered Community”, substitute “ that ”;

v

omit “applied for or”;

e

omit point 4.

Omission of Articles 16 to 18 (effects of a judgment on entitlement, presumption, right to be cited)I2615

Omit Articles 16 to 18.

Amendment to the heading of section 4 of Title 2 (effects of the Community design)I2716

In the heading of section 4 of Title 2, for “Community”, substitute “ supplementary unregistered ”.

Amendments to Article 19 (rights conferred by the Community design)I2817

In Article 19—

a

in the heading, for “Community”, substitute “ supplementary unregistered ”;

b

in paragraph 1, for “registered Community”, substitute “ supplementary unregistered ”;

c

in point 2—

i

for “An”, substitute “ A supplementary ”;

ii

omit “Community”;

d

omit point 3.

Amendments to Article 20 (limitation of the rights conferred by a Community design)I2918

In Article 20—

a

in the heading and in point 1, for “Community”, substitute “ supplementary unregistered ”;

b

in point 2—

i

in the words before point (a), for “Community”, substitute “ supplementary unregistered ”;

ii

in points (a) and (b), for “Community”, substitute “ United Kingdom ”.

Amendments to Article 21 (exhaustion of rights)I3019

In Article 21—

a

for “Community”, in the first, second and fourth place it appears, substitute “ supplementary unregistered ”;

F10b

for “Community”, in the third place it appears, substitute “United Kingdom or the European Economic Area”.

Omission of Articles 22 and 23 (prior use and government use)I3120

Omit Articles 22 and 23.

Amendments to Article 24 (declaration of invalidity)I3221

In Article 24—

a

omit point 1;

b

in point 2—

i

for “Community”, in the first place it appears, substitute “ supplementary unregistered ”;

ii

for “the Community design”, substitute “ it ”;

iii

omit “or has been surrendered”;

c

in point 3—

i

for “Community”, in the first place it appears, substitute “ supplementary unregistered ”;

ii

omit “Community”, in the second place it appears.

Amendments to Article 25 (grounds for invalidity)I3322

In Article 25—

a

in point 1—

i

in the words before subparagraph (a), for “Community”, substitute “ supplementary unregistered ”;

ii

in point (c), omit “Community”;

iii

omit point (d);

iv

in point (e)—

aa

omit “Community law or”;

bb

omit “of the Member State”;

v

in point (f)—

aa

omit “the”, in the second place it appears;

bb

omit “of a Member State”;

vi

in point (g), for “a Member State”, substitute “ the United Kingdom, a qualifying country or a qualifying territory ”;

b

in point 2, for “Community”, substitute “ supplementary unregistered ”;

c

in point 3—

i

omit “(d),”;

ii

omit “the applicant for or”;

d

omit points 5 and 6.

Amendments to Article 26 (consequences of invalidity)I3423

In Article 26—

a

in point 1, for “Community”, substitute “ supplementary unregistered ”;

b

in point 2—

i

omit “the national provisions relating either to”;

ii

for “Community”, in both places it appears, substitute “ supplementary unregistered ”.

Amendment to the heading of Title 3: supplementary unregistered designs as objects of propertyI3524

In the heading of Title 3, for “Community”, substitute “ Supplementary Unregistered ”.

Amendments to Article 27: supplementary unregistered design rights as national design rightsI3625

In Article 27—

a

for the heading, substitute “ Property right ”;

b

for points 1 to 4, substitute “ A supplementary unregistered design is personal property (in Scotland, incorporeal moveable property) which subsists in accordance with this Regulation. ”.

Omission to Articles 28 to 31 (transfer, rights in rem, levy and insolvency)I3726

Omit Articles 28 to 31.

Article 32 (licensing)I3827

In Article 32—

a

in point 1—

i

for “Community”, in the first place it appears, substitute “ supplementary unregistered ”;

ii

omit “for the whole or part of the Community”;

b

in points 2 to 4, for “Community”, in each F11place it appears, substitute “ supplementary unregistered ”;

c

omit point 5.

Omission of Articles 33 to 78 (general provisions)I3928

Omit Articles 33 to 78.

Amendment to the heading of Title 9 (jurisdiction and procedure in legal actions relating to Community designs)I4029

In the heading of Title 9, for “Community”, substitute “ Supplementary Unregistered ”.

Omission of Article 79 (application of the Convention on jurisdiction and enforcement)I4130

Omit Article 79.

Amendment to the heading of section 2 (disputes concerning infringement and validity of designs) of Title 9I4231

In the heading of section 2 of Title 9, for “Community”, substitute “ supplementary unregistered ”.

Omission of Article 80 (Community design courts)I4332

Omit Article 80.

Substitution of Article 81 (The “design court” – jurisdiction over infringement and validity)I4433

For Article 81, substitute—

Article 81The “design court” – Jurisdiction over infringement and validity
1
In this Regulation, “design court” means—
a
in England and Wales, the High Court;
b
in Scotland, the sheriff court and the Court of Session; and
c
in Northern Ireland, the county court and the High Court.
2
The design court has exclusive jurisdiction—
a
for infringement actions and actions in respect of threatened infringement of supplementary unregistered designs;
b
for actions for declaration of non-infringement of supplementary unregistered designs;
c
for actions for a declaration of invalidity of a supplementary unregistered design;
d
for counterclaims for a declaration of invalidity of F12... a supplementary unregistered design raised in connection with actions under (a).

Omission of Articles 82 and 83: jurisdictionI4534

Omit Articles 82 and 83.

Amendments to Article 84 (action or counterclaim for a declaration of invalidity of a supplementary unregistered design)I4635

In Article 84—

a

in the heading and in paragraph 1, for “Community”, substitute “ supplementary unregistered ”;

b

in point 2—

i

before “(4)”, insert “ and ”;

ii

omit “and (5)”;

c

in point 3—

i

for “Community”, substitute “ supplementary unregistered ”;

ii

for “conditions” to “situated”, substitute “ laws applying to the design courts ”;

d

in point 4, for “Community”, substitute “ supplementary unregistered ”.

Amendments to Article 85 (presumption of validity – defence as to the merits)I4736

In Article 85—

a

omit point 1;

b

in point 2—

i

for “an”, in the third place it appears, substitute “ a supplementary ”;

ii

omit “Community”, in the first and second places it appears;

iii

for “Community”, in the third and fourth places it appears, substitute “ supplementary unregistered ”.

Amendments to Article 86 (judgments of invalidity)I4837

In Article 86—

a

in point 1—

i

in the words before point (a)—

aa

omit “Community”, in the first place it appears;

bb

for “Community”, in the second place it appears, substitute “ supplementary unregistered ”;

ii

in points (a) and (b), for “the Community”, in each place it appears, substitute “ that ”;

b

omit points 2 to 5.

Omission of Articles 87 and 88 (effect of judgment on invalidity and applicable law)I4938

Omit Articles 87 and 88.

Amendments to Article 89 (sanctions in actions for infringement)I5039

In Article 89—

a

in point 1—

i

in the words before point (a)—

aa

omit “Community”, in the first place it appears;

bb

for “Community”, in the second place it appears, substitute “ supplementary unregistered ”;

ii

in point (a), for “the Community”, substitute “ that ”;

iii

in point (d), omit from “the law” to “international”;

b

omit point 2.

Amendments to Article 90 (provisional measures, including protective measures)I5140

In Article 90—

a

in point 1—

i

omit “of a Member State”;

ii

omit “Community”, in the first place it appears;

iii

for “Community”, in the second place it appears, substitute “ supplementary unregistered ”;

iv

omit from “under” to the end of the sentence;

b

in point 2, for “Community”, substitute “ supplementary unregistered ”;

c

in point 3—

i

omit “Community”;

ii

omit from “whose” to “(4)”;

iii

omit from “, which” to “jurisdiction”.

Omission of Articles 91 and 92 (specific rules on related actions and appeals)I5241

Omit Articles 91 and 92.

Amendment to the heading of section 3 (other disputes concerning Community designs) of Title 9I5342

In the heading of section 3 of Title 9, for “Community”, substitute “ supplementary unregistered ”.

Omission of Articles 93 (supplementary provisions on the jurisdiction of national courts)I5443

Omit Article 93.

Amendments to Article 94 (obligation of the national court)I5544

In Article 94—

a

for “national”, substitute “ design ”, in the heading and the other place it appears;

b

for “Community”, substitute “ supplementary unregistered ”.

Omission of Title 10 (effects on the laws of the Member States)I5645

Omit Title 10.

Omission of Title 11 (supplementary provisions regarding the Office)I5746

Omit Title 11.

Omission of Title 11A (international registration)I5847

Omit Title 11A.

Omission of Articles 107 to 109 (implementing regulation, procedure of Boards of Appeal and Committee)I5948

Omit Articles 107 to 109.

Omission of Article 110 (transitional provision)I6049

In Article 110—

a

in point 1—

i

omit from “Until” to “subject,”;

ii

for “Community”, substitute “ supplementary unregistered ”;

b

omit point 2.

Omission of Article 110a (provisions relating to the enlargement of the Community)I6150

Omit Article 110a.

Omission of Article 111 (entry into force)I6251

Omit paragraphs 2 and 3.

Omission of text after Title 12I6352

After Title 12, omit “This Regulation shall be binding it its entirety and directly applicable in all Member States.”.

PART 22005 Regulations and the supplementary unregistered design right

I6453

The 2005 Regulations are amended as follows.

Regulation 1: interpretationI6554

In regulation 1—

a

for the definitions in paragraph (2), substitute—

“design court” has the meaning given by Article 81 of the Design Regulation;
“Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as amended by regulation 4(1) of, and Part 1 of Schedule 1 to, the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2018; and
“supplementary unregistered design” has the meaning given by Article 1 of the Design Regulation.

b

omit paragraph (3).

Regulation 1A: infringement proceedingsI6655

In regulation 1A—

a

in paragraph (1) omit “Community”, in both places it appears;

b

in paragraph (2)—

i

for “paragraphs (3) to”, substitute “ paragraph ”;

ii

for “Community”, in both places where it appears, substitute “ supplementary unregistered ”;

c

omit paragraphs (3) and (4);

d

in paragraph (5)—

i

for “an”, in both places where it appears before “unregistered”, substitute “a supplementary”;

ii

omit “Community”, in both places where it appears.

Regulation 1B: order for delivery upI6756

In regulation 1B—

a

in paragraph (1)(b)—

i

for “Community”, in the first and second places where it appears, substitute “ supplementary unregistered ”;

ii

omit “Community”, in the third place where it appears;

iii

before “court”, in the second place where it appears, insert “ design ”;

b

in paragraph (2), before “court”, in both places where it appears, insert “ design ”;

c

in paragraph (4), for “Community”, substitute “ supplementary unregistered ”;

d

in paragraph (8), before “court”, insert “ design ”.

Regulation 1C: order for disposalI6857

In regulation 1C—

a

in paragraph (1)—

i

in the words before sub-paragraph (a), omit “Community”;

ii

in sub-paragraph (a), for “Community”, substitute “ supplementary unregistered ”;

iii

in sub-paragraph (b), before “court”, insert “ design ”;

b

in paragraph (2)—

i

before “court”, insert “ design ”;

ii

for “Community”, substitute “ supplementary unregistered ”;

c

in paragraphs (3) and (4), before “court”, insert “ design ”.

Regulation 1D: meaning of “infringing article”I6958

In regulation 1D—

a

in paragraphs (2), (3)(b) and (4), for “Community”, in each place where it appears, substitute “ supplementary unregistered ”;

b

in paragraph (5), for the words from “an enforceable” to the end substitute “ anything which forms part of retained EU law as a result of section 3 or 4 of the European Union (Withdrawal) Act 2018 M8 ”.

Regulation 2: unjustified threats: threats of infringement proceedingsI7059

In regulation 2(1), for “Community”, in both places where it appears, substitute “ supplementary unregistered ”.

Regulation 2B: unjustified threats: permitted communicationsI7160

In regulation 2B—

a

in paragraph (2), for “Community”, in each place where it appears, substitute “ supplementary unregistered ”;

b

in paragraph (3), before “court”, insert “ design ”;

c

in paragraph (5)—

i

omit sub-paragraphs (a)(i) and (ii);

ii

in sub-paragraph (a)(iii)—

aa

for “an”, substitute “ a supplementary ”;

bb

omit “Community”;

iii

in sub-paragraph (b), for “Community”, in both places where it appears, substitute “ supplementary unregistered ”.

Regulation 2C, 2E and 2F: unjustified threats: generalI7261

1

In regulation 2C(2), for “Community”, substitute “ supplementary unregistered ”.

2

Omit regulation 2E.

3

In regulation 2F, for “Community”, substitute “ supplementary unregistered ”.

Regulation 3: false representationI7362

Omit regulation 3.

Regulation 4: privileged communicationsI7463

In regulation 4—

a

in paragraph (1), for “any”, in the second place where it appears, substitute “ a supplementary unregistered ”;

b

for paragraph (3), substitute—

3
In paragraph (2) “professional designs representative” means a person whose name appears on the special list of professional representatives for design matters maintained by the European Union Intellectual Property Office referred to in Article 78(4) of Council Regulation (EC) 6/2002 of 12th December 2001 on Community designs as it had effect immediately before F13IP completion day.

Regulation 5 and the Schedule: services of the CrownI7564

1

In regulation 5—

a

in the heading, for “Community”, substitute “ supplementary unregistered ”;

b

omit “registered Community designs and”;

c

before “unregistered”, insert “ supplementary ”;

d

omit “Community”, in the second place where it appears.

2

In the Schedule—

a

for “Community”, in each place where it appears, substitute “ supplementary unregistered ”;

b

before “court”, in each place where it appears, insert “ design ”;

c

omit paragraph 5(6).

SCHEDULE 2Continuing unregistered Community designs

Regulation 4

PART 1Design Regulation and continuing unregistered Community designs

I761

1

The Design Regulation applies to a continuing unregistered community design subject to the modifications in this Part.

2

A reference in this Part to an Article is to an Article of the Design Regulation.

Article 1: continuing unregistered Community designI772

The Design Regulation has effect in relation to a continuing unregistered community design subject to the modifications in this Schedule.

I783

In Article 1—

a

in the heading, before “Community”, insert “ Continuing unregistered ”;

b

in point 1, before “Community” and within the inverted commas, insert “ continuing unregistered ”;

c

in point 2(a)—

i

for “an”, substitute “ a ”;

ii

before “unregistered” and within the inverted commas, insert “ continuing ”;

d

omit points 2(b) and 3.

Article 2: OfficeI794

Omit Article 2.

Article 3: definitionsI805

In Article 3, after the definition of “design”, insert “ (ab) “European Union” means the countries that were part of the European Union immediately before F14IP completion day; ”.

Article 4: requirements for protectionI816

In Article 4(1), before “Community”, insert “ continuing unregistered ”.

Article 5: noveltyI827

In Article 5(1)—

a

before “design” in the first place where it appears, insert “ continuing unregistered Community ”

b

in point (a)—

i

omit “in the case of an unregistered Community design,”;

ii

for “an”, substitute “ a continuing ”;

c

omit point (b).

Article 6: individual characterI838

In Article 6(1)—

a

before “design” in the first place where it appears insert “ continuing unregistered Community ”

b

in point (a)—

i

omit “in the case of an unregistered Community design,”;

ii

for “an”, substitute “ a continuing ”;

c

omit point (b).

Article 7: disclosureI849

In Article 7—

a

in point 1—

i

after “a”, in the first place where it appears, insert “ continuing unregistered Community ”;

ii

omit “following registration or otherwise,”;

iii

omit “or in Articles 5(1)(b) and 6(1)(b), as the case may be,”;

iv

for “Community”, where it appears after “operating within the”, substitute “ European Union ”;

b

omit points 2 and 3.

Articles 8 to 10: technical function, interconnections, public policy, morality and protectionI8510

In Articles 8, 9 and 10(1), before “Community”, in each place where it appears, substitute “ continuing unregistered ”.

Article 11: commencement and term of protectionI8611

In Article 11—

a

in point 1—

i

for “an”, substitute “ a continuing ”;

ii

for “Community”, in the second place where it appears, substitute “ European Union ”;

b

in point 2, for “Community”, in both places in which it appears, substitute “ European Union ”.

Articles 12 and 13: registered Community design: commencement, term of protection and renewalI8712

Omit Articles 12 and 13.

