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The European Union Trade Mark Regulations 2016

S.I. 2016/299 · Made 3 March 2016 · Extends to United Kingdom

Up to date with all changes known to legislation.gov.uk, revised to 31 December 2020.

Trade Marks

Made 3rd March 2016

Laid before Parliament 7th March 2016

Coming into force 6th April 2016

The Secretary of State has been designatedf1 for the purposes of section 2(2) of the European Communities Act 1972f2 in relation to intellectual property (including both registered and unregistered rights).

The Secretary of State makes these Regulations in exercise of the powers conferred by that section, by sections 52 and 78 of the Trade Marks Act 1994f3 and by the Department of Trade and Industry (Fees) Order 1988f4.

Annotations to the whole text

Footnotes

f1

S.I. 2006/608.

f2

1972 c.68; section 2(2) was amended by the Legislative and Regulatory Reform Act 2006 (c.51), section 27(1) and the European Union (Amendment) Act 2008 (c.7), section 3(3) and Part 1 of the Schedule.

f3

1994 c.26; section 52(3) was amended by the Legal Services Act 2007 (c.29), section 208, Schedule 21, paragraphs 109 and 110.

f4

S.I. 1988/93 as amended by S.I. 1990/1473, which was made under section 102 of the Finance Act (No. 2) Act 1987 (c. 51). The relevant provisions of the Order are article 5 and Part II of Schedule 1.

Contents

  1. 1Citation, commencement, extent and interpretation
  2. 2Amendments to the 1994 Act
  3. 3Amendments to the 1994 Act
  4. 4Amendments to the 1994 Act
  5. 5Amendments to the 1994 Act
  6. 6Amendments to the Community Trade Mark Regulations 2006 Repealed
  7. 7Amendments to the Community Trade Mark Regulations 2006 Repealed
  8. 8Amendments to the Community Trade Mark Regulations 2006 Repealed
  9. 9Amendments to the Community Trade Mark Regulations 2006 Repealed
  10. 10Amendments to the Community Trade Mark Regulations 2006 Repealed
  11. 11Amendments to the Community Trade Mark Regulations 2006 Repealed
  12. 12Amendments to the Community Trade Mark Regulations 2006 Repealed
  13. 13Transitional Provisions
  14. 14Saving provision
  15. 15Consequential amendments etc
  16. Signature
  17. Schedule: CONSEQUENTIAL AMENDMENTS ETC
  18. 1The 1994 Act
  19. 2The 1994 Act
  20. 3The 1994 Act
  21. 4The Community Trade Mark (Fees) Regulations 1995
  22. 5The Trade Mark Rules 2008
  23. Explanatory note

1Citation, commencement, extent and interpretationI1

(1)

These Regulations may be cited as the European Union Trade Mark Regulations 2016 and come into force on 6th April 2016.

(2)

These Regulations extend to England and Wales, Scotland and Northern Ireland.

(3)

In these Regulations “the 1994 Act” means the Trade Marks Act 1994.

2Amendments to the 1994 ActI1

The 1994 Act is amended as follows.

3Amendments to the 1994 ActI1

In the heading of Part II and in the italic heading before section 51, for “Community” substitute “European Union”.

4Amendments to the 1994 ActI1

For section 51, substitute—

“Meaning of “European Union trade mark”

51.

  • In this Act—

  • “European Union trade mark” has the meaning given by Article 1(1) of the European Union Trade Mark Regulation; and

  • “the European Union Trade Mark Regulation” means Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union Trade Markf1.”

5Amendments to the 1994 ActI1

(1)

Section 52 is amended as follows.

(2)

In the heading, for “Community”, substitute “European Union”.

(3)

In subsections (1) to (3), for “Community” in each place substitute “European Union”.

(4)

Omit subsection (2)(a).

(5)

In subsection (3)(b), for “Article 89” substitute “Article 93”.

(6)

After subsection (3) insert—

“(3A)

The reference in subsections (1) and (2)(d) to the European Union Trade Mark Regulation includes a reference to Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade markf1.”.

