Explanatory note
(This note is not part of the Rules)
These Rules amend the address for service rules contained in;
Rule 103 of the Patents Rules 2007 (S.I. 2007/3291),
Rule 11 of the Trade Marks Rules 2008 (S.I. 2008/1797),
Rule 42 of the Registered Designs Rules 2006 (S.I. 2006/1975), and
Rule 23(1A) of and Schedule 1 to the Design Right (Proceedings before Comptroller) Rules 1989 (S.I. 1989/1130).
The amendments in rules 2 to 5 remove references to “an EEA State” in the above rules and insert a reference to Gibraltar so that with effect from 1st January 2021 (“the Commencement Date”) an address for service for the purposes of any proceedings to which the above rules relate, must be an address in the United Kingdom, Gibraltar or the Channel Islands.
Rule 6 provides a transitional and saving provision in relation to cases where proceedings are pending as at the Commencement Date.
Rule 7 provides a transitional and saving provision in relation to applications for the grant of a patent or the registration of a trade mark or registered design which are pending as at the Commencement Date.
Rule 8 provides a transitional and saving provision for proprietors of comparable trade marks (EU) and re-registered designs. Such proprietors may retain an address for service in an EEA State in respect of those rights for a period of 3 years from the Commencement Date (or longer if, at the expiry of that period, they are engaged in proceedings at that date).
A de minimis impact assessment of the effect that this instrument will have on the costs of business, the voluntary sector and the public sector has been produced.
A copy of this instrument, the impact assessment and the Explanatory Memorandum is available from the Intellectual Property Office, Concept House, Cardiff Road, Newport, NP20 8QQ. The Explanatory Memorandum and impact assessment are also available alongside the instrument on the Legislation UK website www.legislation.gov.uk (copies have also been placed in the libraries of both Houses of Parliament.