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

S.I. 2019/638 · Made 18 March 2019 · Extends to United Kingdom

Up to date with all changes known to legislation.gov.uk, revised to 1 April 2026.

Exiting The European Union

Designs

Trade Marks

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 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 to the whole text

Marginal citations

M1

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

M2

1949 c.88.

M3

1994 c.26.

Contents

  1. 1Citation and commencement
  2. 2Interpretation
  3. 3Amendments to the Design Regulation and the 2005 Regulations relating to the creation and application of the supplementary unregistered design etc.
  4. 4Unregistered Community designs existing immediately before IP completion day
  5. 5Certain registered Community designs and international designs to have effect under the 1949 Act
  6. 6International trade marks
  7. 7Fees payable in respect of re-registered designs, international re-registered designs, and comparable trade marks (IR)
  8. 8Amendments to the Registered Designs Rules
  9. 9Amendments to the Trade Marks Rules
  10. 10Other amendments to legislation
  11. 10AQualification to Transitional Provision
  12. 11Revocation
  13. Signature
  14. Schedule 1: Amendments to the Design Regulation and 2005 Regulations relating to the creation and application of the supplementary unregistered design right etc.
  15. Part 1: Design Regulation and supplementary unregistered designs
  16. 1Introductory
  17. 2Substitution of Article 1 – supplementary unregistered designs
  18. 3Omission of Article 2 (European Union Intellectual Property Office)
  19. 4Amendments to Article 3 (definitions)
  20. 5Amendments to Article 4 (requirements for protection)
  21. 6Amendments to Article 5 (novelty)
  22. 7Amendments to Article 6 (individual character)
  23. 8Substitution of Article 7 (disclosure)
  24. 9Amendments to Articles 8 to 10 (technical function, interconnections, public policy and morality)
  25. 10Amendments to Article 11 (commencement and term of protection of the unregistered Community design)
  26. 11Omission of Articles 12 and 13 (registered Community design: commencement, term of protection and renewal)
  27. 12Amendment to the heading of section 3 of Title 2 (right to the Community design)
  28. 13Amendments to Article 14 (right to the Community design)
  29. 14Amendments to Article 15 (claims relating to the entitlement to a Community design)
  30. 15Omission of Articles 16 to 18 (effects of a judgment on entitlement, presumption, right to be cited)
  31. 16Amendment to the heading of section 4 of Title 2 (effects of the Community design)
  32. 17Amendments to Article 19 (rights conferred by the Community design)
  33. 18Amendments to Article 20 (limitation of the rights conferred by a Community design)
  34. 19Amendments to Article 21 (exhaustion of rights)
  35. 20Omission of Articles 22 and 23 (prior use and government use)
  36. 21Amendments to Article 24 (declaration of invalidity)
  37. 22Amendments to Article 25 (grounds for invalidity)
  38. 23Amendments to Article 26 (consequences of invalidity)
  39. 24Amendment to the heading of Title 3: supplementary unregistered designs as objects of property
  40. 25Amendments to Article 27: supplementary unregistered design rights as national design rights
  41. 26Omission to Articles 28 to 31 (transfer, rights in rem, levy and insolvency)
  42. 27Article 32 (licensing)
  43. 28Omission of Articles 33 to 78 (general provisions)
  44. 29Amendment to the heading of Title 9 (jurisdiction and procedure in legal actions relating to Community designs)
  45. 30Omission of Article 79 (application of the Convention on jurisdiction and enforcement)
  46. 31Amendment to the heading of section 2 (disputes concerning infringement and validity of designs) of Title 9
  47. 32Omission of Article 80 (Community design courts)
  48. 33Substitution of Article 81 (The “design court” – jurisdiction over infringement and validity)
