The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020

JurisdictionUK Non-devolved
CitationSI 2020/1050

2020No. 1050

EXITING THE EUROPEAN UNION

INTELLECTUAL PROPERTY

The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020

Made28thSeptember2020

Coming into force in accordance with regulation 1(2)

The Secretary of State makes these Regulations in exercise of the powers conferred by sections 8(1), 8B(1)(a) and 8B(2)(a)( 1) of, and paragraph 1 of Schedule 4 and paragraph 21(b) of Schedule 7 to, the European Union (Withdrawal) Act 2018( 2) and by section 36 of the Registered Designs Act 1949( 3) and by section 78 of the Trade Marks Act 1994( 4) and with the consent of the Treasury.

In accordance with paragraphs 1(1) and 12(1) of Schedule 7 to the European Union (Withdrawal) Act 2018, a draft of this instrument has been laid before Parliament and approved by resolution of each House of Parliament.

PART 1

Introduction

Citation, commencement and interpretation

1.—(1) These Regulations may be cited as the Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020.

(2) These Regulations come into force immediately before IP completion day except Parts 7 and 8 which come into force on IP completion day.

(3) 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( 5);

“Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs( 6) as amended by Council Regulation (EC) No 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( 7); and

“Registered Designs Rules” means the Registered Designs Rules 2006( 8).

PART 2

Amendments to the Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019

2. The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019( 9) are amended in accordance with this Part.

3. For regulation 31(a) substitute—

“(a) in paragraph (3)—

(i) in sub-paragraph (a) omit “and the relevant database maintained by the Office for Harmonization in the Internal Market; and”;

(ii) omit sub-paragraph (b);”.

4. In regulation 38, for “exit day” substitute “IP completion day”.

PART 3

Amendments to the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019

5. The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019( 10) are amended in accordance with this Part.

6. In regulation 2(1) for “exit day”, in each place it occurs, substitute “IP completion day”.

PART 4

Amendments to the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019

7. The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019( 11) are amended in accordance with this Part.

8. In regulation 2, for “exit day”, in both places it occurs, substitute “IP completion day”.

9. Schedule 1 (Amendments to the 1994 Act to make provision for certain trade marks registered as European Union trade marks to be treated as registered trade marks and about certain applications for such marks) is amended as follows—

(a) in section 52A of the 1994 Act( 12) (to be inserted by paragraph 2), for “exit day”, in both places it occurs, substitute “IP completion day”;

(b) in Schedule 2A to the 1994 Act (to be inserted by paragraph 3)—

(i) for “exit day”, in each place it occurs, substitute “IP completion day”;

(ii) after paragraph 21, insert—

“Existing EUTM: effect of invalidity or revocation

21A.—(1) This paragraph applies where, on IP completion day, an existing EUTM is the subject of proceedings under Article 58 (Grounds for revocation), 59 (Absolute grounds for invalidity) or 60 (Relative grounds for invalidity) which have been instituted but not finally determined before IP completion day (“cancellation proceedings”).

(2) Subject to sub-paragraph (4), where—

(a) the existing EUTM is revoked or declared invalid (whether wholly or partially) pursuant to a decision in the cancellation proceedings which is finally determined, and

(b) the registrar has—

(i) received notice of the situation referred to in paragraph (a) (“a cancellation notice”), or

(ii) otherwise become aware of the situation referred to in paragraph (a),

the registration of the comparable trade mark (EU) which derives from the existing EUTM must be revoked or declared invalid to the same extent as the existing EUTM.

(3) Where (by virtue of sub-paragraph (2)) the registration of a comparable trade mark (EU) is revoked or declared invalid to any extent, the registrar must—

(a) remove the comparable trade mark (EU) from the register (where the revocation or declaration of invalidity relates to all the goods or services for which the existing EUTM was registered); or

(b) amend the entry in the register listing the goods or services for which the comparable trade mark (EU) is registered (where the revocation or declaration of invalidity relates to only some of the goods or services for which the existing EUTM was registered).