6Amendments to the Community Trade Mark Regulations 2006F1

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7Amendments to the Community Trade Mark Regulations 2006F1

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8Amendments to the Community Trade Mark Regulations 2006F1

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9Amendments to the Community Trade Mark Regulations 2006F1

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10Amendments to the Community Trade Mark Regulations 2006F1

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11Amendments to the Community Trade Mark Regulations 2006F1

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12Amendments to the Community Trade Mark Regulations 2006F1

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13Transitional ProvisionsI1

(1)

Anything done or having effect as if done under, for the purposes of, or in reliance on the old Regulation or a provision of the old Regulation has effect, so far as necessary for continuing its effect after the coming into force of these Regulations, as if done under, for the purposes of, or in reliance on the current Regulation or the corresponding provision of that Regulation.

(2)

In this regulation—

  • “the old Regulation” means Council Regulation (EC) No 40/94 of 20th December 1993 on the Community Trade Mark;

  • “the current Regulation” means Council Regulation (EC) No 207/2009 of 26th February 2009 on the European Union Trade Mark.

14Saving provisionI1

Subject to the amendments made by regulations 6 to 12, any regulations made under section 52 of the 1994 Act which have effect immediately before the coming into force of these Regulations have effect after then as if made under that section as amended by these Regulations.

15Consequential amendments etcI1

The Schedule (which contains amendments etc consequential on the amendments made by regulations 2 to 5) has effect.

Signature

Neville-Rolfe

Parliamentary Under Secretary of State for Business, Innovation and Skills

Department for Business, Innovation and Skills

1The 1994 ActI1

In sections 5(3)f1, 6(1)f2, 6A(5)f3 and 47(2D)f4 of the 1994 Act, for “Community” in each place, substitute “European Union”.

2The 1994 ActI1

In section 8(5) of the 1994 Act, for “the Community Trade Mark Regulation” substitute “Council Regulation (EC) No 40/94 of 20th December 1993 on the Community trade mark”.

3The 1994 ActI1

In section 104 of the 1994 Act—

(a)

omit the entry in the table relating to “Community trade mark” and at the appropriate place insert—

“

European Union trade marksection 51

”;

and

(b)

omit the entry in the table relating to “Community Trade Mark Regulation” and at the appropriate place insert—

“

European Union Trade Mark Regulationsection 51

”

4The Community Trade Mark (Fees) Regulations 1995I1

The Community Trade Mark (Fees) Regulations 1995f1 are revoked.

5The Trade Mark Rules 2008I1

In rule 47(1) of the Trade Mark Rules 2008f1 for “Community” in each place substitute “European Union”.

Explanatory note

(This note is not part of the Regulations)

These Regulations amend sections 51 and 52 of the Trade Marks Act 1994 (“the Act”) and also amend the Community Trade Mark Regulations 2006 (S.I. 2006/1027) (“the CTM Regulations”).

The CTM Regulations make provision for the operation of Council Regulation (EC) No. 40/94 of 20th December 1993 on the Community Trade Mark (OJ No. L11, 14.1.1994, p1) (“the Old Regulation”).

The amendments are necessitated by the repeal of the Old Regulation and its replacement by the codified Council Regulation (EC) No. 207/2009 on the European Union Trade Mark (OJ No. L78, 24.3.2009, p1) as amended by Regulation (EU) No. 2015/2424 of the European Parliament and of the Council of 16th December 2015 (OJ No. L341, 24.12.2015, p21) (“the New Regulation”).

The amendments to the Act and CTM Regulations reflect the change in terminology adopted in the New Regulation with the substitution of references to European Union trade marks for Community trade marks and also substitute references to Articles of the New Regulation for the corresponding Articles of the Old Regulation.

As a consequential matter, the Community Trade Mark (Fees) Regulations 1995 (S.I. 1995/3175) are revoked. Under the Old Regulation it was possible to file an application for a Community trade mark with either the Intellectual Property Office or the Office for Harmonisation in the Internal Market. The fee prescribed under the 1995 fees Regulations applied where an application was filed at the Intellectual Property Office. Under the New Regulation an application for a European Union Trade Mark may only be filed at the EU Intellectual Property Office and so applications may no longer be filed with the Intellectual Property Office, hence the revocation of the relevant fee regulation.

A full impact assessment has not been produced for this instrument as no impact on the private or voluntary sectors is foreseen.

An Explanatory Memorandum is available alongside the instrument on www.legislation.gov.uk.