S T A T U T O R Y  I N S T R U M E N T S  
2021 No. 1235 
EXITING THE EUROPEAN UNION 
TRADE MARKS 
The Trade Marks and International Trade Marks (Amen dment) 
(EU Exit) Regulations 2021 
Sift requirements satisfied 26th October 2021 
Made - - - - 3rd November 2021 
Laid before Parliament 4th November 2021 
Coming into force 26th November 2021 
The Secretary of State, in exercise of the powers c onferred by section 8(1) of, and paragraph 21(b) 
of Schedule 7 to, the European Union (Withdrawal) A ct 2018( a), makes the following 
Regulations. 
The requirements of paragraph 3(2) of Schedule 7 to  the European Union (Withdrawal) Act 2018 
(relating to the appropriate procedure for these Re gulations) have been satisfied. 
Citation and commencement 
1.  These Regulations may be cited as the Trade Marks and International Trade Marks 
(Amendment) (EU Exit) Regulations 2021 and come int o force on the 22nd day after the day on 
which they are laid. 
Amendments to the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 
2.  The Trade Marks (Amendment etc.) (EU Exit) Regulat ions 2019( b) are amended as follows. 
3.  In Schedule 5, paragraph 7(1), before “Any applica tion” insert “Subject to paragraph 8,”. 
4.  In Schedule 5, after paragraph 7 insert— 
“Qualification to Transitional Provision 
8. —(1) Opposition or invalidation proceedings other t han excluded proceedings 
(“relevant proceedings”) shall be dealt with under the 1994 Act as it had effect before 
regulation 4 came into force subject to the provisi ons set out in this paragraph. 
                                                                                                                                            
(a) 2018 c. 16; Section 8 was amended by the European  Union (Withdrawal Agreement) Act 2020 (c. 1), sect ion 27. Paragraph 
21(b) of Schedule 7 was amended by the European Uni on (Withdrawal Agreement) Act 2020, Schedule 5, par agraph 
53(2)(b). 
(b) S.I. 2019/269, amended by S.I. 2020/1050, 2020/16 37, 2020/1661.  2(2) The provisions in sub-paragraphs (5) and (6) ap ply to relevant proceedings where the 
conditions in sub-paragraph (4) are met. 
(3) The provisions in sub-paragraph (8) apply to re levant proceedings in the 
circumstances mentioned in that sub-paragraph. 
(4) The conditions mentioned in sub-paragraph (2) a re that— 
(a) the relevant proceedings are based, whether who lly or partially, on the ground that 
there exists an earlier trade mark (“a relevant ear lier mark”) which is— 
 (i) an existing EUTM,  
 (ii) an existing EUTM application, 
 (iii) an existing IR(EU), or 
 (iv) an existing ITM application or existing reque st for EU extension; 
(b) in the case of proceedings referred to in sub-p aragraphs (a)(i) and (iii), the 
comparable trade mark (EU) or comparable trade mark  (IR) which derives from 
the existing EUTM or the existing IR(EU) (as the ca se may be) is the subject of— 
 (i) a declaration of invalidity under section 47 o f the 1994 Act,  
 (ii) a revocation decision under section 46 of the  1994 Act based on grounds other 
than those contained in section 46(1)(a) or (b) of the 1994 Act with effect 
from a date prior to the date of filing of the appl ication for registration of the 
trade mark the subject of the relevant proceedings or (where applicable) the 
date of the priority claimed in respect of that app lication, or 
 (iii) an application for a declaration of invalidi ty or revocation as referred to in 
sub-paragraphs (i) and (ii); 
(c) in the case of proceedings referred to in sub-p aragraphs (a)(ii) and (iv), an 
application for registration of a trade mark based upon the existing EUTM 
application pursuant to paragraph 25 of Schedule 2A  to the 1994 Act or an 
application for registration of a trade mark based upon the existing ITM 
application or the existing request for EU extensio n pursuant to paragraph 28 or 29 
of schedule 2B to the 1994 Act (as the case may be) — 
 (i) has been made and the application has neither resulted in the registration of 
the trade mark nor the registration being refused ( “a pending TM 
application”), 
 (ii) has resulted in the registration of the trade  mark in part only, 
 (iii) has resulted in the registration of the trad e mark, which registration is the 
subject of a revocation decision or an application for the same under section 
46 of the 1994 Act based on grounds other than thos e contained in section 
46(1)(a) or (b) of the 1994 Act with effect from a date prior to the date of 
filing of the application for registration of the t rade mark the subject of the 
relevant proceedings or (where applicable) the date  of the priority claimed in 
respect of that application, or  
 (iv) has resulted in the registration of the trade  mark which registration is the 
subject of a declaration of invalidity or an applic ation for the same under 
section 47 of the 1994 Act. 