Article 14: right to the Community designI8813

In Article 14—

a

before “Community”, in each place where it appears including in the heading, insert “ continuing unregistered ”;

b

in point 3, omit “or specified under national law”.

Article 15: claims relating to the entitlement to a Community designI8914

In Article 15—

a

in the heading, for before “Community”, insert “ continuing unregistered ”;

b

in point 1—

i

for “an”, substitute “ a continuing ”;

ii

omit “, or a registered Community design has been applied for or registered in the name of,”;

iii

for “the Community”, substitute “ that ”;

c

in point 2, before “Community”, insert “ continuing unregistered ”;

d

in point 3—

i

omit “the date of publication of a registered Community design or”;

ii

for “an”, substitute “ a continuing ”;

iii

for “the unregistered Community”, substitute “ that ”;

iv

omit “applied for or”;

e

omit point 4.

Articles 16 to 18: effects of a judgment on entitlement, presumptions, right to be citedI9015

Omit Articles 16 to 18.

Article 19: rights conferred by the Community designI9116

In Article 19—

a

in the heading, before “Community”, insert “ continuing unregistered ”;

b

in point 1, for “registered”, substitute “ continuing unregistered ”;

c

in point 2, for “An”, where it first appears, substitute “ A continuing ”;

d

omit point 3.

Article 20: limitation of the rights conferred by a Community designI9217

In Article 20—

a

in the heading and in point 1, before “Community”, insert “ continuing unregistered ”;

b

in point 2—

i

in the words before point (a), before “Community”, insert “ continuing unregistered ”;

ii

in points (a) and (b), for “Community”, substitute “ United Kingdom ”.

Article 21: exhaustion of rightsI9318

In Article 21—

a

before “Community”, in the first, second and fourth places where it appears, insert “ continuing unregistered ”;

b

before “Community”, in the third place where it appears, insert “ United Kingdom or the ”.

Articles 22 and 23: prior use and government useI9419

Omit Articles 22 and 23.

Article 24: declaration of invalidityI9520

In Article 24—

a

omit point 1;

b

in point 2—

i

before “Community”, in both places where it appears, insert “ continuing unregistered ”;

ii

omit “or has been surrendered”;

c

in point 3—

i

before “Community”, in the first place where it appears, insert “ continuing unregistered ”;

ii

omit “Community”, in the second place where it appears.

Article 25: grounds for invalidityI9621

In Article 25—

a

in point 1—

i

in the words before subparagraph (a), before “Community”, insert “ continuing unregistered ”;

ii

in point (c), omit “Community”;

iii

omit point (d);

iv

in point (e)—

aa

omit “Community law or”;

bb

omit “of the Member State”;

v

in point (f)—

aa

omit “the”, in the second place where it appears;

bb

omit “of a Member State”;

vi

in point (g), for “a Member State”, substitute “ the European Union ”;

b

in point 2, before “Community”, insert “ continuing unregistered ”;

c

in point 3—

i

omit “(d),”;

ii

omit “applicant for or”;

d

omit points 5 and 6.

Article 26: consequences of invalidityI9722

In Article 26—

a

in point 1, before “Community”, insert “ continuing unregistered ”;

b

in point 2, in the words before subparagraph (a)—

i

omit “the national provisions relating either to”;

ii

before “Community”, in both places where it appears, insert “ continuing unregistered ”.

Article 27: Community design rights as national design rightsI9823

In Article 27—

a

for the heading, substitute “ Property right ”;

b

for points 1 to 4, substitute “ A continuing unregistered Community design right is personal property (in Scotland, incorporeal moveable property) which subsists in accordance with this Regulation. ”.

Articles 28 to 31: transfer, rights in rem, levy and insolvencyI9924

Omit Articles 28 to 31.

Article 32: licensingI10025

In Article 32—

a

in point 1—

i

before “Community” in the first place where it appears, insert “ continuing unregistered ”;

ii

omit “for the whole or part of the Community”;

b

in points 2 to 4, before “Community”, in every place where it appears, insert “ continuing unregistered ”;

c

omit points 5.

Articles 33 to 78: general provisionsI10126

Omit Articles 33 to 78.

Article 79: Application of the Convention on jurisdiction and enforcementI10227

Omit Article 79.

Article 80: Community design courtsI10328

Omit Article 80.

Article 81: The “design court” – jurisdiction over infringement and validityI10429

For Article 81, substitute—

Article 81The “design court” – Jurisdiction over infringement and validity
1
In this Regulation, “design court” means—
a
in England and Wales, the High Court;
b
in Scotland, the sheriff court and the Court of Session; and
c
in Northern Ireland, the county court and the High Court.
2
The design court has exclusive jurisdiction—
a
for infringement actions and actions in respect of threatened infringement of F15continuing unregistered F16Community designs;
b
for actions for declaration of non-infringement of F15continuing unregistered F16Community designs;
c
for actions for a declaration of invalidity of a F15continuing unregistered F16Community design;
d
for counterclaims for a declaration of invalidity of a continuing F17... unregistered F18Community design raised in connection with actions under (a).

Articles 82 and 83I10530

For Articles 82 to 83 substitute—

Article 82Pending proceedings concerning a continuing unregistered Community design
1
This paragraph applies where on F19IP completion day a continuing unregistered Community design is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 80 of the Design Regulation as it had effect immediately before F19IP completion day.
2
Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Title IX of the Design Regulation (with the exception of Articles 86(2), (3), (4) and (5) and 91) shall continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from F19IP completion day.
3
Where the pending proceedings involve a claim for infringement or for threatened infringement of a continuing unregistered Community design, without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the design, the design court may grant an injunction to prohibit unauthorised use of the continuing unregistered Community design.
4
For the purposes of this paragraph proceedings are treated as pending on F19IP completion day if they were instituted but not finally determined before F19IP completion day.
Article 83Effect of injunction protecting an unregistered Community design
1
This paragraph applies where immediately before F19IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe a continuing unregistered Community design (a “relevant injunction”).
2
Subject to any order of the court to the contrary, a relevant injunction will continue to have effect and be enforceable to prohibit the performance of acts which infringe or would infringe the right in a continuing unregistered Community design to the same extent as before F19IP completion day.

Article 84: action or counterclaim for a declaration of invalidity of a Community designI10631

In Article 84—

a

in the heading and in point 1, before “Community”, insert “ continuing unregistered ”;

b

in point 2—

i

before “(4)”, insert “ and ”;

ii

omit “and (5)”;

c

in point 3—

i

before “Community”, insert “ continuing unregistered ”;

ii

for “conditions” to “situated”, substitute “ laws applying to the design courts ”;

d

in point 4, before “Community”, insert “ continuing unregistered ”.

Article 85: presumption of validity – defence as to the meritsI10732

In Article 85—

a

omit point 1;

b

in point 2—

i

for “an”, in the second place where it appears, substitute “ a continuing unregistered ”;

ii

omit “Community”, in the second place where it appears;

iii

before “Community”, in the third and fourth places where it appears, insert “ continuing unregistered ”.

Article 86: judgments of invalidityI10833

In Article 86—

a

in point 1—

i

in the words before point (a)—

aa

omit “Community”, in the first place it appears;

bb

before “Community”, in the second place it appears, insert “ continuing unregistered ”;

b

in points (a) and (b), for “Community”, in each place where it appears, substitute “ that ”;

c

omit points 2 to 5.

Articles 87 and 88: sanctions in actions for infringementI10934

Omit Articles 87 and 88.

Article 89: sanctions in actions for infringementI11035

In Article 89—

a

in point 1—

i

in the words before subparagraph (a)—

aa

omit “Community”, in the first place it appears;

bb

before “Community”, in the second place it appears, insert “ continuing unregistered ”;

ii

in point (a), for “the Community”, substitute “ that ”;

iii

in point (d), omit from “the law” to “international”;

b

omit point 2.

Article 90: provisional measures, including protective measuresI11136

In Article 90—

a

in point 1—

i

omit “of a Member State”;

ii

omit “Community”, in the first place it appears;

iii

before “Community”, in the second place it appears, insert “ continuing unregistered ”;

iv

omit from “under the law” to the end of the sentence;

b

in point 2, before “Community”, insert “ continuing unregistered ”;

c

in point 3—

i

omit “Community”;

ii

omit from “whose” to “(4)”;

iii

omit from “, which” to “jurisdiction”.

Articles 91 and 92: specific rules on related actions and further appealsI11237

Omit Articles 91 and 92.

Article 93: supplementary provisions on the jurisdiction of national courtsI11338

Omit Article 93.

Article 94: obligation of the national courtI11439

In Article 94—

a

for “national”, in the heading and the other time it appears, substitute “ design ”;

b

after “a”, the second times it appears, substitute “ continuing unregistered Community ”.

Title 10I11540

Omit Title 10.

Title 11: supplementary provisions concerning the OfficeI11641

Omit Title 11.

Title 11A: international registrationI11742

Omit Title 11A.

Articles 107 to 109: implementing regulation, procedure of Boards of Appeal and CommitteeI11843

Omit Articles 107 to 109.

Article 110: transitional provisionI11944

In Article 110—

a

in point 1—

i

omit from “Until” to “subject,”;

ii

before “Community”, insert “ continuing unregistered ”;

b

omit point 2.

Article 110a: provisions relating to the enlargement of the CommunityI12045

In Article 110a—

a

in point 1—

i

for “ “new Member States(s)”” substitute “ “specified countries” ”;

ii

before “Community”, the first time it appears, insert “ continuing unregistered ”;

iii

omit “or applied for”;

iv

for “Member States”, the second time it appears, substitute “ specified countries ”;

v

omit from “in order” to the end of the sentence;

b

omit point 2;

c

in point 3—

i

before “Community”, insert “ continuing unregistered ”;

ii

for “a new Member State”, substitute “ one or more specified countries ”;

d

in point 4—

i

omit “the applicant or”;

ii

for “a new Member State”, substitute “ one or more specified countries ”;

iii

before “Community”, insert “ continuing unregistered ”;

iv

after “Article 25(1) omit “(d)”.

e

in point 5—

i

omit the first sentence;

ii

for “Community”, the second time it appears, substitute “ European Union ”;

iii

for “an”, substitute “ a continuing ”.

Article 111: entry into forceI12146

Omit paragraphs 2 and 3.

Text after Title 12I12247

After Title 12, omit “This Regulation shall be binding it its entirety and directly applicable in all Member States.”.

PART 22005 Regulations and continuing unregistered Community designs

I12348

The 2005 Regulations apply to continuing unregistered community designs subject to the following modification.

Regulation 1: interpretationI12449

In regulation 1—

a

for the definitions in paragraph (2), substitute—

“design court” has the meaning given by Article 81 of the Design Regulation;
“Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as amended by regulation 5 of, and Part 1 of Schedule 2 to, the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2018; and
“continuing unregistered Community design” has the meaning given by Article 1 of the Design Regulation.

b

omit paragraph (3).

Regulation 1A: infringement proceedingsI12550

In regulation 1A—

a

in paragraph (1) omit “Community”, in both places where it appears;

b

in paragraph (2)—

i

for “paragraphs (3) to”, substitute “ paragraph ”;

ii

before “Community”, in both places where it appears, insert “ continuing unregistered ”;

c

omit paragraphs (3) and (4); and

d

in paragraph (5), for “an”, in both places where it appears, substitute “ a continuing ”.

Regulation 1B: order for delivery upI12651

In regulation 1B—

a

in paragraph (1)(b)—

i

before “Community”, in the first and second places where it appears, insert “ continuing unregistered ”;

ii

omit “Community”, in the third place where it appears;

iii

before “court”, in the second place where it appears, insert “ design ”;

b

in paragraph (2), before “court”, in both places where it appears, insert “ design ”;

c

in paragraph (4), before “Community”, insert “ continuing unregistered ”;

d

in paragraph (8), before “court”, insert “ design ”.

Regulation 1C: order for disposalI12752

In regulation 1C—

a

in paragraph (1)—

i

in the words before paragraph (a), omit “Community”;

ii

in paragraph (a), before “Community”, insert “ continuing unregistered ”;

iii

in sub-paragraph (b), before “court”, insert “ design ”;

b

in paragraph (2)—

i

before “court, insert “ design ”;

ii

before “Community”, insert “ continuing unregistered ”;

c

in paragraphs (3) and (4), before “court”, in each place where it appears, insert “ design ”.

Regulation 1D: meaning of “infringing article”I12853

In regulation 1D—

a

in paragraph (2), before “Community”, insert “ continuing unregistered ”;

b

in paragraph (3)(b)—

i

before “Community”, in the first place where it appears, insert “ continuing unregistered ”;

ii

omit “Community”, in the second place where it appears;

c

in paragraph (4), before “Community, in both places where it appears, insert “ continuing unregistered ”;

d

in paragraph (5), for “an enforceable” to the end of the sentence, insert “ anything which forms part of retained EU law as a result of section 3 or 4 of the European Union (Withdrawal) Act 2018 M9. ”.

Regulation 2: unjustified threats: threats of infringement proceedingsI12954

In regulation 2(1), before “Community”, in both places where it appears, insert “ continuing unregistered ”.

Regulation 2B: unjustified threats: permitted communicationsI13055

In regulation 2B—

a

in paragraph (2), before “Community”, in each place where it appears, insert “ continuing unregistered ”;

b

in paragraph (3), before “court”, insert “ design ”;

c

in paragraph (5)—

i

omit sub-paragraphs (a)(i) and (ii);

ii

in sub-paragraph (b), before “Community”, in both places where it appears, insert “ continuing unregistered ”.

Regulation 2C, 2E and 2F: unjustified threats: generalI13156

1

In regulation 2C(2), before “Community”, insert “ continuing unregistered ”.

2

Omit regulation 2E.

3

In regulation 2F, before “Community”, insert “ continuing unregistered ”.

Regulation 3: false representationI13257

Omit regulation 3.

Regulation 4: privileged communicationsI13358

In regulation 4—

a

in paragraph (1), for “any”, in the second place where it appears, substitute “ a continuing unregistered Community ”;

b

for paragraph (3), substitute—

3
In paragraph (2) “professional designs representative” means a person whose name appears on—
a
the special list of professional representatives for design matters maintained by the European Union Intellectual Property Office referred to in Article 78(4) of Council Regulation (EC) 6/2002 of 12th December 2001 on Community designs as it had effect immediately before F20IP completion day.

Regulation 5 and the Schedule: services of the CrownI13459

1

In regulation 5—

a

in the heading, before “Community”, insert “ continuing unregistered ”;

b

for “registered Community designs and” substitute “ continuing ”.

2

In the Schedule—

a

before “Community”, in each place where it appears, insert “ continuing unregistered ”;

b

before “court”, in each place where it appears, insert “ design ”;

c

omit paragraph 5(6).

SCHEDULE 3Amendments to the 1949 Act to make provision for certain registered Community designs and International designs to be treated as registered under the 1949 Act from F1IP completion day and about certain applications for registered Community designs made before F1IP completion day

Regulations 5

Annotations:

Amendments (Textual)

Words in Sch. 3 heading 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), 21(a)

I1351

The 1949 Act is amended as follows.

I1362

Before section 13, insert—

Application of the Act to certain registered Community designs12A
Schedule 1A makes provision—
a
for registered Community designs (including certain designs whose registration has expired or which have been removed from the register) to be treated as registered under this Act with effect from F21IP completion day, and
b
about certain applications for registered Community designs made before F21IP completion day.
Application of the Act to certain international designs12B
Schedule 1B makes provision—
a
for certain designs which are registered in the international register maintained by the International Bureau of the World Intellectual Property Organization in respect of which the European Union is designated (including certain designs whose registration has expired) to be treated as registered under this Act with effect from F21IP completion day, and
b
about certain applications made before F21IP completion day to register in the international register maintained by the International Bureau of the World Intellectual Property Organization a design in respect of which the European Union is designated.

