Paragraph 18 Effect of a licence of an existing IR(EU)F1

(1)

This paragraph applies where immediately before IP completion day an existing IR(EU) is the subject of a licence (a “relevant licence”) which—

(a)

authorises the doing of acts in the United Kingdom which would otherwise infringe the international trade mark; and

(b)

does not expire on IP completion day.

(2)

Subject to any agreement to the contrary between the licensee and the licensor, a relevant licence continues to authorise the doing of acts in the United Kingdom which would otherwise infringe the comparable trade mark (IR) which derives from the existing IR(EU).

(3)

Sub-paragraph (2) is subject to—

(a)

the terms on which the relevant licence was granted; and

(b)

such modifications to the terms referred to in paragraph (a) as are necessary for their application in the United Kingdom.

(4)

Section 25 applies in relation to a relevant licence as if it were a registrable transaction affecting a comparable trade mark (IR), subject to the modifications set out below.

(5)

An application under section 25(1) may only be made by—

(a)

a person claiming to be a licensee by virtue of the relevant licence; or

(b)

the proprietor of the comparable trade mark (IR).

(6)

Where immediately before IP completion day there is an entry in the International Register relating to a relevant licence—

(a)

section 25(3) and (4) does not apply until after the expiry of the relevant period; and

(b)

section 25(4)(a) applies after the expiry of the relevant period but as if the reference to six months beginning with the date of the transaction were a reference to eighteen months beginning with IP completion day.

(7)

In sub-paragraph (6)(a), the “relevant period” means the period of twelve months beginning with the day after that on which IP completion day falls.

Annotations

Textual amendments

F1: Sch. 2B inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 4 para. 3 (with Sch. 5 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 22(b)); 2020 c. 1, Sch. 5 para. 1(1)