(5) In the case of an application for a declaration  of invalidity or revocation as referred to 
in sub-paragraphs (4)(b)(iii) and (4)(c)(iii) and ( iv) (“pending proceedings”) or a pending 
TM application, the registrar may decide that the r elevant proceedings be determined only 
after— 
(a) a final decision has been made in the pending p roceedings; 
(b) the trade mark the subject of the pending TM ap plication has been registered 
whether in whole or in part or the trade mark has n ot proceeded to registration for 
any reason, including as a result of the applicatio n not being accepted or it being 
successfully opposed, withdrawn or abandoned.  3(6) Where— 
(a) the comparable trade mark (EU) or comparable tr ade mark (IR) referred to in sub-
paragraph (4)(b) is the subject of a final decision  which declares the registration 
invalid to any extent or revokes the registration t o any extent on grounds other than 
those contained in section 46(1)(a) or (b) of the 1 994 Act with effect from a date 
prior to the date of filing of the application for registration of the trade mark the 
subject of the relevant proceedings or (where appli cable) the date of the priority 
claimed in respect of that application, 
(b) the application for registration of a trade mar k referred to in sub-paragraph (4)(c) 
has resulted in registration of the trade mark in p art only, or 
(c) the trade mark referred to in sub-paragraph (4) (c)(iii) or (iv) is the subject of a final 
decision which revokes the registration to any exte nt on grounds other than those 
contained in section 46(1)(a) or (b) of the 1994 Ac t with effect from a date prior to 
the date of filing of the application for registrat ion of the trade mark the subject of 
the relevant proceedings or (where applicable) the date of the priority claimed in 
respect of that application, or which declares the registration invalid to any extent, 
the registrar may decide that the relevant proceedi ngs shall be dealt with under the 1994 
Act as it had effect before regulation 4 came into force taking account of the provisions in 
sub-paragraph (7). 
(7) A relevant earlier mark on which the relevant p roceedings were based may be relied 
on if or to the same extent that— 
(a) the registration of the comparable trade mark ( EU) or comparable trade mark (IR) 
referred to in sub-paragraph (6)(a) is not declared  invalid or the registration is not 
revoked, 
(b) the application for registration of a trade mar k referred to in sub-paragraph (6)(b) 
is registered, or 
(c) the trade mark referred to in sub-paragraph (6) (c) is not revoked or declared 
invalid. 
(8) Where the relevant proceedings are based whethe r wholly or partially on the ground 
that there exists a relevant earlier mark which is—  
(a) an existing EUTM or an existing IR(EU) which is  the subject of an opt out notice,  
(b) an existing EUTM application, an existing ITM a pplication or an existing request 
for EU extension in respect of which— 
 (i) no application has been made for registration of the same trade mark pursuant 
to paragraph 25 of Schedule 2A to the 1994 Act or p aragraph 28 or 29 of 
Schedule 2B to the 1994 Act (as the case may be) an d the period within which 
such application must be made, as provided in those  paragraphs, has expired, 
or 
 (ii) an application for registration of the same t rade mark has been made pursuant 
to the provisions referred to in sub-paragraph (i) and the trade mark has not 
proceeded to registration whether in whole or in pa rt for any reason, including 
as a result of the application not being accepted, or it being successfully 
opposed, withdrawn or abandoned, 
the relevant proceedings shall be dealt with under the 1994 Act as it had effect before 
regulation 4 came into force except the registrar m ay decide that the existing EUTM, 
existing IR(EU), existing EUTM application, existin g ITM application or existing request 
for EU extension (as the case may be) may not be re lied upon as an earlier trade mark for 
the purposes of the relevant proceedings. 
(9) In this paragraph— 
(a) “excluded proceedings” means opposition or inva lidation proceedings which have 
been the subject of a decision on the substantive i ssues raised in the proceedings 
prior to the coming into force of this paragraph;  4(b) “final decision” means a decision which has bee n determined and there is no 
possibility of the determination being varied or se t aside (disregarding any power 
to grant permission to appeal out of time); 
(c) the terms “existing EUTM”, “comparable trade ma rk (EU)” and “existing EUTM 
application” have the meanings given respectively b y paragraphs 1(1), 1(2) and 
24(1) of Schedule 2A to the 1994 Act; 
(d) the term “opt out notice”, in relation to an ex isting EUTM, has the meaning given 
by paragraph 2(1) of Schedule 2A to the 1994 Act an d in relation to an existing 
IR(EU) has the meaning given by paragraph 2(1) of S chedule 2B to the 1994 Act; 
(e) the terms “existing IR(EU)” and “comparable tra de mark (IR)” have the meanings 
given respectively by paragraphs 1(1) and 1(4) of S chedule 2B to the 1994 Act; 
(f) the terms “existing ITM application” and “exist ing request for EU extension” have 
the meanings given by paragraph 33(7) of Schedule 2 B to the 1994 Act.”. 