I1373

After Schedule 1, insert—

SCHEDULE 1AEUROPEAN COMMUNITY REGISTERED DESIGNS
Section 12A
PART 1Existing registered Community designs
Designs registered as Community designs to be treated as registered under the Act1
1
A design which, immediately before F22IP completion day, is entered in the RCD register and has been published in the Community Designs Bulletin as mentioned in Article 73(1) (an “existing registered Community design”) is to be treated on and after F22IP completion day as if an application for its registration had been made, and it had been registered, under this Act.
2
A registered design which comes into being by virtue of sub-paragraph (1) is referred to in this Schedule as a “re-registered design”.
3
This Act applies to a re-registered design as it applies to other registered designs except as otherwise provided in this Schedule.
4
For the purposes of this Act—
a
the date of registration of a re-registered design is the date on which the existing registered Community design from which the re-registered design derives was treated as registered under the Community Design Regulation, and
b
the date of the application of a re-registered design is the date treated, under Article 38, as the date of filing of the application for the registration of the existing registered Community design from which the re-registered design derives.
5
Nothing in this Act authorises the imposition of a fee, or the making of provision by rules or regulations which authorises the imposition of a fee, in respect of any matter relating to a re-registered design (see instead provision made by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018).
6
The following provisions of this Act do not apply to a re-registered design—
a
section 7A(6);
b
section 18.
7
In this Schedule—
a
“the RCD register” means the register of registered Community designs maintained under Article 72;
b
“the Community Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as it had effect immediately before F22IP completion day.
Entries to be made in the register in relation to designs treated as registered under this Act2
1
The registrar must as soon as reasonably practicable on or after F22IP completion day enter a re-registered design in the register of designs.
2
The obligation under section 22(1) (inspection of registered designs) applies to a re-registered design on and after the day on which the re-registered design is entered in the register (notwithstanding that no certificate of registration has been granted).
Opt out3
1
Subject to sub-paragraph (2), the proprietor of an existing registered Community design may at any time on or after F22IP completion day serve a notice on the registrar that the design is not to be treated as if it had been registered under this Act.
2
A notice under sub-paragraph (1) may not be served where on or after F22IP completion day—
a
the re-registered design which derives from the existing registered Community design (or any interest in it)—
i
has been assigned or otherwise transferred except by an assent by personal representatives, or
ii
has had an interest created in it by a mortgage, licence or other instrument; or
b
proceedings based on the re-registered design have been initiated by the proprietor or with the proprietor's consent.
3
A notice served under sub-paragraph (1) must—
a
identify the existing registered Community design; and
b
include the name and address of any person having an interest in the existing registered Community design which had effect before F22IP completion day in the United Kingdom and in respect of which an entry was recorded in the RCD register.
4
A notice under sub-paragraph (1) is of no effect unless the proprietor in that notice certifies that any such person—
a
has been given not less than three months' notice of the proprietor's intention to serve such a notice; or
b
is not affected by, or if affected consents to, the notice.
5
Where a notice has been served under sub-paragraph (1)—
a
the design ceases with effect from F22IP completion day to be treated as if it had been registered under this Act,
b
the obligation imposed on the registrar under paragraph 2 (entries to be made in the register in relation to designs treated as registered under this Act) ceases to have effect, and
c
the registrar must make any necessary amendments to the register.
Effect of claim of priority4
1
This paragraph applies where a right of priority has been claimed in accordance with Article 42 in respect of an existing registered Community design.
2
The proprietor of the re-registered design which derives from the existing registered Community design is to be treated on and after F22IP completion day as having the same claim of priority.
3
Accordingly, the relevant date for the purposes of establishing whether (or to what extent) the re-registered design is new or has individual character is the date of filing of the application for registration of a design in a convention country which formed the basis for the claim of priority.
Unregistered pre-exit transfers5
1
This paragraph applies where immediately before F22IP completion day there is a transfer of an existing registered Community design that has not been entered in the RCD register (a “relevant transfer”).
2
Section 19 (registration of assignments, etc.) applies in relation to a relevant transfer as if it were an assignment of the re-registered design which derives from the existing registered Community design which has been transferred.
Pre-exit licences to continue to have effect in the United Kingdom6
1
This paragraph applies where immediately before F22IP completion day an existing registered Community design is the subject of a licence which—
a
authorises the doing of acts in the United Kingdom which would otherwise infringe an existing registered Community design, and
b
does not expire on F22IP completion day (a “relevant licence”).
2
Subject to any agreement to the contrary between the licensee and the licensor, a relevant licence continues to authorise the doing of acts which would otherwise infringe the right in the re-registered design which derives from the existing registered Community design.
3
Sub-paragraph (2) is subject to the terms on which the relevant licence was granted, subject to such modifications as are necessary for their application in the United Kingdom.
4
Section 19 (registration of assignments, etc.) applies in relation to a relevant licence as if it were a licence of the re-registered design deriving from the existing registered Community design which is subject to the relevant licence, subject to the following modification.
5
Where immediately before F22IP completion day there is an entry in the RCD register relating to the relevant licence, section 19(5) does not apply to the licence until after the expiry of the period of 12 months beginning with the day after that on which F22IP completion day falls.
Security interests in existing registered Community designs7
1
This paragraph applies where immediately before F22IP completion day an existing registered Community design is the subject of an interest which has been granted as security and does not expire on F22IP completion day (a “relevant security interest”).
2
References to the existing registered Community design in any document which grants or refers to the relevant security interest are to be read as including references to the re-registered design which derives from the existing registered Community design.
3
Section 19 (registration of assignments, etc.) applies in relation to a relevant security interest as if it were a security interest granted in respect of the re-registered design deriving from the existing registered Community design which is subject to the relevant security interest, subject to the following modification.
4
Where immediately before F22IP completion day there is an entry in the RCD register relating to the relevant security interest, section 19(5) does not apply to the document granting the interest until after the expiry of the period of 12 months beginning with the day after that on which F22IP completion day falls.
Continuity of rights in relation to an existing registered Community design8
1
References to an existing registered Community design or the registration of an existing registered Community design in any document entered into before F22IP completion day shall, unless there is evidence that the document was not intended to have effect in the United Kingdom, be read on and after F22IP completion day as including references to the re-registered design or the registration of the re-registered design which derives from the existing registered Community design.
2
Subject to any agreement to the contrary, a consent granted before F22IP completion day by the proprietor of an existing registered Community design to the doing on or after F22IP completion day of an act in the United Kingdom which would otherwise infringe the right in the re-registered design which derives from the existing registered Community design is to be treated for the purposes of section 7A as a consent to the doing of that act granted by the registered proprietor of the re-registered design.
Pending proceedings concerning an existing registered Community design9
1
This paragraph applies where on F22IP completion day an existing registered Community design is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 80 (“a Community design court”).
2
Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Title IX of the Community Design Regulation (with the exception of Articles 86(2), (4), (5) and 91) shall continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from F22IP completion day.
3
Where the pending proceedings involve a claim for infringement or for threatened infringement of an existing registered Community design, without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the existing registered Community design, the Community design court may grant an injunction to prohibit unauthorised use of the re-registered design which derives from the existing registered Community design.
4
Where the pending proceedings involve a counterclaim for a declaration of invalidity in relation to an existing registered Community design, the Community design court may declare the registration of the re-registered design which derives from the existing registered Community design to be invalid (wholly or in part).
5
Where the registration of a re-registered design is declared invalid to any extent, the registration shall to that extent be treated as having been invalid from the date of registration or from such other date as the court may direct.
6
For the purposes of this paragraph proceedings are treated as pending on F22IP completion day if they were instituted but not finally determined before F22IP completion day.
F23Existing registered Community design: effect of invalidity9A
1
This paragraph applies where, on IP completion day, an existing registered Community design is the subject of proceedings under Article 25 (Grounds for invalidity) which have been instituted but not finally determined before IP completion day (“invalidation proceedings”).
2
Subject to sub-paragraph (4) where—
a
the existing registered Community design is declared invalid (whether wholly or partly) pursuant to a decision which is finally determined, and
b
the registrar has either—
i
received notice of the situation referred to in paragraph (a) (“an invalidation notice”), or
ii
otherwise become aware of the situation referred to in paragraph (a),
the registration of the re-registered design which derives from the existing registered Community design must be declared invalid to the same extent as the existing registered Community design.
3
Where (by virtue of sub-paragraph (2)) the registration of a re-registered design is declared invalid, the registrar must—
a
where there is a partial declaration of invalidity, amend the entry in the register of designs;
b
otherwise, remove the re-registered design from the register.
4
The registration of a re-registered design must not be declared invalid under sub-paragraph (2) where the grounds on which the existing registered Community design was declared invalid (whether wholly or partly) would not apply or would not have been satisfied in relation to the re-registered Community design if—
a
the re-registered design had been the subject of an entry on the register as at the date the invalidation proceedings were instituted, and
b
an application for a declaration of invalidity of the re-registered design based on those grounds had been made on that date under section 11ZA.
5
Where the registration of a re-registered design is declared invalid to any extent pursuant to this paragraph—
a
it shall to that extent be treated as having been invalid from the date on which the rights of the proprietor of the existing registered Community design from which it derives are deemed to have ceased under the Community Design Regulation;
b
subject to any claim for compensation for damage caused by negligence or lack of good faith on the part of the proprietor or a claim for restitution based upon the unjust enrichment of the proprietor, the invalidity of the registration of the re-registered design does not affect—
i
a decision arising from infringement proceedings which has been finally determined and which has been enforced prior to the date of the declaration of invalidity made pursuant to sub-paragraph (2) (“the invalidity declaration date”);
ii
any contract entered into prior to the invalidity declaration date to the extent that it has been performed prior to that date, subject to the right of a party to the contract to claim the repayment of any consideration paid under the contract where, having regard to the circumstances, it is fair and equitable for such repayment to be made.
6
Where a declaration is made under sub-paragraph (2), section 11ZE(2) does not apply.
7
An invalidation notice may be sent by any person.
8
For the purposes of this paragraph—
a
proceedings are instituted if an application or counterclaim for a declaration of invalidity—
i
has been filed (and not subsequently withdrawn) with the European Union Intellectual Property Office or a court designated for the purposes of Article 80, and
ii
meets the requirements for being accorded a filing date under the Community Design Regulation and Commision Regulation (EC) No 2245/2002 of 21 October 2002;
b
a decision is finally determined when—
i
it has been determined; and
ii
there is no further possibility of the determination being varied or set aside (disregarding any power to grant permission to appeal out of time).
9
An appeal lies from a declaration of invalidity under sub-paragraph (2).
Effect of injunction protecting an existing registered Community design10
1
This paragraph applies where immediately before F22IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe an existing registered Community design (a “relevant injunction”).
2
Subject to any order of the court to the contrary, a relevant injunction will have effect and be enforceable to prohibit the performance of acts which infringe or would infringe the right in a re-registered design to the same extent as in relation to the existing registered Community design from which the re-registered design derives as if it were an injunction granted by the court.
PART 2Applications for registered Community designs which are pending at F22IP completion day
Applications for registration pending immediately before F22IP completion day11
1
In this Part references to an existing EU application are to an application for registration of a design under the Community Design Regulation in respect of which the conditions in sub-paragraph (2) are satisfied.
2
The conditions referred to in sub-paragraph (1) are that immediately before F22IP completion day—
a
the application has been accorded a filing date pursuant to Article 38; and
b
the application has been neither granted nor refused by the European Union Intellectual Property Office.
12
1
Where a person who has filed an existing EU application or a successor in title of that person applies for registration of the same design under this Act within a period beginning with F22IP completion day and ending with the end of the relevant period, the relevant date for the purposes of establishing whether (or to what extent) the design which is the subject of the application under this Act is new or has individual character is the earliest of—
a
the filing date accorded pursuant to Article 38 to the existing EU application;
b
the date of priority (if any) claimed under Article 42 in respect of the existing EU application.
2
In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which F22IP completion day falls.
3
For the purposes of this Act—
a
where an application is made of the type referred to in sub-paragraph (1) within the period referred to in that sub-paragraph, the date of the application is the filing date accorded pursuant to Article 38 to the existing EU application, and
b
where the registrar registers a design which is the subject of an application of the type referred to in sub-paragraph (1) which is made within the period referred to in that sub-paragraph, the date of registration of the design is the filing date accorded pursuant to Article 38 to the existing EU application.
4
Accordingly section 3C does not apply in relation to the design.
PART 3Registered Community designs where publication is deferred at F22IP completion day
Designs registered at the EUIPO immediately before F22IP completion day where publication is deferred13
1
In this Part references to a deferred design are to a design registered under the Community Design Regulation in respect of which the conditions in sub-paragraph (2) are satisfied.
2
The conditions referred to in sub-paragraph (1) are that immediately before F22IP completion day—
a
the design is entered in the RCD register, and
b
publication of the design is deferred under Article 50.
14
1
This paragraph applies where the proprietor of a deferred design or a successor in title of that person applies for registration of the same design under this Act within a period beginning with F22IP completion day and ending with the end of the relevant period.
2
Sections 3A(4) and 3B do not apply in relation to the application.
3
The relevant date for the purposes of establishing whether (or to what extent) the design which is the same as the deferred design is new or has individual character is the earliest of—
a
the filing date accorded pursuant to Article 38 to the application for the deferred design;
b
the date of priority (if any) claimed under Article 42 in respect of the application for the deferred design.
4
If the registrar registers a design which is the subject of an application of the type referred to in sub-paragraph (1) which is made within the period referred to in that sub-paragraph, the date of registration of the design is the date on which the deferred design which is the same as that design was treated as registered under the Community Design Regulation.
5
Accordingly section 3C does not apply in relation to the design.
6
In sub-paragraph (1), the “relevant period” means, the period of nine months beginning with the day after that on which F22IP completion day falls.
PART 4Treatment of registered Community designs whose registrations expire during the period of six months ending on F22IP completion day
Application of Part15
1
This Part applies to a design in respect of which the conditions in sub-paragraph (2) are satisfied (an “expired Community design”).
2
The conditions referred to in sub-paragraph (1) are that—
a
immediately before the transitional period, the design was the subject of a registration under the Community Design Regulation,
b
the registration of the design expired during the transitional period (such that the design did not fall within paragraph 1(1)), and
c
the registration of the design would have been capable of being renewed under Article 13 for at least one further period of five years had a request for renewal been made under Article 13 prior to that expiry.
3
An expired Community design is to be treated as if it were an existing registered Community design.
4
The provisions of Part 1 of this Schedule apply to an expired Community design as they apply to an existing Community design subject to the provisions of this Part of the Schedule.
5
Notwithstanding the entry in the register of designs (under paragraph 2, as applied by sub-paragraph (4)) of a re-registered design which derives from an expired Community design, the right in the re-registered design is expired until the period for which it subsists is extended in accordance with paragraph 16 (or the re-registered design is removed from the register in accordance with paragraph 16(3)).
6
In this paragraph, “transitional period” means the period of six months ending with F22IP completion day.
Renewal of registration of an expired Community design16
1
Where the registration of an expired Community design is renewed in accordance with Article 13(3) of the Continuing Community Design Regulation the registrar must, as soon as reasonably practicable after the date of such renewal, record in the register of designs the extension of the period for which subsists the right in the re-registered design which derives from the expired Community design.
2
Where the period for which the right in a re-registered design subsists is extended under sub-paragraph (1), the right is to be treated as if it had never expired, with the result that—
a
anything done under or in relation to the right in the period beginning with F22IP completion day and ending with the extension under sub-paragraph (1) is to be treated as valid,
b
an act which would have constituted an infringement of the right if it had not expired is to be treated as an infringement, and
c
an act which would have constituted use of the design for the services of the Crown if the right had not expired is to be treated as such use.
3
If the registration of an expired Community design is not renewed within the time period permitted by Article 13(3) of the Continuing Community Design Regulation—
a
the registrar must remove from the register of designs the re-registered design which derives from the expired Community design; and
b
the re-registered design ceases with effect from F22IP completion day to be treated as if it had been registered under this Act.
4
In this Schedule “the Continuing Community Design Regulation” means the Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as it has effect in EU law.
PART 5Restoration of registered Community design registrations and applications
Restoration of registered Community design to the RCD register17
1
This paragraph applies where:
a
before F22IP completion day a registered Community design is removed from the RCD register pursuant to the Community Design Regulation, and
b
on or after F22IP completion day the registration of the said design is restored pursuant to Article 67 of the Continuing Community Design Regulation.
2
Where the proprietor of the design files a request with the registrar within the period of six months beginning with the date of such restoration—
a
the design will be treated as if it were an existing registered Community design on F22IP completion day;
b
the provisions of Part 1 apply to the re-registered design which derives from the existing registered Community design.
Restoration of application for registered Community design18
1
This paragraph applies where—
a
