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

Draft. This instrument was laid in draft and may differ from the one made. Look for the made version under its title.

Draft 2019, ISBN 9780111180037

Original text. legislation.gov.uk does not revise statutory instruments, so later amendments are not shown here. Changes made to it are listed under each provision when known.

Draft Regulations laid before Parliament under paragraph 12(1) of Schedule 7 to, the European Union (Withdrawal) Act 2018, for approval by resolution of each House of Parliament.

Exiting The European Union

Designs

Trade Marks

Made ***

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 2018f1 and by section 36 of the Registered Designs Act 1949f2 and by section 78 of the Trade Marks Act 1994f3 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

Footnotes

f1

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

f2

1949 c.88.

f3

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