Amendments to the Designs and International Trade M arks (Amendment etc.) (EU Exit) 
Regulations 2019 
5.  The Designs and International Trade Marks (Amendme nt etc.) (EU Exit) Regulations 2019( a) 
are amended as follows. 
6.  In regulation 10(2), before “Any application” inse rt “Subject to regulation 10A,”. 
7.  After regulation 10 insert— 
“Qualification to Transitional Provision 
10A —(1) Opposition or invalidation proceedings other t han excluded proceedings 
(“relevant proceedings”) shall be dealt with under the 1994 Act as it had effect before 
regulation 10(1) came into force subject to the pro visions set out in this regulation. 
(2) The provisions in paragraphs (5) and (6) apply to relevant proceedings where the 
conditions in paragraph (4) are met. 
(3) The provisions in paragraph (8) apply to releva nt proceedings in the circumstances 
mentioned in that paragraph. 
(4) The conditions mentioned in paragraph (2) are t hat— 
(a) the relevant proceedings are based, whether who lly or partially, on the ground that 
there exists an earlier trade mark (“a relevant ear lier mark”) which is— 
 (i) an existing EUTM, 
 (ii) an existing EUTM application, 
 (iii) an existing IR(EU), or 
 (iv) an existing ITM application or existing reque st for EU extension; 
(b) in the case of proceedings referred to in sub-p aragraphs (a)(i) and (iii), the 
comparable trade mark (EU) or comparable trade mark  (IR) which derives from 
the existing EUTM or the existing IR(EU) (as the ca se may be) is the subject of— 
 (i) a declaration of invalidity under section 47 o f the 1994 Act, 
 (ii) a revocation decision under section 46 of the  1994 Act based on grounds other 
than those contained in section 46(1)(a) or (b) of the 1994 Act with effect 
from a date prior to the date of filing of the appl ication for registration of the 
trade mark the subject of the relevant proceedings or (where applicable) the 
date of the priority claimed in respect of that app lication, or 
                                                                                                                                            
(a) S.I. 2019/638, amended by S.I. 2020/1050.  5 (iii) an application for a declaration of invalidi ty or revocation as referred to in 
sub-paragraphs (i) and (ii); 
(c) in the case of proceedings referred to in sub-p aragraphs (a)(ii) and (iv), an 
application for registration of a trade mark based upon the existing EUTM 
application pursuant to paragraph 25 of Schedule 2A  to the 1994 Act or an 
application for registration of a trade mark based upon the existing ITM 
application or the existing request for EU extensio n pursuant to paragraph 28 or 29 
of schedule 2B to the 1994 Act (as the case may be) — 
 (i) has been made and the application has neither resulted in the registration of 
the trade mark nor the registration being refused ( “a pending TM 
application”),  
 (ii) has resulted in the registration of the trade  mark in part only, 
 (iii) has resulted in the registration of the trad e mark, which registration is the 
subject of a revocation decision or an application for the same under section 
46 of the 1994 Act based on grounds other than thos e contained in section 
46(1)(a) or (b) of the 1994 Act with effect from a date prior to the date of 
filing of the application for registration of the t rade mark the subject of the 
relevant proceedings or (where applicable) the date  of the priority claimed in 
respect of that application, or  
 (iv) has resulted in the registration of the trade  mark which registration is the 
subject of a declaration of invalidity or an applic ation for the same under 
section 47 of the 1994 Act. 
(5) In the case of an application for a declaration  of invalidity or revocation as referred to 
in paragraphs (4)(b)(iii) and (4)(c)(iii) and (iv) (“pending proceedings”) or a pending TM 
application, the registrar may decide that the rele vant proceedings be determined only 
after— 
(a) a final decision has been made in the pending p roceedings; 
(b) the trade mark the subject of the pending TM ap plication has been registered 
whether in whole or in part or the trade mark has n ot proceeded to registration for 
any reason, including as a result of the applicatio n not being accepted or it being 
successfully opposed, withdrawn or abandoned. 