before F22IP completion day an application for a registered Community design is refused pursuant to the Community Design Regulation; and
b
on or after F22IP completion day the application is restored pursuant to Article 67 of the Continuing Community Design Regulation (a “relevant application”).
2
Where a person who has filed a relevant application or a successor in title of that person applies for registration of the same design under this Act within a period beginning with F22IP completion day and ending with the end of the relevant period, the relevant date for the purposes of establishing whether the design which is the subject of the application under this Act is new or has individual character is the earliest of—
a
the filing date accorded pursuant to Article 38 to the relevant application;
b
the date of priority (if any) claimed under Article 42 in respect of the relevant application.
3
In sub-paragraph (2), the “relevant period” means the period of nine months beginning with the day on which the application is restored as referred to in sub-paragraph (1)(b).
PART 6Interpretation
Interpretation19
In this Schedule—
“the Community Design Regulation” has the meaning given by paragraph 1(7);
“the Continuing Community Design Regulation” has the meaning given by paragraph 16(4);
“existing registered Community design” has the meaning given by paragraph 1(1);
“expired Community design” has the meaning given by paragraph 15(1);
“RCD register” has the meaning given by paragraph 1(7);
“re-registered design” has the meaning given by paragraph 1(2).
20
References in this Schedule to an “Article” are to an Article of the Community Design Regulation.
SCHEDULE 1BINTERNATIONAL DESIGNS
Section 12B
PART 1Existing international designs
International designs in respect of which the European Union is designated to be treated as registered under the Act1
1
A design which, immediately before F24IP completion day, meets the requirements of sub-paragraph (2) (a “protected international registered design (EU))” is to be treated on and after F24IP completion day as if an application for its registration had been made, and it had been registered, under this Act.
2
The requirements referred to in sub-paragraph (1) are—
a
the design is the subject of an international registration which designates the European Union;
b
the international registration has been published by the International Bureau pursuant to Article 10(3) of the Geneva Act;
c
the European Union Intellectual Property Office has sent to the International Bureau a statement under Rule 18bis of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement to the effect that protection is granted in relation to the design, or the period under Article 106e(1) of the Community Design Regulation for communicating to the International Bureau a notification of refusal in respect of the international registration has expired; and
d
the effects of the international registration so far as they relate to the design have neither been—
i
refused by the European Union Intellectual Property Office pursuant to Article 106e(1) of the Community Design Regulation; nor
ii
declared wholly invalid pursuant to Article 106f of the Community Design Regulation.
3
Where prior to F24IP completion day the effects of the international registration to which a protected international registered design (EU) is subject are declared partly invalid so far as relating to that design pursuant to Article 106f of the Community Design Regulation, the re-registered international design which derives from the protected international registered design (EU) has effect under this Act to the extent that the effects of the international registration so far as relating to the design have not been declared invalid.
4
A registered design which comes into being by virtue of sub-paragraph (1) is referred to in this Schedule as a “re-registered international design”.
5
This Act applies to a re-registered international design as it applies to other registered designs except as otherwise provided in this Schedule.
6
For the purposes of this Act—
a
the date of registration of a re-registered international design is the date on which the protected international registered design (EU) from which the re-registered international design derives was treated as registered under the Geneva Act, and
b
the date of the application of a re-registered international design is the date treated, under Article 9 of the Geneva Act, as the filing date of the application for the registration of the protected international registered design (EU) from which the re-registered international design derives.
7
Nothing in this Act authorises the imposition of a fee, or the making of provision by rules or regulations which authorises the imposition of a fee, in respect of any matter relating to a re-registered international design (see instead provision made by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018).
8
The following provisions of this Act do not apply to a re-registered international design—
a
section 7A(6);
b
section 18.
9
In this Schedule—
a
“the Community Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as it had effect immediately before F24IP completion day;
b
“the Geneva Act” means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted by the Diplomatic Conference on 2 July 1999;
c
“the International Bureau” means the International Bureau of the World Intellectual Property Organization; and
d
“international registration” means the international registration of an industrial design effected according to the Geneva Act.
Entries to be made in the register in relation to designs treated as registered under this Act2
1
The registrar must as soon as reasonably practicable on or after F24IP completion day enter a re-registered international design in the register of designs.
2
The obligation under section 22(1) (inspection of registered designs) applies to a re-registered international design on and after the day on which the re-registered international design is entered in the register (notwithstanding that no certificate of registration has been granted).
Opt out3
1
Subject to sub-paragraph (2), the holder of the international registration to which a protected international registered design (EU) is subject (“the proprietor”) may at any time on or after F24IP completion day serve a notice on the registrar that the design is not to be treated as if it had been registered under this Act.
2
A notice under sub-paragraph (1) may not be served where on or after F24IP completion day—
a
the re-registered international design which derives from the protected international registered design (EU) (or any interest in it)—
i
has been assigned or otherwise transferred except by an assent by personal representatives, or
ii
has had an interest created in it by a mortgage, licence or other instrument; or
b
proceedings based on the re-registered international design have been initiated by the proprietor or with the proprietor's consent.
3
A notice served under sub-paragraph (1) must:
a
identify the protected international registered design (EU); and
b
include the name and address of any person who, to the best of the proprietor's knowledge, has an interest in the protected international registered design (EU).
4
A notice under sub-paragraph (1) is of no effect unless the proprietor in that notice certifies that any such person—
a
has been given not less than three months' notice of the proprietor's intention to serve such a notice; or
b
is not affected by, or if affected consents to, the notice.
5
Where a notice has been served under sub-paragraph (1)—
a
the design ceases with effect from F24IP completion day to be treated as if it had been registered under this Act,
b
the obligation imposed on the registrar under paragraph 2 (entries to be made in the register in relation to designs treated as registered under this Act) ceases to have effect, and
c
the registrar must make any necessary amendments to the register.
Effect of claim of priority4
1
This paragraph applies where a right of priority has been claimed in accordance with Article 6 of the Geneva Act in respect of the international registration to which a protected international registered design (EU) is subject.
2
The proprietor of the re-registered international design which derives from the protected international registered design (EU) is to be treated on and after F24IP completion day as having the same claim of priority.
3
Accordingly, the relevant date for the purposes of establishing whether (or to what extent) the re-registered international design is new or has individual character is the date of filing of the application for registration of a design in a convention country or a member of the World Trade Organization which formed the basis for the claim of priority.
Unregistered pre-exit transfers5
1
This paragraph applies where immediately before F24IP completion day—
a
there is a change in ownership of the international registration to which a protected international registered design (EU) is subject,
b
the change in ownership has effect in respect of the European Union and the protected international registered design (EU), and
c
the change in ownership has not been entered in the international register
(a “relevant transfer”).
2
Section 19 (registration of assignments, etc.) applies in relation to a relevant transfer as if it were an assignment of the re-registered international design which derives from the protected international registered design (EU) which has been transferred.
Pre-exit licences to continue to have effect in the United Kingdom6
1
This paragraph applies where immediately before F24IP completion day a protected international registered design (EU) is the subject of a licence which—
a
authorises the doing of acts in the United Kingdom which would otherwise infringe the protected international registered design (EU), and
b
does not expire on F24IP completion day (a “relevant licence”).
2
Subject to any agreement to the contrary between the licensee and the licensor, a relevant licence continues to authorise the doing of acts which would otherwise infringe the re-registered international design which derives from the protected international registered design (EU).
3
Sub-paragraph (2) is subject to the terms on which the relevant licence was granted, subject to such modifications as are necessary for their application in the United Kingdom.
4
Section 19 (registration of assignments, etc.) applies in relation to a relevant licence as if it were a licence of the re-registered international design deriving from the protected international registered design (EU) which is subject to the relevant licence, subject to the following modification.
5
Section 19(5) does not apply to the licence until after the expiry of the period of 12 months beginning with the day after that on which F24IP completion day falls.
Security interests in protected F25... international registered designs (EU)7
1
This paragraph applies where immediately before F24IP completion day a protected international registered design (EU) is the subject of an interest which has been granted as security and does not expire on F24IP completion day (a “relevant security interest”).
2
References to the protected international registered design (EU), or the international registration to which the protected international registered design (EU) is subject, in any document which grants or refers to the relevant security interest are to be read as including references to the re-registered international design which derives from the protected international registered design (EU).
3
Section 19 (registration of assignments, etc.) applies in relation to a relevant security interest as if it were a security interest granted in respect of the re-registered design deriving from the protected international registered design (EU) which is subject to the relevant security interest, subject to the following modification.
4
Section 19(5) does not apply to the interest until after the expiry of 12 months beginning with the day after that on which F24IP completion day falls.
Continuity of rights in relation to a protected international registered design (EU)8
1
References to a protected international registered design (EU), or the international registration to which a protected international registered design (EU) is subject, in any document entered into before F24IP completion day shall, unless there is evidence that the document was not intended to have effect in the United Kingdom, be read on and after F24IP completion day as including references to the re-registered international design or the registration of the re-registered international design which derives from the protected international registered design (EU).
2
Subject to any agreement to the contrary, a consent granted before F24IP completion day by the holder of the international registration to which a protected international registered design (EU) is subject to the doing on or after F24IP completion day of an act in the United Kingdom which would otherwise infringe the re-registered international design which derives from the protected international registered design (EU) is to be treated for the purposes of section 7A as a consent to the doing of that act granted by the registered proprietor of the re-registered international design.
Pending proceedings concerning a protected international registered design (EU)9
1
This paragraph applies where on F24IP completion day a protected international registered design (EU) is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 80 (“a Community design court”).
2
Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Title IX of the Community Design Regulation (with the exceptions of Articles 86(2), (4), (5) and 91) shall continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from F24IP completion day.
3
Where the pending proceedings involve a claim for infringement or for threatened infringement of a protected international registered design (EU), without prejudice to any other relief by way of damages, accounts or otherwise available to the holder of the international registration to which the protected international registered design (EU) is subject, the Community design court may grant an injunction to prohibit unauthorised use of the re-registered international design which derives from the protected international registered design (EU).
4
Where the pending proceedings involve a counterclaim for a declaration of invalidity in relation to a protected international registered design (EU), the Community design court may declare the registration of the re-registered international design which derives from the protected international registered design (EU) to be invalid (wholly or in part).
5
Where the registration of a re-registered international design is declared invalid to any extent, the registration shall to that extent be treated as having been invalid from the date of registration or from such other date as the court may direct.
6
For the purposes of this paragraph proceedings are treated as pending on F24IP completion day if they were instituted but not finally determined before F24IP completion day.
Effect of injunction protecting a protected international registered design (EU)10
1
This paragraph applies where immediately before F24IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe a protected international registered design (EU) (a “relevant injunction”).
2
Subject to any order of the court to the contrary, a relevant injunction will have effect and be enforceable to prohibit the performance of acts which infringe or would infringe the right in a re-registered international design to the same extent as in relation to the protected international registered design (EU) from which the re-registered international design derives as if it were an injunction granted by the court.
PART 2International registrations in respect of which the period for refusal has not expired before F24IP completion day etc
11
1
In this Part references to a “pending international design (EU)” are to a design which, immediately before F24IP completion day, meets the requirements of sub-paragraph (2).
2
The requirements referred to in sub-paragraph (1) are—
a
the design is the subject of an international registration which designates the European Union;
b
the design is not the subject of—
i
a refusal by the European Union Intellectual Property Office pursuant to Article 106e(1) of the Community Design Regulation; or
ii
a statement by the European Union Intellectual Property Office under Rule 18bis of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement to the effect that protection is granted in relation to it;
c
the international registration to which the design is subject—
i
has not been published by the International Bureau pursuant to Article 10(3) of the Geneva Act; or
ii
has been published by the International Bureau but the period under Article 106e(1) of the Community Design Regulation for communicating to the International Bureau a notification of refusal in respect of the international registration has not expired.
12
1
Where the holder of the international registration to which a pending international design (EU) is subject, or a successor in title of that person, makes an application for registration of the same design under this Act within a period beginning with F24IP completion day and ending with the end of the relevant period, the relevant date for the purposes of establishing whether (or to what extent) the design which is the subject of the application under this Act is new or has individual character is the earliest of—
a
the date on which the international registration was treated as registered pursuant to Article 10(2) of the Geneva Act;
b
the date of priority (if any) claimed under Article 41 of the Community Design Regulation as applied by Article 106a of that Regulation in respect of the pending international design (EU).
2
In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which F24IP completion day falls.
3
For the purposes of this Act—
a
where an application is made of the type referred to in sub-paragraph (1) within the period referred to in that sub-paragraph, the date of the application is the date on which the international registration to which the pending international design (EU) is subject was treated as registered pursuant to Article 10(2) of the Geneva Act, and
b
where the registrar registers a design which is the subject of an application of the type referred to in sub-paragraph (1) which is made within the period referred to in that sub-paragraph, the date of registration of the design is the date on which the international registration to which the pending international design (EU) is subject was treated as registered pursuant to Article 10(2) of the Geneva Act.
4
Accordingly section 3C does not apply in relation to the design.
PART 3Treatment of international registered designs whose registrations expire during the period of six months ending on F24IP completion day
Application of Part13
1
This Part applies to a design which met the requirements set out in paragraph 1(2)(b) to (d) in respect of which the conditions in sub-paragraph (2) are satisfied (an “expired international design”).
2
The conditions referred to in sub-paragraph (1) are that—
a
immediately before the transitional period, the design was the subject of an international registration which designated the European Union,
b
the international registration expired during the transitional period (such that the design did not fall within paragraph 1(1)), and
c
the renewal of the international registration would have been capable of being effected for the European Union in accordance with Article 17 of the Geneva Act for at least one further period of five years had a request for renewal been made in accordance with Article 17(2) prior to that expiry.
3
An expired international design is to be treated as if it were a protected international registered design (EU).
4
The provisions of Part 1 of this Schedule apply to an expired international design as they apply to a protected international registered design (EU) subject to the provisions of this Part of the Schedule.
5
Notwithstanding the entry in the register of designs (under paragraph 2, as applied by sub-paragraph (4)) of a re-registered international design which derives from an expired international design, the right in the re-registered international design is expired until it is extended in accordance with paragraph 14 (or the re-registered design is removed from the register in accordance with paragraph 14(3)).
6
In this paragraph, “transitional period” means the period of six months ending with F24IP completion day.
Renewal of registration of an expired international design14
1
Where within the period beginning with F24IP completion day and ending with the end of the relevant period—
a
the international registration to which an expired international design was subject is renewed in accordance with Article 17(2) of the Geneva Act,
b
the renewal has effect in respect of the European Union and the expired international design, and
c
the holder of that international registration notifies the registrar of such renewal, the registrar must, as soon as reasonably practicable after the date of notification, record in the register of designs the extension of the period for which subsists the right in the re-registered international design which derives from the expired international design.
2
Where the period for which the right in a re-registered international design subsists is extended under sub-paragraph (1), the right is to be treated as if it had never expired, with the result that—
a
anything done under or in relation to the right in the period beginning with F24IP completion day and ending with the extension under sub-paragraph (1) is to be treated as valid,
b
an act which would have constituted an infringement of the right if it had not expired is to be treated as an infringement, and
c
an act which would have constituted use of the design for the services of the Crown if the right had not expired is to be treated as such use.
3
If within the period referred to in sub-paragraph (1) the holder fails to notify the registrar in accordance with sub-paragraph (1)(c)—
a
the registrar must remove from the register of designs the re-registered international design which derives from the expired international design, and
b
the re-registered international design ceases with effect from F24IP completion day to be treated as if it had been registered under this Act.
4
In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which F24IP completion day falls.
PART 4Interpretation
Interpretation15
1
In this Schedule—
“the Community Design Regulation” has the meaning given by paragraph 1(9);
“expired international design” has the meaning given by paragraph 13(1);
“the Geneva Act” has the meaning given by paragraph 1(9);
“the International Bureau” has the meaning given by paragraph 1(9);
“international registration” has the meaning given by paragraph 1(9);
“protected international registered design (EU)” has the meaning given by paragraph 1(1);
“re-registered international design” has the meaning given by paragraph 1(4).
2
For the purposes of paragraphs 1(2)(b) and 11(2)(c), where the international registration to which a design is subject has not been published in its entirety but the design itself has been by virtue of a request made under Article 11(4)(a) of the Geneva Act, the international registration is to be treated as having been published.