  49. 34Omission of Articles 82 and 83: jurisdiction
  50. 35Amendments to Article 84 (action or counterclaim for a declaration of invalidity of a supplementary unregistered design)
  51. 36Amendments to Article 85 (presumption of validity – defence as to the merits)
  52. 37Amendments to Article 86 (judgments of invalidity)
  53. 38Omission of Articles 87 and 88 (effect of judgment on invalidity and applicable law)
  54. 39Amendments to Article 89 (sanctions in actions for infringement)
  55. 40Amendments to Article 90 (provisional measures, including protective measures)
  56. 41Omission of Articles 91 and 92 (specific rules on related actions and appeals)
  57. 42Amendment to the heading of section 3 (other disputes concerning Community designs) of Title 9
  58. 43Omission of Articles 93 (supplementary provisions on the jurisdiction of national courts)
  59. 44Amendments to Article 94 (obligation of the national court)
  60. 45Omission of Title 10 (effects on the laws of the Member States)
  61. 46Omission of Title 11 (supplementary provisions regarding the Office)
  62. 47Omission of Title 11A (international registration)
  63. 48Omission of Articles 107 to 109 (implementing regulation, procedure of Boards of Appeal and Committee)
  64. 49Omission of Article 110 (transitional provision)
  65. 50Omission of Article 110a (provisions relating to the enlargement of the Community)
  66. 51Omission of Article 111 (entry into force)
  67. 52Omission of text after Title 12
  68. Part 2: 2005 Regulations and the supplementary unregistered design right
  69. 53Paragraph 53
  70. 54Regulation 1: interpretation
  71. 55Regulation 1A: infringement proceedings
  72. 56Regulation 1B: order for delivery up
  73. 57Regulation 1C: order for disposal
  74. 58Regulation 1D: meaning of “infringing article”
  75. 59Regulation 2: unjustified threats: threats of infringement proceedings
  76. 60Regulation 2B: unjustified threats: permitted communications
  77. 61Regulation 2C, 2E and 2F: unjustified threats: general
  78. 62Regulation 3: false representation
  79. 63Regulation 4: privileged communications
  80. 64Regulation 5 and the Schedule: services of the Crown
  81. Schedule 2: Continuing unregistered Community designs
  82. Part 1: Design Regulation and continuing unregistered Community designs
  83. 1Paragraph 1
  84. 2Article 1: continuing unregistered Community design
  85. 3Paragraph 3
  86. 4Article 2: Office
  87. 5Article 3: definitions
  88. 6Article 4: requirements for protection
  89. 7Article 5: novelty
  90. 8Article 6: individual character
  91. 9Article 7: disclosure
  92. 10Articles 8 to 10: technical function, interconnections, public policy, morality and protection
  93. 11Article 11: commencement and term of protection
  94. 12Articles 12 and 13: registered Community design: commencement, term of protection and renewal
  95. 13Article 14: right to the Community design
  96. 14Article 15: claims relating to the entitlement to a Community design
  97. 15Articles 16 to 18: effects of a judgment on entitlement, presumptions, right to be cited
  98. 16Article 19: rights conferred by the Community design
  99. 17Article 20: limitation of the rights conferred by a Community design
  100. 18Article 21: exhaustion of rights
  101. 19Articles 22 and 23: prior use and government use
  102. 20Article 24: declaration of invalidity
  103. 21Article 25: grounds for invalidity
  104. 22Article 26: consequences of invalidity
  105. 23Article 27: Community design rights as national design rights
  106. 24Articles 28 to 31: transfer, rights in rem, levy and insolvency
  107. 25Article 32: licensing
  108. 26Articles 33 to 78: general provisions
  109. 27Article 79: Application of the Convention on jurisdiction and enforcement
  110. 28Article 80: Community design courts
  111. 29Article 81: The “design court” – jurisdiction over infringement and validity
  112. 30Articles 82 and 83
  113. 31Article 84: action or counterclaim for a declaration of invalidity of a Community design