(6) Where— 
(a) the comparable trade mark (EU) or comparable tr ade mark (IR) referred to in 
paragraph (4)(b) is the subject of a final decision  which declares the registration 
invalid to any extent or revokes the registration t o any extent on grounds other than 
those contained in section 46(1)(a) or (b) of the 1 994 Act with effect from a date 
prior to the date of filing of the application for registration of the trade mark the 
subject of the relevant proceedings or (where appli cable) the date of the priority 
claimed in respect of that application, 
(b) the application for registration of a trade mar k referred to in paragraph (4)(c) has 
resulted in the registration of the trade mark in p art only, or 
(c) the trade mark referred to in paragraph (4)(c)( iii) or (iv) is the subject of a final 
decision which revokes the registration to any exte nt on grounds other than those 
contained in section 46(1)(a) or (b) of the 1994 Ac t with effect from a date prior to 
the date of filing of the application for registrat ion of the trade mark the subject of 
the relevant proceedings or (where applicable) the date of the priority claimed in 
respect of that application, or which declares the registration invalid to any extent, 
the registrar may decide that the relevant proceedi ngs shall be dealt with under the 1994 
Act as it had effect before regulation 10(1) came i nto force taking account of the provisions 
in paragraph (7). 
(7) A relevant earlier mark on which the relevant p roceedings were based may be relied 
on if or to the same extent that—  6(a) the registration of the comparable trade mark ( EU) or comparable trade mark (IR) 
referred to in paragraph (6)(a) is not declared inv alid or the registration is not 
revoked, 
(b) the application for registration of a trade mar k referred to in paragraph (6)(b) is 
registered, or 
(c) the trade mark referred to in paragraph (6)(c) is not revoked or declared invalid. 
(8) Where the relevant proceedings are based whethe r wholly or partially on the ground 
that there exists a relevant earlier mark which is—  
(a) an existing EUTM or an existing IR(EU) which is  the subject of an opt out notice, 
(b) an existing EUTM application, an existing ITM a pplication or an existing request 
for EU extension in respect of which— 
 (i) no application has been made for registration of the same trade mark pursuant 
to paragraph 25 of Schedule 2A to the 1994 Act or p aragraph 28 or 29 of 
Schedule 2B to the 1994 Act (as the case may be) an d the period within which 
such application must be made, as provided in those  paragraphs, has expired, 
or 
 (ii) an application for registration of the same t rade mark has been made pursuant 
to the provisions referred to in sub-paragraph (i) and the trade mark has not 
proceeded to registration whether in whole or in pa rt for any reason, including 
as a result of the application not being accepted, or it being successfully 
opposed, withdrawn or abandoned, 
the relevant proceedings shall be dealt with under the 1994 Act as it had effect before 
regulation 10(1) came into force except the registr ar may decide that the existing EUTM, 
existing IR(EU), existing EUTM application, existin g ITM application or existing request 
for EU extension (as the case may be) may not be re lied upon as an earlier trade mark for 
the purposes of the relevant proceedings.  
(9) In this regulation— 
(a) “excluded proceedings” means opposition or inva lidation proceedings which have 
been the subject of a decision on the substantive i ssues raised in the proceedings 
prior to the coming into force of this regulation; 
(b) “final decision” means a decision which has bee n determined and there is no 
possibility of the determination being varied or se t aside (disregarding any power 
to grant permission to appeal out of time); 
(c) the terms “existing EUTM”, “comparable trade ma rk (EU)” and “existing EUTM 
application” have the meanings given respectively b y paragraphs 1(1), 1(2) and 
24(1) of Schedule 2A to the 1994 Act; 
(d) the term “opt out notice”, in relation to an ex isting EUTM, has the meaning given 
by paragraph 2(1) of Schedule 2A to the 1994 Act an d in relation to an existing 
IR(EU) has the meaning given by paragraph 2(1) of S chedule 2B to the 1994 Act; 
(e) the terms “existing IR(EU)” and “comparable tra de mark (IR)” have the meanings 
given respectively by paragraphs 1(1) and 1(4) of S chedule 2B to the 1994 Act; 
(f) the terms “existing ITM application” and “exist ing request for EU extension” have 
the meanings given by paragraph 33(7) of Schedule 2 B to the 1994 Act.”. 