SCHEDULE 4Amendments to the 1994 Act to make provision for certain international trade marks protected in the European Union to be treated as registered trade marks and about certain applications for such marks and transformation applications

Regulation 6

I1381

The 1994 Act is amended as follows.

I1392

After section 54 M10 (and before the italic heading before section 55), insert—

54ACertain international trade marks protected in the European Union to be treated as registered trade marks
Schedule 2B makes provision for international trade marks protected in the European Union (including certain expired marks) to be treated as registered trade marks with effect from F26IP completion day and about certain applications for the protection of an international trade mark in the European Union and transformation applications made before F26IP completion day.

I1403

Before Schedule 3, insert—

SCHEDULE 2BINTERNATIONAL TRADE MARKS PROTECTED IN THE EUROPEAN UNION
Section 54A
PART 1Existing international trade marks protected in the European Union
An international trade mark protected in the European Union to be treated as registered under this Act1
1
A trade mark which, immediately before F27IP completion day, is an international trade mark which is protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation (an “existing IR(EU)”) is to be treated on and after F27IP completion day as if an application had been made, and the trade mark had been registered, under this Act in respect of the same goods or services in respect of which the international trade mark is protected in the European Union.
2
Where the international registration to which an international trade mark is subject is sub-divided to reflect the making of more than one request for territorial extension to the European Union under Article 3ter there is to be deemed for the purposes of sub-paragraph (1) to be a separate trade mark in respect of the goods or services covered by each sub-division of the registration.
3
Where the international registration to which an international trade mark is subject has been created by virtue of Rule 27(2) (recording of partial change in ownership) (a “separate international registration”), it is irrelevant for the purposes of the application of sub-paragraph (2) to that separate international registration that the requests for territorial extension were made before the separate international registration was created.
4
A registered trade mark which comes into being by virtue of sub-paragraph (1) is referred to in this Act as a comparable trade mark (IR).
5
This Act applies to a comparable trade mark (IR) as it applies to other registered trade marks except as otherwise provided in this Schedule.
6
A comparable trade mark (IR) is deemed for the purposes of this Act to be registered as of—
a
where the protection in the European Union of the existing IR(EU) from which the comparable trade mark (IR) derives resulted from a request for territorial extension under Article 3ter(1) (request mentioned in original application), the date of registration of the existing IR(EU) accorded pursuant to Article 3(4); or
b
where the protection in the European Union of the existing IR(EU) from which the comparable trade mark (IR) derives resulted from a request for territorial extension under Article 3ter(2) (subsequent request), the date on which the request was recorded in the International Register,
and that date is deemed for the purposes of this Act to be the date of registration.
7
Section 40(3) and (4) does not apply to the registration of a comparable trade mark (IR) under this Part.
8
Section 67(1) applies in relation to the provision of information and the inspection of documents relating to a comparable trade mark (IR) notwithstanding that there will have been no application under this Act for the registration of the trade mark (and so no publication of an application).
9
Nothing in this Act authorises the imposition of a fee, or the making of provision by rules or regulations which authorises the imposition of a fee, in respect of any matter relating to a comparable trade mark (IR) (see instead provision made by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018).
10
For the purposes of this Act—
a
the date of filing of an application for registration of a comparable trade mark (IR) is the same date as the deemed date of registration of the comparable trade mark (IR) under sub-paragraph (6);
b
references to the date of application for registration of a comparable trade mark (IR) are to the date of filing of the application;
c
where an earlier trade mark is a comparable trade mark (IR), references to the completion of the registration procedure for the earlier trade mark are to publication by the European Union Intellectual Property Office of the matters referred to in Article 190(2) of the European Union Trade Mark Regulation in respect of the existing IR(EU) from which the comparable trade mark (IR) derives.
11
In this Schedule—
a
“the International Register” means the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol;
b
“international registration” means a registration made in the International Register in accordance with the Madrid Protocol;
c
“international trade mark” means a trade mark which is the subject of an international registration.
Opt out2
1
Subject to sub-paragraphs (2) and (6), the proprietor of an existing IR(EU) may, at any time on or after F27IP completion day, serve notice on the registrar that the trade mark is not to be treated as if the trade mark had been registered under this Act (an “opt out notice”).
2
An opt out notice may not be served where on or after F27IP completion day—
a
the comparable trade mark (IR) has been put to use in the United Kingdom by the proprietor or with the proprietor's consent (which use includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes);
b
the comparable trade mark (IR) (or any right in or under it) has been made the subject of an assignment, licence, security interest or any other agreement or document except for an assent by personal representatives in relation to the comparable trade mark (IR); or
c
proceedings based on the comparable trade mark (IR) have been initiated by the proprietor or with the proprietor's consent.
3
An opt out notice must—
a
identify the number of the international registration to which the existing IR(EU) to which the notice relates is subject; and
b
include the name and address of any person having an interest in the existing IR(EU) which had effect before F27IP completion day in the United Kingdom, and in respect of which an entry was recorded in the International Register.
4
An opt out notice is of no effect unless the proprietor in that notice certifies that any such person—
a
has been given not less than three months' notice of the proprietor's intention to serve an opt out notice; or
b
is not affected or if affected, consents to the opt out.
5
Where a notice has been served in accordance with this paragraph—
a
the comparable trade mark (IR) which derives from the existing IR(EU) ceases with effect from F27IP completion day to be treated as if it had been registered under this Act; and
b
the registrar must, where particulars of the comparable trade mark (IR) have been entered in the register, remove the comparable trade mark (IR) from the register.
6
Where an international trade mark which is protected in the European Union is treated as being more than one trade mark by virtue of paragraph 1(2)—
a
an opt out notice must relate to all of the existing IR(EU)s which (by virtue of paragraph 1(2)) derive from the international trade mark;
b
the references in sub-paragraph (2) to the comparable trade mark (IR) are to be read as references to any of the comparable trade marks (IR) which derive from the existing IR(EU)s to which the opt out notice relates; and
c
the references in sub-paragraph (5) to the comparable trade mark (IR) are to be read as references to all of the comparable trade marks (IR) which derive from the existing IR(EU)s to which the notice relates.
Entries to be made in the register in relation to a comparable trade mark (IR)3
1
The registrar must as soon as reasonably practicable after F27IP completion day enter a comparable trade mark (IR) in the register.
2
The particulars of the goods or services in respect of which the comparable trade mark (IR) is treated as if it had been registered must be taken from the English language version of the entry in the International Register for the corresponding (IR).
3
Where on or after F27IP completion day the entry in the International Register containing the particulars referred to in sub-paragraph (2) is modified to correct an error pursuant to Rule 28, a person having a sufficient interest may apply to the registrar for rectification of the register by the substitution of the English language version of the entry for the corresponding (IR) in the International Register as modified.
4
In this Schedule, the “corresponding (IR)”, in relation to a comparable trade mark (IR), means the existing IR(EU) from which the comparable trade mark (IR) derives.
Comparable trade mark (IR) which derives from a mark treated as an EU Collective Mark or EU Certification Mark4
1
This paragraph applies where the existing IR(EU) from which a comparable trade mark (IR) derives is dealt with for the purposes of the European Union Trade Mark Regulation as an EU collective mark or an EU certification mark.
2
The comparable trade mark (IR) is to be treated as either a collective mark or a certification mark, as the case may be.
3
The proprietor of the comparable trade mark (IR) must, following notice from the registrar, file with the registrar regulations governing the use of the international trade mark, submitted pursuant to the European Union Trade Mark Regulation, which had effect immediately before F27IP completion day.
4
Where the regulations referred to in sub-paragraph (3) are in a language other than English they must be filed together with a translation into English verified to the satisfaction of the registrar as corresponding to the original text.
5
Paragraph 9 of Schedule 1 and paragraph 10 of Schedule 2 apply in relation to the translation referred to in sub-paragraph (4) as they apply in relation to the regulations referred to in sub-paragraph (3).
6
Where the regulations or any translation are not filed in accordance with the above provisions—
a
the registrar must remove the comparable trade mark (IR) from the register; and
b
the rights of the proprietor shall be deemed to have ceased as from the date of removal.
Renewal of a comparable trade mark (IR) which expires within six months after F27IP completion day5
1
This paragraph applies to the renewal of the registration of a comparable trade mark (IR) which expires within the period beginning with F27IP completion day and ending with the end of the relevant period (and accordingly section 43(1) to (3A) does not apply).
2
The registration of the comparable trade mark (IR) may be renewed at the request of the proprietor before the expiry of the registration.
3
Where the registration of the comparable trade mark (IR) is not renewed in accordance with sub-paragraph (2)—
a
on, or as soon as reasonably practicable after, the expiry of the registration, the registrar must notify the proprietor that the registration has expired and of the manner in which the registration may be renewed; and
b
a request for renewal must be made within the period of six months beginning with the date of the notice.
4
If a request for renewal is made in respect of only some of the goods or services for which the comparable trade mark (IR) is registered, the registration is to be renewed for those goods or services only.
5
If the registration is not renewed in accordance with the above provisions, the registrar must remove the comparable trade mark (IR) from the register.
6
Section 43(4) and (6) applies to the registration of a comparable trade mark (IR) which is renewed in accordance with the above provisions.
7
In sub-paragraph (1), the “relevant period” means the period of six months beginning with the day after that on which F27IP completion day falls.
Restoration of a comparable trade mark (IR)6
Where a comparable trade mark (IR) is removed from the register pursuant to paragraph 5, the rules relating to the restoration of the registration of a trade mark (referred to in section 43(5)) apply in relation to the restoration of the comparable trade mark (IR) to the register.
Raising of relative grounds in opposition proceedings in case of non-use7
1
Section 6A applies where an earlier trade mark is a comparable trade mark (IR), subject to the modifications set out below.
2
Where the relevant period referred to in section 6A(3)(a) (the “five-year period”) has expired before F27IP completion day—
a
the references in section 6A(3) and (6) to the earlier trade mark are to be treated as references to the corresponding (IR); and
b
the references in section 6A(3) and (4) to the United Kingdom include the European Union.
3
Where F27IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before F27IP completion day—
a
the references in section 6A(3) and (6) to the earlier trade mark are to be treated as references to the corresponding (IR); and
b
the references in section 6A to the United Kingdom include the European Union.
Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (IR)8
1
Sections 11A and 46 apply in relation to a comparable trade mark (IR), subject to the modifications set out below.
2
Where the period of five years referred to in sections 11A(3)(a) and 46(1)(a) or (b) (the “five-year period”) has expired before F27IP completion day—
a
the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 46 to a trade mark are to be treated as references to the corresponding (IR); and
b
the references in sections 11A and 46 to the United Kingdom include the European Union.
3
Where F27IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before F27IP completion day—
a
the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 46 to a trade mark, are to be treated as references to the corresponding (IR); and
b
the references in sections 11A and 46 to the United Kingdom include the European Union.
Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (IR)9
1
Section 47 applies where an earlier trade mark is a comparable trade mark (IR), subject to the modifications set out below.
2
Where the period of five years referred to in sections 47(2A)(a) and 47(2B) (the “five-year period”) has expired before F27IP completion day—
a
the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding (IR); and
b
the references in section 47 to the United Kingdom include the European Union.
3
Where F27IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before F27IP completion day—
a
the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding (IR); and
b
the references in section 47 to the United Kingdom include the European Union.
Reputation of a comparable trade mark (IR)10
1
Sections 5 and 10 apply in relation to a comparable trade mark (IR), subject to the modifications set out below.
2
Where the reputation of a comparable trade mark (IR) falls to be considered in respect of any time before F27IP completion day, references in sections 5(3) and 10(3) to—
a
the reputation of the mark are to be treated as references to the reputation of the corresponding (IR); and
b
the United Kingdom include the European Union.
Rights conferred by registered trade mark11
Section 9 applies in relation to a comparable trade mark (IR) but as if—
a
the words in brackets in subsection (3) referring to section 40(3) were replaced with a reference to paragraph 1(6) of this Schedule; and
b
the proviso in subsection (3) were omitted.
Effect of disclaimer12
Where, immediately before F27IP completion day, the protection in the European Union of an existing IR(EU) is subject to a disclaimer recorded in the International Register, the registration of the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated on and after F27IP completion day as subject to the same disclaimer (and section 13 applies accordingly but as if the reference to “publication” in subsection (2) was omitted).
Effect of claim of priority13
1
This paragraph applies where—
a
a right of priority was claimed in respect of an international application for protection of a trade mark in accordance with Rule 9(4)(iv);
b
immediately before F27IP completion day there is an entry in the International Register in respect of that trade mark containing particulars of that claim of priority (a “claim of priority”);
c
the trade mark is an existing IR(EU).
2
Subject to sub-paragraph (4), the proprietor of the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated on and after F27IP completion day as having the same claim of priority.
3
Accordingly, the relevant date for the purposes of establishing, in relation to the comparable trade mark (IR), which rights take precedence is the date of filing of the application for a trade mark in a Convention country which formed the basis for the claim of priority.
4
Where the protection in the European Union of the existing IR(EU) resulted from a request for territorial extension under Article 3ter(2), the proprietor of the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated on and after F27IP completion day as having the same claim of priority only where the request for territorial extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application referred to in sub-paragraph (1)(a).
Effect of seniority claim14
1
This paragraph applies where immediately before F27IP completion day an existing IR(EU) has a valid claim to seniority of a trade mark which trade mark (the “senior mark”) is a registered trade mark or a protected international trade mark (UK).
2
The comparable trade mark (IR) which derives from the existing IR(EU) is to be treated on and after F27IP completion day as if it had a valid claim to seniority of the senior mark.
3
Accordingly, where the proprietor of the comparable trade mark (IR) surrenders the senior mark or allows it to lapse (whether wholly or partially), subject to paragraph 15, the proprietor of the comparable trade mark (IR) is deemed to continue to have the same rights as the proprietor would have had if the senior mark had continued to be registered in respect of all the goods or services for which it was registered prior to the surrender or lapse.
4
An existing IR(EU) has a valid claim to seniority of a trade mark where—
a
a claim has been filed in accordance with Article 191 or 192 of the European Union Trade Mark Regulation in respect of the international registration to which the existing IR(EU) is subject; and
b
the seniority so claimed has not lapsed in the circumstances referred to in Article 39 of that Regulation (as it applies to international registrations under Article 182 of that Regulation).
Determination of invalidity and liability to revocation in relation to claims of seniority15
1
Where pursuant to paragraph 14 a comparable trade mark (IR) is treated as if it had a valid claim to seniority of a registered trade mark which has been—
a
removed from the register under section 43; or
b
surrendered under section 45,
any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (2).
2
The declaration is that if the trade mark had not been so removed or surrendered, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.
3
Where the declaration is that had the trade mark not been so removed or surrendered the registration of it would have been liable to be—
a
revoked under section 46 with effect from a date prior to—
i
where there has been no claim of priority pursuant to Article 35 of the European Union Trade Mark Regulation (as it applies to international registrations under Article 182 of that Regulation) in respect of the existing IR(EU) from which the comparable trade mark (IR) derives, the deemed date of registration of the comparable trade mark (IR); or
ii
where there has been a claim of priority, the priority date accorded pursuant to a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the existing IR(EU) from which the comparable trade mark (IR) derives; or
b
declared invalid under section 47,
the seniority claimed for the comparable trade mark (IR) is to be treated as if it never had effect.
4
Where pursuant to paragraph 14 a comparable trade mark (IR) is treated as if it had a valid claim to seniority of a protected international trade mark (UK) which has been—
a
removed from the International Register; or
b
surrendered under the Madrid Protocol,
any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (5).
5
The declaration is that, if the trade mark had not been so removed or surrendered, the protection of the mark in the United Kingdom would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.
6
Where the declaration is that had the trade mark not been so removed or surrendered the protection of the mark in the United Kingdom would have been liable to be—
a
revoked under section 46 with effect from a date prior to—
i
where there has been no claim of priority pursuant to Article 35 of the European Union Trade Mark Regulation (as it applies to international registrations under Article 182 of that Regulation) in respect of the existing IR(EU) from which the comparable trade mark (IR) derives, the deemed date of registration of the comparable trade mark (IR); or
ii
where there has been a claim of priority, the priority date accorded pursuant to a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the existing IR(EU) from which the comparable trade mark (IR) derives; or
b
declared invalid under section 47,
the seniority claimed for the comparable trade mark (IR) is to be treated as if it never had effect.
7
Where the protection in the European Union of an existing IR(EU) resulted from a request for territorial extension under Article 3ter(2), a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the existing IR(EU) is to be disregarded for the purposes of sub-paragraphs (3)(a)(ii) and (6)(a)(ii) unless the request for territorial extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the request for territorial extension was filed.
8
References in sub-paragraphs (5) and (6) to sections 46 and 47 are to those sections as they apply to a protected international trade mark (UK) under an order made pursuant to section 54.
9
Where a trade mark has been surrendered or allowed to lapse in respect of some only of the goods or services for which it is registered, the declaration in sub-paragraphs (2) and (5) is that if the goods or services had not been removed from the registration, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47 and sub-paragraphs (3) and (6) shall be construed accordingly.
Procedure for declaration that trade mark would have been liable to be revoked or declared invalid16
1
In the case of proceedings on an application under paragraph 15 before the registrar, the rules relating to applications for and proceedings relating to the revocation or invalidation of a trade mark apply, with necessary modifications.
2
In the case of proceedings on an application under paragraph 15 before the court, section 74 applies to the proceedings as it applies to proceedings involving an application of the type referred to in section 74(1)(a) to (c).
Assignment of an existing IR(EU) not registered on F27IP completion day17
1
This paragraph applies where before F27IP completion day an existing IR(EU) (or any right in it) is the subject of an assignment (a “relevant assignment”) which immediately before F27IP completion day is not recorded in the International Register.
2
Section 25 applies in relation to a relevant assignment as if it were a registrable transaction affecting a comparable trade mark (IR), subject to the modification set out below.
3
An application under section 25(1) may only be made by—
a
a person claiming to be entitled to an interest in or under a comparable trade mark (IR) by virtue of a relevant assignment of the corresponding (IR); or
b
the proprietor of the comparable trade mark (IR).
Effect of a licence of an existing IR(EU)18
1
This paragraph applies where immediately before F27IP completion day an existing IR(EU) is the subject of a licence (a “relevant licence”) which—
a
authorises the doing of acts in the United Kingdom which would otherwise infringe the international trade mark; and
b
does not expire on F27IP completion day.
2
Subject to any agreement to the contrary between the licensee and the licensor, a relevant licence continues to authorise the doing of acts in the United Kingdom which would otherwise infringe the comparable trade mark (IR) which derives from the existing IR(EU).
3
Sub-paragraph (2) is subject to—
a
the terms on which the relevant licence was granted; and
b
such modifications to the terms referred to in paragraph (a) as are necessary for their application in the United Kingdom.
4
Section 25 applies in relation to a relevant licence as if it were a registrable transaction affecting a comparable trade mark (IR), subject to the modifications set out below.
5
An application under section 25(1) may only be made by—
a
a person claiming to be a licensee by virtue of the relevant licence; or
b
the proprietor of the comparable trade mark (IR).
6
Where immediately before F27IP completion day there is an entry in the International Register relating to a relevant licence—
a
section 25(3) and (4) does not apply until after the expiry of the relevant period; and
b
section 25(4)(a) applies after the expiry of the relevant period but as if the reference to six months beginning with the date of the transaction were a reference to eighteen months beginning with F27IP completion day.
7
In sub-paragraph (6)(a), the “relevant period” means the period of twelve months beginning with the day after that on which F27IP completion day falls.
Effect of a security interest in an existing IR(EU)19
1
This paragraph applies where immediately before F27IP completion day an existing IR(EU) (or any right in or under it) is the subject of a security interest (a “relevant security interest”) which—
a
restricts the proprietor's right to dispose in the European Union of the existing IR(EU); and
b
does not terminate on F27IP completion day.
2
References to the existing IR(EU), or the international registration to which the existing IR(EU) is subject, in any document which grants or refers to the relevant security interest are to be read as including references to the comparable trade mark (IR) which derives from the existing IR(EU).
3
Section 25 applies in relation to a relevant security interest as if it were a registrable transaction affecting a comparable trade mark (IR), subject to the modifications set out below.
4
An application under section 25(1) may only be made by—
a
a person claiming to be entitled to an interest in or under a comparable trade mark (IR) by virtue of the relevant security interest; or
b
the proprietor of the comparable trade mark (IR).
5
Where immediately before F27IP completion day there is an entry in the International Register relating to a relevant security interest—
a
section 25(3) and (4) do not apply until after the expiry of the relevant period; and
b
section 25(4)(a) applies after the expiry of the relevant period but as if the reference to six months beginning with the date of the transaction were a reference to eighteen months beginning with F27IP completion day.
6
In sub-paragraph (5)(a), the “relevant period” means the period of twelve months beginning with the day after that on which F27IP completion day falls.
Continuity of rights in relation to a comparable trade mark (IR)20
1
References to an existing IR(EU), or the international registration to which an existing IR(EU) is subject, in any document made before F27IP completion day shall, unless there is evidence that the document was not intended to have effect in the United Kingdom, be read on and after F27IP completion day as including references to the comparable trade mark (IR) or the registration of the comparable trade mark (IR) which derives from the existing IR(EU).
2
Subject to any agreement to the contrary, a consent granted before F27IP completion day by the proprietor of an existing IR(EU) to the doing on or after F27IP completion day of an act in the United Kingdom which would otherwise infringe the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated for the purposes of section 9 as a consent to the doing of that act.
Existing IR(EU): pending proceedings21
1
This paragraph applies where on F27IP completion day an existing IR(EU) is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 123 of the European Union Trade Mark Regulation (“EU trade mark court”).
2
Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Chapter 10 of the European Union Trade Mark Regulation (with the exception of Articles 128(2), (4), (6) and (7) and 132) continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from F27IP completion day.
3
Where the pending proceedings involve a claim for infringement of an existing IR(EU), without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the existing IR(EU), the EU trade mark court may grant an injunction to prohibit unauthorised use of the comparable trade mark (IR) which derives from the existing IR(EU).
4
Where the pending proceedings involve a counterclaim for the revocation of, or a declaration of invalidity in relation to, an existing IR(EU), the EU trade mark court may revoke the registration of the comparable trade mark (IR) which derives from the existing IR(EU) or declare the registration of the comparable trade mark (IR) which derives from the existing IR(EU) to be invalid.
