UNITED KINGDOM STATUTORY INSTRUMENT
2019 No. 638
Exiting The European Union
Designs
Trade Marks
The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019
Made 18th 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 2018and by section 36 of the Registered Designs Act 1949and by section 78 of the Trade Marks Act 1994and 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.
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Citation and commencementCitation and commencement
1. 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.
Interpretation
2. 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;
“continuing unregistered Community design” has the meaning given by regulation 4(2);
“Design Regulation” means Council Regulation (EC) No 6/2002of 12th December 2001 on Community Designs as amended by Council Regulation (EC) 1891/2006of 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; and
“Trade Marks Rules” means the Trade Marks Rules 2008.
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Amendments to the Design Regulation and the 2005 Regulations relating to the creation and application of the supplementary unregistered design etc.Amendments to the Design Regulation and the 2005 Regulations relating to the creation and application of the supplementary unregistered design etc.
3.—(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.
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Unregistered Community designs existing immediately before exit dayUnregistered Community designs existing immediately before exit day
4.—(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 exit day and remains protected on exit 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)
(a) as regards the Design Regulation, the modifications set out in Part 1 of Schedule 2; and
(b)
(b) as regards the 2005 Regulations, the modifications set out in Part 2 of Schedule 2.
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Certain registered Community designs and international designs to have effect under the 1949 Act
Certain registered Community designs and international designs to have effect under the 1949 Act
5. 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 exit day and about certain applications for registered Community designs made before exit day; and
(b) for certain international registered designs designating the European Union to be treated as registered under the 1949 Act from exit day and about certain applications for international designs designating the European Union made before exit day.
International trade marks
6. 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 exit day and about certain applications for the protection of an international trade mark in the European Union and transformation applications made before exit day.
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Fees payable in respect of re-registered designs, international re-registered designs, and comparable trade marks (IR)Fees payable in respect of re-registered designs, international re-registered designs, and comparable trade marks (IR)
7. 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 Rules
8. Schedule 6, which contains amendments to the Registered Designs Rules, has effect.
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Amendments to the Trade Marks RulesAmendments to the Trade Marks Rules
9. Schedule 7, which contains amendments to the Trade Marks Rules, has effect.
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Other amendments to legislationOther amendments to legislation
10.—(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.
Revocation
11. The Community Designs (Designation of Community Design Courts) Regulations 2005are revoked.
Chris Skidmore
Minister of State for Universities, Science, Research and Innovation
Department for Business, Energy and Industrial Strategy
18th March 2019
Rebecca Harris
Jeremy Quin
Two of the Lords Commissioners of Her Majesty’s Treasury
15th March 2019
SCHEDULE 1
Regulation 3
Amendments to the Design Regulation and 2005 Regulations relating to the creation and application of the supplementary unregistered design right etc.
1
Design Regulation and supplementary unregistered designsPART 1
Design Regulation and supplementary unregistered designs
1. Introductory
(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.
2. Substitution of Article 1 – supplementary unregistered designs
For Article 1, substitute—
“Supplementary unregistered design
Article 1.—(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 exit day is not protected under this Regulation.”.
3. Omission of Article 2 (European Union Intellectual Property Office)
Omit Article 2.
4. Amendments to Article 3 (definitions)
In Article 3, after point (c), insert—
“(d)
“(d) ‘qualifying country’ and ‘qualifying territory’ mean a country or territory designated by regulations made under Article 7.”.
5. Amendments to Article 4 (requirements for protection)
In Article 4(1), for “Community”, substitute “supplementary unregistered”.
6. Amendments to Article 5 (novelty)
In Article 5(1)—
(a) in point (a)—
(i) for “an”, substitute “a supplementary”;
7. Amendments to Article 6 (individual character)
In Article 6(1)—
(a) in point (a)—
(i) for “an”, substitute “a supplementary”;
8. Substitution of Article 7 (disclosure)
For Article 7, substitute—
“Disclosure
Article 7.—(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 exit 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 exit 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.”
9. Amendments to Articles 8 to 10 (technical function, interconnections, public policy and morality)
In Articles 8, 9 and 10(1), for “Community”, in each place it appears, substitute “supplementary unregistered”.
10. Amendments to Article 11 (commencement and term of protection of the unregistered Community design)
In Article 11—
(a) in the heading—
(i) before “unregistered”, insert “supplementary”;