  114. 32Article 85: presumption of validity – defence as to the merits
  115. 33Article 86: judgments of invalidity
  116. 34Articles 87 and 88: sanctions in actions for infringement
  117. 35Article 89: sanctions in actions for infringement
  118. 36Article 90: provisional measures, including protective measures
  119. 37Articles 91 and 92: specific rules on related actions and further appeals
  120. 38Article 93: supplementary provisions on the jurisdiction of national courts
  121. 39Article 94: obligation of the national court
  122. 40Title 10
  123. 41Title 11: supplementary provisions concerning the Office
  124. 42Title 11A: international registration
  125. 43Articles 107 to 109: implementing regulation, procedure of Boards of Appeal and Committee
  126. 44Article 110: transitional provision
  127. 45Article 110a: provisions relating to the enlargement of the Community
  128. 46Article 111: entry into force
  129. 47Text after Title 12
  130. Part 2: 2005 Regulations and continuing unregistered Community designs
  131. 48Paragraph 48
  132. 49Regulation 1: interpretation
  133. 50Regulation 1A: infringement proceedings
  134. 51Regulation 1B: order for delivery up
  135. 52Regulation 1C: order for disposal
  136. 53Regulation 1D: meaning of “infringing article”
  137. 54Regulation 2: unjustified threats: threats of infringement proceedings
  138. 55Regulation 2B: unjustified threats: permitted communications
  139. 56Regulation 2C, 2E and 2F: unjustified threats: general
  140. 57Regulation 3: false representation
  141. 58Regulation 4: privileged communications
  142. 59Regulation 5 and the Schedule: services of the Crown
  143. Schedule 3: Amendments 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 IP completion day and about certain applications for registered Community designs made before IP completion day
  144. 1Paragraph 1
  145. 2Paragraph 2
  146. 3Paragraph 3
  147. Schedule 4: 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 and about certain applications for such marks and transformation applications
  148. 1Paragraph 1
  149. 2Paragraph 2
  150. 3Paragraph 3
  151. Schedule 5: Fees payable in respect of re-registered designs, re-registered international designs and comparable trade marks (IR)
  152. Part 1: Fees payable in respect of a re-registered design or a re-registered international design
  153. 1Paragraph 1
  154. 2Paragraph 2
  155. 3Paragraph 3
  156. 4Paragraph 4
  157. 5Paragraph 5
  158. 6Paragraph 6
  159. 7Paragraph 7
  160. 8Paragraph 8
  161. Part 2: Fees payable in respect of a comparable trade mark (IR)
  162. 9Paragraph 9
  163. 10Paragraph 10
  164. 11Paragraph 11
  165. 12Paragraph 12
  166. 13Paragraph 13
  167. 14Paragraph 14
  168. 15Paragraph 15
  169. 16Paragraph 16
  170. 17Paragraph 17
  171. 18Paragraph 18
  172. Schedule 6: Amendments to the Registered Designs Rules
  173. 1Paragraph 1
  174. 2Paragraph 2
  175. 3Paragraph 3
  176. 3AParagraph 3A
  177. 4Paragraph 4
  178. 5Paragraph 5
  179. 6Paragraph 6
  180. 7Paragraph 7
  181. 8Paragraph 8
  182. 9Paragraph 9
  183. Schedule 7: Amendments to the Trade Marks Rules
  184. 1Paragraph 1
  185. 2Paragraph 2
  186. 3Paragraph 3
  187. 4Paragraph 4
  188. 5Paragraph 5
  189. 6Paragraph 6
  190. 7Paragraph 7
  191. 8Paragraph 8
  192. Schedule 8: Other amendments to legislation
  193. Part 1: Further amendments to the 1949 Act
  194. 1Paragraph 1
  195. 2Paragraph 2
  196. 3Paragraph 3
  197. 4Paragraph 4
  198. 5Paragraph 5
  199. 6Paragraph 6
  200. 7Paragraph 7 Not yet in force
  201. 8Paragraph 8
  202. 9Paragraph 9
  203. 10Paragraph 10
  204. Part 2: Amendments to the Copyright, Designs and Patents Act 1988
  205. 11Paragraph 11
  206. Part 3: Amendments to the Design Right (Proceedings before the Comptroller) Rules 1989
  207. 12Paragraph 12
  208. 13Paragraph 13
  209. 14Paragraph 14
  210. 15Paragraph 15
  211. Part 4: Further amendments to the 1994 Act
  212. 16Paragraph 16
  213. 17Paragraph 17
  214. 18Paragraph 18
  215. 19Paragraph 19
  216. Explanatory note