5
Where the grounds for revocation or invalidity exist in respect of only some of the goods or services for which the existing IR(EU) is registered, the revocation or declaration of invalidity in respect of the registration of the comparable trade mark (IR) which derives from the existing IR(EU) relates to those goods or services only.
6
Where (by virtue of sub-paragraph (4)) the registration of a comparable trade mark (IR) is revoked to any extent, the rights of the proprietor are deemed to have ceased to that extent as from—
a
the date of the counterclaim for revocation, or
b
if the court is satisfied that the grounds for revocation existed at an earlier date, that date.
7
Where (by virtue of sub-paragraph (4)) the registration of a comparable trade mark (IR) is declared invalid to any extent, the registration is to that extent to be deemed never to have been made, provided that this does not affect transactions past and closed.
8
For the purposes of this paragraph proceedings are treated as pending on F27IP completion day if they were instituted but not finally determined before F27IP completion day.
Existing IR(EU): effect of injunction22
1
This paragraph applies where immediately before F27IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe an existing IR(EU) (a “relevant injunction”).
2
Subject to any order of the court to the contrary, a relevant injunction will have effect and be enforceable to prohibit the performance of acts which infringe or would infringe a comparable trade mark (IR) to the same extent as in relation to the existing IR(EU) from which the comparable trade mark (IR) derives as if it were an injunction granted by the court.
PART 2Treatment of international trade marks protected in the European Union which expire during the period of six months ending on F27IP completion day
Registration of certain expired international trade marks23
1
This Part applies to an international trade mark which, immediately before the transitional period, was protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation but which, as a result of the expiry of the registration of the international trade mark during the transitional period, does not fall within paragraph 1(1) (an “expired IR(EU)”).
2
Where the international registration to which an international trade mark is subject has been sub-divided as referred to in paragraph 1(2), there is to be deemed for the purposes of sub-paragraph (1) to be a separate expired trade mark in respect of the goods or services covered by each sub-division of the registration.
3
An expired IR(EU) is to be treated as if it were an existing IR(EU).
4
The provisions of Part 1 of this Schedule apply to an expired IR(EU) as they apply to an existing IR(EU) subject to the provisions of this Part of the Schedule.
5
Notwithstanding the entry in the register (under paragraph 3, as applied by sub-paragraph (4)) of a comparable trade mark (IR) which derives from an expired IR(EU), the registration of the comparable trade mark (IR) is expired until the proprietor gives notice to the registrar in accordance with paragraph 24(1)(b) (or the comparable trade mark (IR) is removed from the register in accordance with paragraph 24(2)).
6
In this paragraph, “transitional period” means the period of six months ending with F27IP completion day.
Renewal of an expired IR(EU)24
1
Where within the period beginning with F27IP completion day and ending with the end of the relevant period—
a
the international registration to which an expired IR(EU) is subject is renewed in accordance with Article 7; and
b
the proprietor of the expired IR(EU) notifies the registrar of such renewal (a “renewal notice”),
paragraphs 25 and 26 apply to the renewal of the registration of the comparable trade mark (IR) which derives from the expired IR(EU).
2
If within the period referred to in sub-paragraph (1) the proprietor fails to notify the registrar in accordance with sub-paragraph (1)(b)—
a
the registrar must remove from the register the comparable trade mark (IR) which derives from the expired IR(EU); and
b
the comparable trade mark (IR) ceases with effect from F27IP completion day to be treated as if it had been registered under this Act.
3
In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which F27IP completion day falls.
Renewal of an expired IR(EU): territorial extension under Article 3ter(1)25
1
Where the protection in the European Union of an expired IR(EU) resulted from a request for territorial extension under Article 3ter(1), the registrar must, as soon as reasonably practicable following receipt of the renewal notice, renew the registration of the comparable trade mark (IR) which derives from the expired IR(EU).
2
A comparable trade mark (IR) which is renewed under sub-paragraph (1) shall be renewed for a period of ten years from the expiry of the international registration to which the expired IR(EU) is subject.
3
Section 43(6) applies to the registration of a comparable trade mark (IR) which is renewed in accordance with this paragraph.
Renewal of an expired IR(EU): territorial extension under Article 3ter(2)26
1
This paragraph applies where the protection in the European Union of an expired IR(EU) resulted from a request for territorial extension under Article 3ter(2).
2
The relevant date for the purposes of determining the date of renewal of the registration of the comparable trade mark (IR) which derives from the expired IR(EU) (the “relevant renewal date”) shall be—
a
the date of expiry of the period of ten years from the date on which the request for territorial extension was recorded in the International Register; or
b
where the international registration to which the expired IR(EU) is subject has been renewed since the date referred to in paragraph (a), the anniversary of that date, computed by reference to periods of ten years, following the last renewal of the registration prior to the date of the renewal notice (the “notice date”).
3
Where the relevant renewal date of a comparable trade mark (IR) falls prior to the notice date, the registrar must, as soon as reasonably practicable following receipt of a renewal notice, renew the registration of the comparable trade mark (IR) which derives from the expired IR(EU).
4
Where the relevant renewal date of a comparable trade mark (IR) falls before the expiry of the period of six months beginning with the notice date, sub-paragraphs (5) and (6) apply (and accordingly section 43(1) to (3A) does not apply).
5
The registration of the comparable trade mark (IR) may be renewed at the request of the proprietor before the relevant renewal date.
6
Where the registration of the comparable trade mark (IR) is not renewed in accordance with sub-paragraph (5)—
a
on, or as soon as reasonably practicable after, the relevant renewal date, the registrar must notify the proprietor that the registration of the comparable trade mark (IR) has expired and of the manner in which registration may be renewed; and
b
a request for renewal must be made within a period of six months beginning with the date of the notice.
7
If a request for renewal is made in respect of only some of the goods or services for which the comparable trade mark (IR) is registered, the registration is to be renewed for those goods or services only.
8
A comparable trade mark (IR) which is renewed under sub-paragraph (3) or pursuant to a request for renewal in accordance with sub-paragraph (5) or (6) shall be renewed for a period of ten years from the relevant renewal date (and accordingly, section 43(4) does not apply).
9
Where sub-paragraphs (5) and (6) apply to the renewal of the registration of a comparable trade mark (IR) and the registration is not renewed in accordance with those provisions, the registrar must remove the comparable trade mark (IR) from the register.
10
Section 43(6) applies to the registration of a comparable trade mark (IR) which is renewed in accordance with this paragraph.
11
Where a comparable trade mark (IR) is removed from the register pursuant to sub-paragraph (9), the rules relating to the restoration of the registration of a trade mark (referred to in section 43(5)) apply in relation to the restoration of the comparable trade mark (IR) to the register.
12
Where the relevant renewal date of a comparable trade mark (IR) falls on or after the expiry of the period of six months beginning with the notice date, section 43 applies to the renewal of the registration of the comparable trade mark (IR) and references to the expiry of the registration are to be treated as references to the relevant renewal date of the comparable trade mark (IR).
PART 3Applications for the extension of protection of international registrations to the European Union which are pending on F27IP completion day
Interpretation27
1
In this Part—
a
references to an “existing ITM application” are to an international application which contains a request for extension of the protection resulting from an international registration to the European Union under Article 3ter(1) in respect of which the conditions in sub-paragraph (2) are satisfied;
b
references to an “existing request for EU extension” are to a request for extension to the European Union of the protection resulting from an international registration made subsequent to the international registration pursuant to Article 3ter(2) in respect of which the conditions in sub-paragraph (3) are satisfied;
c
references to an “international application” are to an application to the International Bureau under Article 2(2) for the registration of a trade mark in the International Register.
2
The conditions referred to in sub-paragraph (1)(a) are—
a
the international application was filed before F27IP completion day with the Office of origin in accordance with Article 2(2); and
b
as at the time immediately before F27IP completion day, the request for extension of protection to the European Union mentioned in the international application has been neither granted nor refused by the European Union Intellectual Property Office.
3
The conditions referred to in sub-paragraph (1)(b) are—
a
the request for extension of protection to the European Union was filed before F27IP completion day with the Office of origin or the International Bureau (as the case may be) in accordance with Rule 24(2); and
b
as at the time immediately before F27IP completion day, the request for extension of protection to the European Union has been neither granted nor refused by the European Union Intellectual Property Office under the European Union Trade Mark Regulation.
4
In sub-paragraphs (2)(b) and (3)(b) —
a
the reference to the request for extension of protection to the European Union being “granted” means the European Union Intellectual Property Office having sent to the International Bureau a statement to the effect that protection is granted to the mark in the European Union in accordance with Rule 18ter; and
b
the reference to the request for extension of protection to the European Union being “refused” means the European Union Intellectual Property Office having sent to the International Bureau a notification of refusal in accordance with Article 5(1) or (2) which refusal has not been subsequently `withdrawn.
Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register prior to F27IP completion day28
1
This paragraph applies where—
a
either—
i
an existing ITM application has been filed with the International Bureau in respect of a trade mark and the date accorded to the international registration of the trade mark pursuant to Article 3(4) is a date prior to F27IP completion day; or
ii
an existing request for EU extension in respect of a trade mark has been filed with the International Bureau and the date on which it was recorded in the International Register pursuant to Article 3ter(2) is a date prior to F27IP completion day;
b
the person who filed the existing ITM application or (as the case may be) the existing request for EU extension, or a successor in title of that person, applies for registration of the same trade mark under this Act for some or all of the same goods or services, and
c
the application under this Act is made within a period beginning with F27IP completion day and ending with the end of the period referred to in sub-paragraph (4).
2
Where this paragraph applies, the relevant date for the purposes of establishing which rights take precedence is the earliest of—
a
the date accorded to the international trade mark the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);
b
the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention in respect of the existing ITM application or the existing request for EU extension (as the case may be).
3
The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(b) and made within the period mentioned in sub-paragraph (1)(c) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in sub-paragraph (2) and the date of the application under this Act.
4
In sub-paragraph (1)(c), the period referred to is the period of nine months beginning with the day after that on which F27IP completion day falls.
5
A right of priority claimed pursuant to Article 4 of the Paris Convention in respect of an existing request for EU extension is to be disregarded for the purposes of sub-paragraph (2)(b) unless the existing request for EU extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the existing request for EU extension was filed.
Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register on or after F27IP completion day29
1
This paragraph applies where—
a
either—
i
an existing ITM application has been filed with the International Bureau in respect of a trade mark and the date accorded to the international registration of the trade mark pursuant to Article 3(4) is a date on or after F27IP completion day; or
ii
an existing request for EU extension in respect of a trade mark has been filed with the International Bureau and the date on which it was recorded in the International Register pursuant to Article 3ter(2) is a date on or after F27IP completion day;
b
the person who filed the existing ITM application or (as the case may be) the existing request for EU extension, or a successor in title of that person, applies for registration of the same trade mark under this Act for some or all of the same goods or services; and
c
the application under this Act is made within the period of nine months beginning with the date referred to in sub-paragraph (a)(i) or (ii) (as the case may be).
2
Where this paragraph applies, the relevant date for the purposes of establishing which rights take precedence is the earliest of—
a
the date accorded to the international trade mark the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);
b
the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention in respect of the existing ITM application or the existing request for EU extension (as the case may be).
3
The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(b) and made within the period mentioned in sub-paragraph (1)(c) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in sub-paragraph (2) and the date of the application under this Act.
4
A right of priority claimed pursuant to Article 4 of the Paris Convention in respect of an existing request for EU extension is to be disregarded for the purposes of sub-paragraph (2)(b) unless the existing request for EU extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the existing request for EU extension was filed.
Right to claim seniority where seniority has been claimed by an existing ITM application or an existing request for EU extension30
1
Where an existing ITM application or an existing request for EU extension claims seniority of a trade mark which trade mark (“the senior mark”) is a registered trade mark or a protected international trade mark (UK), the applicant may claim seniority of the senior mark in an application for registration of a trade mark (a “relevant mark”) pursuant to this Part.
2
The effect of a seniority claim made pursuant to sub-paragraph (1) is that where following the registration of the relevant mark the proprietor of that mark surrenders the senior mark or allows it to lapse (wholly or partially), subject to paragraph 31, the proprietor of the relevant mark is deemed to continue to have the same rights as the proprietor would have had if the senior mark had continued to be registered in respect of all the goods or services for which it was registered prior to the surrender or lapse.
3
Provision may be made by rules as to the manner of claiming seniority pursuant to this paragraph.
4
In sub-paragraph (1), an application for registration of a trade mark “pursuant to this Part” means an application that is of the type mentioned in paragraph 28(1)(b) or 29(1)(b) and that is made within the period mentioned in paragraph 28(1)(c) or 29(1)(c) (as the case may be).
Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 3031
1
Where a relevant mark has claimed seniority of a registered trade mark which has been—
a
removed from the register under section 43; or
b
surrendered under section 45,
any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (2).
2
The declaration is that, if the trade mark had not been so removed or surrendered, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.
3
Where the declaration is that had the trade mark not been so removed or surrendered, the registration of it would have been liable to be—
a
revoked under section 46 with effect from a date prior to—
i
where the application for registration of the relevant mark was based on an existing ITM application and there has been no claim of priority, the date of registration accorded pursuant to Article 3(4) to the international trade mark the subject of the existing ITM application;
ii
where the application for registration of the relevant mark was based on an existing request for EU extension and there has been no claim of priority, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);
iii
where the application for registration of the relevant mark was based on an existing ITM application or an existing request for EU extension and there has been a claim of priority, the priority date accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention; or
b
declared invalid under section 47,
the seniority claimed for the relevant mark is to be treated as if it never had effect.
4
Where a relevant mark has claimed seniority of a protected international trade mark (UK) which has been—
a
removed from the International Register; or
b
surrendered under the Madrid Protocol,
any person may apply to the registrar or to the court for the declaration set out in sub-paragraph (5).
5
The declaration is that, if the trade mark had not been so removed or surrendered, the protection of the trade mark in the United Kingdom would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47.
6
Where the declaration is that had the trade mark not been so removed or surrendered, the registration of it would have been liable to be—
a
revoked under section 46 with effect from a date prior to—
i
where the application for registration of the relevant mark was based on an existing ITM application and there has been no claim of priority, the date of registration accorded pursuant to Article 3(4) to the international trade mark the subject of the existing ITM application;
ii
where the application for registration of the relevant mark was based on an existing request for EU extension and there has been no claim of priority, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);
iii
where the application for registration of the relevant mark was based on an existing ITM application or an existing request for EU extension and there has been a claim of priority, the priority date accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention; or
b
declared invalid under section 47,
the seniority claimed for the relevant mark is to be treated as if it never had effect.
7
Where the application for registration of the relevant mark was based on an existing request for EU extension a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the request for EU extension is to be disregarded for the purposes of sub-paragraphs (3)(a)(iii) and (6)(a)(iii) unless the request for territorial extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the request for EU extension was filed.
8
References in sub-paragraphs (5) and (6) to sections 46 and 47 are to those sections as they apply to a protected international trade mark (UK) under an order made pursuant to section 54.
9
Where a trade mark has been surrendered or allowed to lapse in respect of only some of the goods or services for which it is registered, the declaration in sub-paragraphs (2) and (5) is that if the goods or services had not been removed from the registration, the registration of the trade mark would have been liable to be revoked under section 46 with effect from a date specified in the declaration or declared invalid under section 47 and sub-paragraphs (3) and (6) shall be construed accordingly.
10
The provisions of paragraph 16 apply in relation to an application under this paragraph as they apply to an application under paragraph 15.
PART 4Transformation applications which are pending on F27IP completion day
Transformation applications32
1
In this Part, references to a “transformation application” are to an application for transformation of an international registration which has been cancelled (a “cancelled international registration”) into an application for registration of a European Union trade mark filed under Article 204 of the European Union Trade Mark Regulation in respect of which the conditions in sub-paragraph (2) are satisfied.
2
The conditions referred to in sub-paragraph (1) are—
a
the transformation application was filed before F27IP completion day with the European Union Intellectual Property Office;
b
as at the time immediately before F27IP completion day the transformation application has neither been granted nor refused by the European Union Intellectual Property Office under the European Union Trade Mark Regulation; and
c
the international registration was not cancelled at the request of the Patent Office as Office of origin for the international registration of the trade mark.
3
In sub-paragraph (2)(b)—
a
the reference to the transformation application being “granted” means a European Union trade mark being registered under the European Union Trade Mark Regulation pursuant to the transformation application; and
b
the reference to the transformation application being “refused” means the transformation application being subject to the provisions in Article 204(5) of the European Union Trade Mark Regulation.
Application for registration based upon a cancelled international registration33
1
This paragraph applies where—
a
a person who has filed a transformation application in respect of a cancelled international registration, or a successor in title of that person, applies for registration under this Act of a trade mark which is the same as the trade mark which was the subject of the cancelled international registration and in respect of some or all of the same goods or services included in the international registration;
b
the application for registration under this Act is made within the period beginning with F27IP completion day and ending with the end of the relevant period; and
c
on or before the date of the transformation application on which the application for registration under this Act is based the trade mark that was the subject of the cancelled international registration—
i
was protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation; or
ii
was the subject of an existing ITM application or an existing request for EU extension which, as at that date, had neither been granted nor refused by the European Union Intellectual Property Office (the references to “granted” and “refused” having the same meaning as given by paragraph 27(4)).
2
Where this paragraph applies by virtue of sub-paragraph (1)(c)(i), the relevant date for the purposes of establishing which rights take precedence is the earliest of—
a
where—
i
the protection in the European Union of the trade mark that was the subject of the cancelled international registration resulted from a request for territorial extension under Article 3ter(1), the date of registration accorded to the international registration pursuant to Article 3(4); or
ii
the protection in the European Union of the trade mark that was the subject of the cancelled international registration resulted from a request for territorial extension under Article 3ter(2), the date on which the request was recorded in the International Register; and
b
the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention in respect of the request referred to in paragraph (a)(i) or (ii).
3
Where this paragraph applies by virtue of sub-paragraph (1)(c)(ii), the relevant date for the purposes of establishing which rights take precedence is the earliest of—
a
the date accorded to the trade mark that was the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(2); and
b
the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 4 of the Paris Convention in respect of the request referred to in paragraph (a).
4
A right of priority claimed pursuant to Article 4 of the Paris Convention in respect of a request for territorial extension to the European Union made under Article 3ter(2) is to be disregarded for the purposes of sub-paragraphs (2)(b) and (3)(b) unless the request for extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the request for extension was filed.
5
The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(a) and made within the period mentioned in sub-paragraph (1)(b) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in sub-paragraph (2) or (3) (as the case may be) and the date of the application for registration of the trade mark under this Act.
6
Paragraphs 30 and 31 apply in relation to an application for a trade mark under this Act of the type mentioned in sub-paragraph (1)(a) and made within the period mentioned in sub-paragraph (1)(b), as they apply in relation to an application for registration of a trade mark pursuant to Part 3, but as if—
a
the references to an existing ITM application or an existing request for EU extension and an existing ITM application and an existing request for EU extension had the same meaning as they have in this paragraph; and
b
the references to an existing ITM application included references to a “protected EU designation”.
7
In this paragraph—
a
an “existing ITM application” means an international application which contains a request for extension of the protection resulting from an international registration to the European Union under Article 3ter(1) which has been filed with the Office of origin in accordance with Article 2(2);
b
an “existing request for EU extension” means a request for extension to the European Union of the protection resulting from an international registration made subsequent to the international registration pursuant to Article 3ter(2) which has been filed with the Office of origin or the International Bureau (as the case may be) in accordance with Rule 24(2);
c
the “relevant period” means the period of nine months beginning with the day after that on which F27IP completion day falls;
d
a “protected EU designation” means an international registration which prior to its cancellation was protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation.
PART 5Interpretation
Interpretation34
1
In this Schedule—
“comparable trade mark (IR)” has the meaning given by paragraph 1(4);
“the Common Regulations” means the Common Regulations under the Madrid Agreement concerning the international registration of marks and the Madrid Protocol in force on 1^st November 2017 M11;
“corresponding (IR)” has the meaning given by paragraph 3(4);
“existing IR(EU)” has the meaning given by paragraph 1(1);
“expired IR(EU)” has the meaning given by paragraph 23(1);
“international application” has the meaning given by paragraph 27(1)(c);
“the International Register” has the meaning given by paragraph 1(11)(a);
“international registration” has the meaning given by paragraph 1(11)(b);
“international trade mark” has the meaning given by paragraph 1(11)(c);
“Office of origin” has the meaning given by Article 2(2);
“the previous EUTM Regulations” means Council Regulation (EC) No 207/2009 of 26th February 2009 on the European Union trade mark M12 and Council Regulation (EC) No 40/94 of 20^th December 1993 on the Community trade mark M13;
“protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008 M14;
2
References in this Schedule to—
a
an “Article” are to an Article of the Madrid Protocol;
b
an Article of the European Union Trade mark Regulation include references to any equivalent Article contained in the previous EUTM Regulations;
c
the European Union Trade Mark Regulation include references to the previous EUTM Regulations;
d
an international trade mark include references to an international trade mark which is dealt with for the purposes of the European Union Trade Mark Regulation as an EU collective mark or an EU certification mark;
e
a “Rule” are to a Rule of the Common Regulations.
3
In this Schedule, references to a request for territorial extension, in relation to an existing IR(EU) which is the subject of a separate international registration within the meaning of paragraph 1(3), are to the request made before the separate international registration was created.