(4) The registration of a comparable trade mark (EU) must not be revoked or declared invalid under sub-paragraph (2) where the grounds on which the existing EUTM was revoked or declared invalid (whether wholly or partially) would not apply or would not have been satisfied in relation to the comparable trade mark (EU)—

(a) if the comparable trade mark (EU) had existed as at the date the cancellation proceedings were instituted, and

(b) an application for the revocation or a declaration of invalidity of the comparable trade mark (EU) based on those grounds had been made on that date under section 46 or 47 (as the case may be).

(5) Where a comparable trade mark (EU) is revoked or declared invalid to any extent pursuant to this paragraph—

(a) the rights of the proprietor are deemed to have ceased to that extent as from the date on which the rights of the proprietor of the existing EUTM are deemed to have ceased under the EUTM 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 revocation or invalidity of the comparable trade mark (EU) does not affect—

(i) a decision arising from infringement proceedings which has been finally determined and which has been enforced prior to the date on which the entry in the register of the comparable trade mark (EU) has been removed or amended pursuant to sub-paragraph (3) (“the decision date”);

(ii) any contract entered into prior to the decision date to the extent that it has been performed prior to the decision 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) A cancellation notice may be submitted to the registrar by any person.

(7) For the purposes of this paragraph—

(a) proceedings are instituted if an application or counterclaim for revocation or 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 123, and

(ii) meets the requirements for being accorded a filing date under the European Union Trade Mark Regulation and Commission Delegated Regulation (EU) 2018/625 of 5th March 2018;

(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).”.

10. Schedule 3 (Other amendments to the 1994 Act) is amended as follows—

(a) for paragraph 2(4) substitute—

“(4) In subsection (4B)—

(a) in paragraph (a) for “provision of EU law” substitute “enactment or rule of law”;

(b) in paragraph (b) for “EU” substitute “United Kingdom”.”;

(b) in paragraph 4(5)(a), for “exit day” substitute “IP completion day”;

(c) in paragraph 10, for “exit day” substitute “IP completion day”.

11. Schedule 4 (Amendments to the Rules) is amended as follows—

(a) for paragraph 6 substitute—

6.—(1) Rule 11 is amended as follows.

(2) At the end of paragraph (1)(d), omit “.” and substitute “;”.

(3) After paragraph (1)(d) insert—

“(e) a proprietor of a comparable trade mark (EU) who sends a derogation notice to the registrar under rule 43A.”.

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

(b) after paragraph 6 insert—

6A.—(1) Rule 12 is amended as follows.

(2) At the end of paragraph (4)(d), omit “.” and substitute “;”.

(3) After paragraph (4)(d), insert—

“(e) in the case of the proprietor who sends a derogation notice to the registrar, the registrar must proceed as if the proprietor had not sent a derogation notice.”.”.

(c) after paragraph 10 insert—

10A.—(1) Rule 43 is amended as follows.

(2) At the end of paragraph (1)(b), omit “, or” and substitute “;”.

(3) At the end of paragraph (1)(c), omit “,” and substitute “; or”.

(4) After paragraph (1)(c), insert—

“(d) the registration of a comparable trade mark (EU) is revoked or declared invalid to any extent under rule 43A(6),”.

(5) In paragraph (2), after “application and shall” insert “, in the cases referred to in paragraph (1)(a) to (c),”.

(6) In paragraph (3)—

(a) after “TM8” insert “or the derogation notice”;

(b) after “TM26(O)” omit “or” and substitute”,”;

(c) after “TM 26(I)” insert “or notification from the registrar under rule 43(4)(b) that the comparable trade mark (EU) will be revoked or declared invalid to the same extent as the corresponding EUTM”.

10B. After rule 43 insert—

“Invalidation or revocation of Existing EUTM: Cancellation notice and procedure on application for derogation; Schedule 2A paragraph 21A

43A...

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