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

(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).

4

Omit rule 23.

5

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. ”

6

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 IP 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.

7

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. ”

8

• (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”.

SCHEDULE 7 — Amendments to the Trade Marks Rules

1

The Trade Marks Rules are amended as follows.

2

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.

3

Before rule 3 insert—

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

4

After rule 4 insert—

(4A) 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.

5

Before rule 6 insert—

(5B) (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.

6

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).

7

Before rule 30 insert—

(29B) 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.

8

• (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 8 — Other amendments to legislation

PART 1 — Further amendments to the 1949 Act

1

The 1949 Act is further amended as follows.

2

In section 1B (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 ”.

3

In section 11ZA (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. ”

4

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

• (a) omit “or the Community Design Regulation”;

• (b) omit “, the holder of the registered Community design”.

5

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

• (a) omit “or the Community Design Regulation”;

• (b) omit “, the holder of the registered Community design”.

6

In section 24D (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).

7

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

8

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

(25A) 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. (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, (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.

9

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

10

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

PART 2 — Amendments to the Copyright, Designs and Patents Act 1988

11

The Copyright, Designs and Patents Act 1988 is amended as follows—

• (a) in section 217 (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 (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 3 — Amendments to the Design Right (Proceedings before the Comptroller) Rules 1989

12

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

13

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

14

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

15

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

PART 4 — Further amendments to the 1994 Act

16

The 1994 Act is further amended as follows.

17

• (1) Section 6 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)).

18

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

19

• (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

Signed

Chris Skidmore — Minister of State for Universities, Science, Research and Innovation — 2019-03-18

We consent to the making of these regulations

Rebecca Harris — Jeremy Quin — Two of the Lords Commissioners of Her Majesty's Treasury — 2019-03-15

Explanatory note

(This note is not part of the Regulations)

Footnotes

3A

After rule 15 insert—

(15A) (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.

9

• (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.

Editorial notes