SCHEDULE 5Fees payable in respect of re-registered designs, re-registered international designs and comparable trade marks (IR)

Regulation 7

PART 1Fees payable in respect of a re-registered design or a re-registered international design

I1411

1

The extension of the duration of the right in a re-registered design or a re-registered international design under section 8 of the Act is subject to the payment of a renewal fee and payment of the additional fee which applies in the circumstances referred to in section 8(4) of the Act.

2

But no additional fee is payable if the application for extension under section 8(4) of the Act relates to a re-registered design, or a re-registered international design, the right in which expired within the period F28... beginning with F29IP completion day and ending with the end of the relevant period.

3

In sub-paragraph (2), “the relevant period” means the period of six months F30beginning with the day after that on which F31IP completion day falls.

I1422

The restoration of the right in a re-registered design or a re-registered international design under section 8A of the Act is subject to the payment of a renewal fee and payment of the additional fee which applies in the circumstances referred to in section 8(4) of the Act.

I1433

A request for a certified copy of an entry in the register or a certified extract from the register relating to a re-registered design or a re-registered international design made under section 17(5) of the Act is subject to payment of a fee.

I1444

The registrar may by rules provide that any person who applies for an uncertified copy or extract from the register in respect of a re-registered design or re-registered international design shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts.

I1455

A request made to correct any error in the representation of a re-registered design or re-registered international design, or any error in the register in respect of a re-registered design or re-registered international design, made under section 21(2) of the Act is subject to payment of a fee.

I1466

A request for information under section 23 of the Act relating to a design which is a re-registered design or re-registered international design is subject to payment of a fee.

I1477

The registrar may by regulations make provision about fees in relation to the making of requests to the registrar under section 28A for an opinion on specified matters relating to re-registered designs or re-registered international designs.

I1488

The Registered Designs (Fees) Rules 2016 M15 apply to re-registered designs and re-registered international designs as they apply to other registered designs.

PART 2Fees payable in respect of a comparable trade mark (IR)

I1499

The renewal of the registration of a comparable trade mark (IR) under section 43 of the 1994 Act is subject to the payment of a renewal fee and, in the circumstances referred to in section 43(3) of the 1994 Act, payment of an additional renewal fee.

I15010

The renewal of the registration of a comparable trade mark (IR) under paragraph 5 of Schedule 2B to the 1994 Act is subject to the payment of a renewal fee as if the renewal had been requested under section 43(1) of the 1994 Act before the expiry of the registration.

I15111

The renewal of a comparable trade mark (IR) under paragraph 26(5) or (6) of Schedule 2B to the 1994 Act is subject to the payment of a renewal fee as if the renewal had been requested under section 43(1) of the 1994 Act before the expiry of the registration.

I15212

If a renewal fee is paid in respect of only some of the goods or services for which a comparable trade mark (IR) is registered, the registration is to be renewed for those goods or services only.

I15313

A request for information or inspection of documents relating to a comparable trade mark (IR) made under section 67 of the 1994 Act is subject to payment of the appropriate fee (if any).

I15414

The Trade Marks (Fees) Rules 2008 M16 apply to comparable trade marks (IR) as they apply to other registered trade marks.

I15515

The Commissioners for Her Majesty's Revenue and Customs may by regulations made by statutory instrument require the proprietor or a licensee of a comparable trade mark (IR) who is giving notice under section 89 of the 1994 Act to pay such fees in respect of the notice as may be specified by the regulations.

I15616

Regulations under paragraph 15 may make different provision as respects different classes of case to which they apply and may include such incidental and supplementary provisions as the Commissioners consider expedient.

I15717

A statutory instrument containing regulations under paragraph 15 is subject to annulment in pursuance of a resolution of either House of Parliament.

I15818

The Trade Marks (Customs) Regulations 1994, to the extent that they make provision which could be made under paragraph 15, are to be treated as if they had been made under paragraph 14 as well as under section 90 of the 1994 Act.

SCHEDULE 6Amendments to the Registered Designs Rules

Regulation 8

I1591

The Registered Designs Rules are amended as follows.

I1602

After rule 2A (directions of the registrar), insert—

Re-registered designs2B
Except where provided to the contrary, these Rules apply to a re-registered design and a re-registered international design as they apply to other registered designs.

I1613

In rule 13(2)—

a

at the end of (2) insert—

except where the registered design is a re-registered design or a re-registered international design where the duration of the right in the design ends within the period of six months beginning with F32IP completion day (as defined in section 20(1) of the European Union (Withdrawal) Act 2018) and ending with the end of the period of six months beginning with the day after that on which F32IP completion day falls (a “relevant re-registered design”)

b

after (2) insert—

2A
The period prescribed for the purposes of section 8A(1) in respect of a relevant re-registered design or a re-registered international design shall be the period of 12 months beginning immediately after the date on which the registrar gave notice under section 8(3).