 
 
 
 
 George Freeman  
 Minister for Science, Research & Innovation  
3rd November 2021 Department for Business, Energy a nd Industrial Strategy 
 
  7 
 
EXPLANATORY NOTE 
(This note is not part of the Regulations) 
These Regulations are made in exercise of the power s conferred by section 8(1) of the European 
Union (Withdrawal) Act 2018 (c. 16) (“the EUWA”) in  order to address failures of retained EU 
law to operate effectively and other deficiencies ( in particular under paragraph (e) of section 8(2) 
of the EUWA) and paragraph 21(b) of Schedule 7 to t he EUWA. These Regulations amend the 
transitional provisions contained in paragraph 7 of  Schedule 5 to the Trade Marks (Amendment 
etc.) (EU Exit) Regulations 2019 and regulation 10( 2) of the Designs and International Trade 
Marks (Amendment etc.) (EU Exit) Regulations 2019 ( “the existing regulations”). 
The Regulations qualify the application of the tran sitional provisions in the existing regulations to 
provide that, in the case of opposition or invalida tion proceedings, such proceedings shall be dealt 
with under the Trade Marks Act 1994 (“the 1994 Act” ) as it had effect prior to the coming into 
force of the amendments made to that Act by the exi sting regulations, but subject to certain 
qualifications. 
Where the opposition or invalidation proceedings ar e based on the ground that there exists an 
earlier trade mark which is an existing EUTM or exi sting IR(EU) (as those terms are defined in 
Schedules 2A and 2B to the 1994 Act) and the releva nt comparable trade mark has been the 
subject of a declaration of invalidity under sectio n 47 of the 1994 Act or a revocation decision 
based on certain grounds under section 46 of the 19 94 Act, the registrar may decide that the extent 
to which reliance may be placed on the earlier trad e mark will depend upon the extent to which the 
relevant comparable mark is not declared invalid or  the registration is not revoked (see new 
paragraphs 8(6)(a) and (7)(a) and new regulations 1 0A(6)(a) and (7)(a) inserted in the existing 
regulations by these Regulations). 
Similar provisions apply where the earlier trade ma rk is an existing EUTM application, an existing 
ITM application or existing request for EU extensio n (as those terms are defined in Schedules 2A 
and 2B to the 1994 Act) (“a relevant earlier applic ation”) and an application for registration of the 
same trade mark under the 1994 Act has resulted in the registration of the same trade mark, which 
trade mark has been the subject of a declaration of  invalidity or revocation decision as referred to 
above (see new paragraphs 8(6)(c) and (7)(c) and ne w regulations 10A(6)(c) and (7)(c) inserted in 
the existing regulations by these Regulations). 
Where the opposition or invalidation proceedings ar e based on the ground that there exists an 
earlier trade mark which is a relevant earlier appl ication and an application for registration of the 
same trade mark under the 1994 Act has resulted in the registration of the trade mark in part only, 
the registrar may decide that reliance may be place d on the earlier trade mark only to the same 
extent that the domestic trade mark is registered ( see new paragraphs 8(6)(b) and (7)(b) and new 
regulations 10A(6)(b) and (7)(b) inserted in the ex isting regulations by these Regulations). 
The registrar may defer the hearing of the relevant  proceedings pending the determination of 
invalidation or revocation proceedings or the outco me of the application for a domestic trade mark 
based upon a relevant earlier application (see new paragraph 8(5) and new regulation 10A(5) 
inserted in the existing regulations by these Regul ations). 
In addition, where relevant proceedings are based o n an earlier trade mark which is— 
(a)  an existing EUTM or existing IR(EU) which is the su bject of an opt out notice (in 
accordance with paragraph 2 of Schedule 2A and 2B t o the 1994 Act),  
(b)  a relevant earlier application and no application h as been made for registration of a 
domestic trade mark based upon it under Schedules 2 A or 2B to the 1994 Act and the 
relevant time period for making such application ha s expired, or 
(c)  a relevant earlier application where an application  has been made for registration of a 
domestic trade mark based upon it under Schedules 2 A or 2B to the 1994 Act but the  8£6.90 
http://www.legislation.gov.uk/id/uksi/2021/1235 application has not resulted in the registration of  the trade mark whether in whole or in 
part, 
the registrar may determine that such earlier trade  marks may not be relied upon in the 
invalidation or opposition proceedings (see new par agraph 8(8) and new regulation 10A(8) 
inserted in the existing regulations by these Regul ations). 
A full impact assessment has not been produced for this instrument as no significant impact on the 
private, voluntary or public sector is foreseen. 
A copy of this instrument and the explanatory memor andum are available from the Intellectual 
Property Office, Concept House, Cardiff Road, Newpo rt NP20 8QQ. The explanatory 
memorandum is also available alongside this instrum ent on the Legislation UK website 
www.legislation.gov.uk (copies have also been place d in the libraries of both Houses of 
Parliament). 
  
  
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