I193F23A

After rule 15 insert—

Invalidation of existing registered Community design: invalidation notice and procedure on application for derogation; Schedule 1A paragraph 9A15A
1
An invalidation notice under paragraph 9A of Schedule 1A must—
a
identify the existing registered Community design by the number under which it was registered in the RCD register immediately before IP completion day, together with a representation of the design,
b
be accompanied by a copy of the decision (including any decision determined on appeal) pursuant to which the existing registered Community design was declared to be invalid, and
c
include a statement confirming that the decision pursuant to which the registered Community design was declared invalid (whether wholly or partly) has been finally determined.
2
Where an invalidation notice is sent to the registrar by the proprietor of the re-registered design which derives from the existing registered Community design, the invalidation notice must be accompanied by—
a
a notice (a “derogation notice”) in writing to the registrar that, based upon the provisions in paragraph 9A(4) of Schedule 1A, the re-registered design should not be declared invalid (whether wholly or partly), and
b
a statement of the reasons why paragraph 9A of Schedule 1A applies (a “statement”) together with relevant supporting evidence (“supporting evidence”).
3
Where the proprietor of a re-registered design submits an invalidation notice to the registrar but fails to send a derogation notice, a statement, or supporting evidence, the registration of the re-registered design which derives from the existing registered Community design identified in the invalidation notice must be declared invalid to the same extent as the existing registered Community design, unless the registrar directs otherwise.
4
Where the registrar has received an invalidation notice from a person other than the proprietor of the re-registered design which derives from the existing registered Community design, the registrar must as soon as reasonably practicable after receipt of the invalidation notice—
a
send a copy of the invalidation notice to the proprietor of the re-registered design which derives from the existing registered Community design identified in the invalidation notice, and
b
notify the proprietor of the re-registered design which derives from the existing registered Community design that based upon the declaration of invalidity of the existing registered Community design, the re-registered design will be declared invalid to the same extent as the existing registered Community design from which it derives.
5
Where the registrar has become aware of the situation referred to in paragraph 9A of Schedule 1A otherwise than by an invalidation notice, the registrar must as soon as reasonably practicable after becoming aware of that situation notify the proprietor of the re-registered design which derives from the existing registered Community design in the terms provided in paragraph (4)(b).
6
The proprietor of the re-registered design referred to in paragraphs (4) and (5) must, within such period of not less than one month as may be specified in the notice referred to in paragraphs (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 re-registered design must be declared invalid to the same extent as the registered Community design from which the re-registered design derives, unless the registrar directs otherwise.
7
The registrar must, in reaching a decision as to whether paragraph 9A of Schedule 1A applies to a re-registered design, have regard to the statement and supporting evidence filed by the proprietor of the re-registered design 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.

I1624

Omit rule 23.

I1635

In rule 26 (certificate of registration), after paragraph (3) insert “ (4) This rule shall not apply to re-registered designs or re-registered international designs. ”

I1646

In rule 27 (registration of interests), in paragraph (1)—

a

at the end of sub-paragraph (d), for “.”, substitute “ ; ”;

b

after sub-paragraph (d) insert—

e
where the design to be registered is a re-registered design (within the meaning of “re-registered design” in paragraph 1(2) of Schedule 1A) an indication that the re-registered design was on F33IP completion day the subject of a registration at the European Union Intellectual Property Office, including the number of the registration of the registered Community design from which the re-registered design derives.

I1657

In rule 33 (copies of representations and specimens), after paragraph (2) insert “ (3) This rule shall not apply to re-registered designs or re-registered international designs. ”

I166F348

1

Rule 42 (address for service) is amended as follows.

2

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

3

After sub-paragraph (1)(c) insert—

d
a proprietor of a re-registered design who sends a derogation notice to the registrar under rule 15A.

4

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

I194F39

1

Rule 43 (failure to furnish an address for service) is amended as follows.

2

At the end of sub-paragraph 4(c) omit “, or” and substitute “;”.

3

After sub-paragraph (4)(c) insert—

d
in the case of a proprietor who sends a derogation notice to the registrar, the registrar must proceed as if the proprietor had not sent a derogation notice.

SCHEDULE 7Amendments to the Trade Marks Rules

Regulation 9

I1671

The Trade Marks Rules are amended as follows.

I1682

In rule 2, after paragraph (2) insert—

2A
Terms defined in Part 5 of Schedules 2A and 2B have the same meaning in these Rules.

I1693

Before rule 3 insert—

Comparable trade mark (IR)2B
These Rules apply to a comparable trade mark (IR) as they apply to other registered trade marks.

I1704

After rule 4 insert—

Prescribed comparable trade mark (IR) fees4A
In relation to a comparable trade mark (IR), “prescribed” in rule 4(1) means prescribed by virtue of regulations under Schedule 4 to the European Union (Withdrawal) Act 2018.

I1715

Before rule 6 insert—

Application for registration based upon an existing ITM application, existing request for EU extension or transformation application; Schedule 2B paragraph 28, 29 or 335B
1
Where an application for registration is made in accordance with paragraph 28, 29 or 33 of Schedule 2B, the application for registration under rule 5 must specify—
a
the number of the international registration to which the application relates;
b
the date referred to in paragraph 28(2)(a), 29(2)(a) or 33(2)(a) or (3)(a) of Schedule 2B (as the case may be) in respect of that application; and
c
the date of priority (if any) accorded pursuant to a right of priority claimed in respect of the existing ITM application the existing request for EU extension or the cancelled international registration the subject of a transformation application.
2
Where—
a
a right of priority has been claimed (“a priority claim”) in respect of the existing ITM application, an existing request for EU extension or the cancelled international registration the subject of a transformation application; or
b
the seniority of a registered trade mark or a protected international trade mark (UK) has been claimed (“a seniority claim”) pursuant to paragraph 30 or 33 of Schedule 2B,
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 date referred to in paragraph (1)(b) in respect of the existing ITM application, existing request for EU extension or transformation application, the representation of the mark and the goods or services covered by that 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.

I1726

In rule 14, after paragraph (3) insert—

3A
References in paragraph (2) to the proprietor of a trade mark also include a person who has applied for registration of a trade mark which, if registered, would be an earlier trade mark by virtue of section 6(1)(ab).

I1737

Before rule 30 insert—

Filing of regulations for International collective and certification marks; Schedule 2B, paragraph 429B
Regulations governing the use of a comparable trade mark (IR) which is a collective mark or a certification mark and any translation required to be filed under paragraph 4 of Schedule 2B must be filed within a period of three months following the date of notice from the registrar.

I1748

1

Rule 47 is amended as follows.

2

After paragraph (a) insert—

aa
in the case of a comparable trade mark (IR), the date of registration as determined in accordance with paragraph 1 of Schedule 2B

3

After paragraph (b) insert—

bb
in the case of a comparable trade mark (IR), the date of completion of the registration procedure which is the date of publication by the European Union Intellectual Property Office of the matters referred to in Article 190(2) of the European Union Trade Mark Regulation in respect of the existing IR(EU) from which the comparable trade mark (IR) derives

4

Before paragraph (d) insert—

cc
in the case of a comparable trade mark (IR)—
i
the priority date (if any) accorded pursuant to a claim of priority filed in respect of the corresponding (IR) pursuant to Article 4 of the Paris Convention; and
ii
the number of the registered trade mark or international trade mark (UK) from which the corresponding (IR) claimed seniority (if any) and the seniority date;
cd
where the mark is registered pursuant to an application referred to in paragraph 28, 29 or 33 of Schedule 2B—
i
the priority date (if any) accorded pursuant to a claim to a right to priority made under paragraph 28(2)(b) (taking account of paragraph 28(5)), 29(2)(b) (taking account of paragraph 29(4)) or 33(2)(b) or (3)(b) (taking account of paragraph 33(4)) of Schedule 2B; 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

After paragraph (n) insert—

o
in the case of a comparable trade mark (IR) an indication that it is derived from an existing IR(EU), including the number of the international registration to which the existing IR(EU) is subject.

SCHEDULE 8Other amendments to legislation

Regulation 10(1)

PART 1Further amendments to the 1949 Act

I1751

The 1949 Act is further amended as follows.

I1762

In section 1B M17 (requirement of novelty and individual character), in subsection (6)(a), for “the European Economic Area”, substitute “ the geographical area comprising the United Kingdom and the European Economic Area ”.

I1773

In section 11ZA M18 (grounds for invalidity of registration), in subsection (1A)(b) omit sub- paragraphs (i) and (ii) and insert “ by virtue of registration under this Act or an application for such registration. ”

I1784

In section 11ZB M19 (applications for declaration of invalidity), in subsection (4)—

a

omit “or the Community Design Regulation”;

b

omit “, the holder of the registered Community design”.

I1795

In section 20 M20 (rectification of register), in subsection (1B)—

a

omit “or the Community Design Regulation”;

b

omit “, the holder of the registered Community design”.

I1806

In section 24D M21 (order as to disposal of infringing articles etc), in subsection (5)—

a

in paragraph (b) at the end of the paragraph (after the semi-colon in that paragraph) insert “ or ”;

b

at the end of paragraph (c) omit “or”;

c

omit paragraph (d).

F357

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

I1818

After section 25 M22 (certificate of contested validity of registration), insert—

25APrivilege for communications with those on the special list of professional designs representatives
1
This section applies to communications as to any matter relating to the protection of a design as a registered design.
2
Any such communication—
a
between a person and a professional designs representative; or
b
for the purposes of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing a professional designs representative,
is privileged from, or in Scotland protected against, disclosure in legal proceedings in the same way as a communication between a person and a solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing a solicitor.
3
In subsection (2) “professional designs representative” means a person whose name appears on the special list of professional representatives for design matters maintained by the European Union Intellectual Property Office referred to in Article 78(4) of Council Regulation (EC) 6/2002 of 12th December 2001 on Community designs as it has effect in EU law.

I1829

In section 35ZA M23 (offence of unauthorised copying etc of design in course of business), omit subsection (7).

I18310

In section 44 M24 (interpretation), in subsection (1), omit the definitions of “Community Design Regulation” and “registered Community design”.

I18411

a

in section 217 M26 (qualifying persons and qualifying countries), in subsection (3)—

i

in paragraph (b), at the end insert “ or ”;

ii

omit paragraph (c) together with “or” at the end;

b

in section 220 M27 (qualification by reference to first marketing), in subsection (1)(b)—

i

after “Kingdom” insert “ or ”;

ii

omit “or another member State of the European Economic Community”.

PART 3Amendments to the Design Right (Proceedings before the Comptroller) Rules 1989

I18512

The Design Right (Proceedings before the Comptroller) Rules 1989 M28 are amended as follows.

I18613

In rule 22 (costs), in paragraph (2), omit “or another member State of the European Union”.

I18714

In rule 23 (service and translation of documents), in paragraph (1A), for “another”, substitute “ an ”.

I18815

In Schedule 1 (forms) for “another”, each time it appears before “EEA state”, substitute “an”.

PART 4Further amendments to the 1994 Act

I18916

The 1994 Act is further amended as follows.

I19017

1

Section 6 M29 is amended as follows.

2

Before subsection (1)(b) insert—

ab
a comparable trade mark (IR) or a trade mark registered pursuant to an application made under paragraph 28, 29 or 33 of Schedule 2B which has a valid claim to seniority of an earlier registered trade mark or protected international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired;

3

At the end of subsection (2) insert “ (taking account of subsection (2C)) ”.

4

Before subsection (3) insert—

2B
References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made pursuant to paragraph 28, 29 or 33 of Schedule 2B and which if registered would be an earlier trade mark by virtue of subsection (1)(ab), subject to its being so registered.
2C
Where an application for registration of a trade mark has been made pursuant to paragraph 25 of Schedule 2A or paragraph 28, 29 or 33 of Schedule 2B, subsection (l)(a) is to apply as if the date of application for registration of the trade mark were—
a
in the case of an application made pursuant to paragraph 25 of Schedule 2A, the relevant date referred to in paragraph 25(2) in respect of that application;
b
in the case of an application made pursuant to paragraph 28 of Schedule 2B, the relevant date referred to in paragraph 28(2) in respect of that application (taking account of paragraph 28(5));
c
in the case of an application made pursuant to paragraph 29 of Schedule 2B, the relevant date referred to in paragraph 29(2) in respect of that application (taking account of paragraph 29(4));
d
in the case of an application made pursuant to paragraph 33 of Schedule 2B, the relevant date referred to in paragraph 33(2) or (3) (as the case may be) in respect of that application (taking account of paragraph 33(4)).

I19118

In section 53 M30 omit “ “international trade mark (EC)” means a trade mark which is entitled to protection in the European Union under that Protocol;”.

I19219

1

Section 104 is amended as follows.

2

Before the entry in the table for “Convention country” insert—

comparable trade mark (IR)
Schedule 2B, paragraph 1(4)

3

Before the entry in the table for “date of filing” insert—

date of application (comparable trade mark (IR))
Schedule 2B, paragraph 1(10)(b)

4

Before the entry in the table for “date of registration” insert—

date of filing (comparable trade mark (IR))
Schedule 2B, paragraph 1(10)(a)

5

Before the entry in the table for “defendant (in Scotland)” insert—

date of registration (comparable trade mark (IR))
Schedule 2B, paragraph 1(6)

6

Omit the entry in the table for—

international trade mark (EC)
Section 53

(This note is not part of the Regulations)

These Regulations are made in exercise of the powers conferred by—

section 8(1) of the European Union (Withdrawal) Act 2018 (c.16) (“the EUWA”) in order to address failures of retained EU law to operate effectively and other deficiencies; and
paragraph 1 of Schedule 4 of the EUWA (in relation to the charging of fees or other charges by the registrar in connection with the exercise of functions conferred on the registrar in relation to certain designs and trade marks by virtue of provision made under section 8(1)).

Regulation 3 and Schedule 1 make amendments to Council Regulation (EC) No 6/2002 of 12^th December 2001 on Community Designs (as amended) (the “EU Design Regulation”) and the Community Designs Regulations 2005 (the “2005 Regulations”). The main effect of these amendments is to—

revoke provisions of this legislation so far as they relate to registered designs;
prospectively rename unregistered Community designs coming into force on or after exit day as “supplementary unregistered designs”;
provide that supplementary unregistered designs are protected where they are disclosed in the United Kingdom or countries or territories that are designated by statutory instrument under powers inserted into the EU Design Regulation.

Regulation 4 and Schedule 2 make provision in connection with the continued protection of an unregistered Community design which is protected before exit day. The amendments made by regulation 3 and Schedule 1 do not apply to such unregistered designs. Instead the EU Design Regulation and the 2005 Regulations continue to apply to such designs subject to the modifications set out in Schedule 1.

Regulation 5(a) and Schedule 3 make provision for the protection under the Registered Designs Act 1949 (the “1949 Act”) of a design which is at exit day the subject of a registration at the European Union Intellectual Property Office (“EUIPO”) under the EU Design Regulation (or where such registration has expired within 6 months of exit day). Provision is also made allowing makers of applications to the EUIPO which are pending at exit day to apply for protection under the 1949 Act treating applications under the 1949 Act as having the same filing date and rights of priority as the application to the EUIPO.

Regulation 5(b) and Schedule 3 make further provision for the protection of a design which at exit day is protected in the European Union under the Geneva Act of the Hague Agreement by virtue of an international registration which designates the European Union (or where such registration has expired within 6 months of exit day). Provision is also made allowing the holders at exit day of international registrations which have not yet achieved protected status to make applications for registration under the 1949 Act which are treated as having a filing date of the date of the international registration and the same rights of priority.

Regulation 6 and Schedule 4 make provision for the registration of a trade mark which at exit day is protected in the European Union under the Madrid Protocol by virtue of an international registration which designates the European Union (or where such registration has expired within 6 months of exit day). Provision is also made allowing the holders at exit day of international registrations which have not yet achieved protected status to make applications for registration under the Trade Marks Act 1994 which are treated as having a filing date of the date of the international registration and the same rights of priority. Similar provisions are made in relation to transformation applications which are pending on exit day.

Regulation 7 and Schedule 5 make provision for the payment of renewal and other fees in relation to designs re-registered under the 1949 Act and trade marks re-registered under the 1994 Act in consequence of provision made by these Regulations.

Regulation 8 and Schedule 6 make amendments to the Registered Design Rules 2006 in consequence of other provision made by these Regulations.

Regulation 9 and Schedule 7 make amendments to the Trade Mark Rules 2008 in consequence of other provision made by these Regulations.

Regulation 10 and Schedule 8 make a number of amendments to other legislation in consequence of other provision made in the Regulations.

Regulation 11 revokes the Community Designs (Designation of Community Design Courts) 2005 Regulations.

An impact assessment has not been published for this instrument as no, or no significant, impact on the private, public and voluntary sectors is foreseen. An explanatory memorandum is available alongside this instrument on the Legislation UK website atwww.legislation.gov.uk.