This Statutory Instrument has been printed to corre ct errors in S.I. 2019/269, S.I. 2019/605, S.I. 
2019/638 and S.I. 2019/801 and is being issued free  of charge to all known recipients of those 
Statutory Instruments. 
S T A T U T O R Y  I N S T R U M E N T S  
2020 No. 1050 
EXITING THE EUROPEAN UNION 
INTELLECTUAL PROPERTY 
The Intellectual Property (Amendment etc.) (EU Exit ) 
Regulations 2020 
Made  - - - - 28th September 2020 
Coming into force in accordance with regulation 1(2 ) 
The Secretary of State makes these Regulations in e xercise of the powers conferred by sections 
8(1), 8B(1)(a) and 8B(2)(a)( a) of, and paragraph 1 of Schedule 4 and paragraph 2 1(b) of Schedule 
7 to, the European Union (Withdrawal) Act 2018( b) and by section 36 of the Registered Designs 
Act 1949( c) and by section 78 of the Trade Marks Act 1994( d) and with the consent of the 
Treasury. 
In accordance with paragraphs 1(1) and 12(1) of Sch edule 7 to the European Union (Withdrawal) 
Act 2018, a draft of this instrument has been laid before Parliament and approved by resolution of 
each House of Parliament. 
PART 1  
Introduction 
Citation, commencement and interpretation 
1. —(1) These Regulations may be cited as the Intellec tual Property (Amendment etc.) (EU Exit) 
Regulations 2020. 
(2)  These Regulations come into force immediately befor e IP completion day except Parts 7 and 
8 which come into force on IP completion day. 
(3)  In these Regulations— 
“1949 Act” means the Registered Designs Act 1949; 
“1994 Act” means the Trade Marks Act 1994; 
                                                                                                                                            
(a) Section 8B was inserted by section 18 of the Euro pean Union (Withdrawal Agreement) Act 2020 c. 1. 
(b) 2018 c. 16. Section 8 is amended by section 27 of  the European Union (Withdrawal Agreement) Act 2020  c. 1. 
(c) 1949 c. 88. 
(d) 1994 c. 26.  2“2005 Regulations” means the Community Design Regul ations 2005( a); 
“Design Regulation” means Council Regulation (EC) N o 6/2002 of 12th December 2001 on 
Community Designs( b) as amended by Council Regulation (EC) No 1891/200 6 of 18th 
December 2006 to give effect to the accession of th e European Community to the Geneva Act 
of the Hague Agreement concerning the international  registration of industrial designs and by 
the Decision of the European Union of 5th December 2011 on the admission of the Republic 
of Croatia to the European Union( c); and 
“Registered Designs Rules” means the Registered Des igns Rules 2006( d). 
PART 2  
Amendments to the Intellectual Property (Copyright and Related Rights) 
(Amendment) (EU Exit) Regulations 2019 
2.  The Intellectual Property (Copyright and Related R ights) (Amendment) (EU Exit) 
Regulations 2019( e) are amended in accordance with this Part. 
3.  For regulation 31(a) substitute— 
“(a) in paragraph (3)— 
 (i) in sub-paragraph (a) omit “and the relevant da tabase maintained by the Office 
for Harmonization in the Internal Market; and”; 
 (ii) omit sub-paragraph (b);”. 
4.  In regulation 38, for “exit day” substitute “IP co mpletion day”. 
PART 3  
Amendments to the Intellectual Property (Exhaustion  of Rights) (EU Exit) 
Regulations 2019 
5.  The Intellectual Property (Exhaustion of Rights) ( EU Exit) Regulations 2019( f) are amended 
in accordance with this Part. 
6.  In regulation 2(1) for “exit day”, in each place i t occurs, substitute “IP completion day”. 
PART 4 
Amendments to the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 
7.  The Trade Marks (Amendment etc.) (EU Exit) Regulat ions 2019( g) are amended in 
accordance with this Part. 
8.  In regulation 2, for “exit day”, in both places it  occurs, substitute “IP completion day”. 
9.  Schedule 1 (Amendments to the 1994 Act to make pro vision for certain trade marks registered 
as European Union trade marks to be treated as regi stered trade marks and about certain 
applications for such marks) is amended as follows—  
                                                                                                                                            
(a) S.I. 2005/2339, amended by S.I. 2006/1028, 2007/3 378, 2011/1043 and 2014/2400 and the Intellectual P roperty 
(Unjustified Threats) Act 2017, c. 14. 
(b) OJ L3, 5.1.2002, p.1. 
(c) OJ L386, 29.12.2006, p.14. 
(d) S.I. 2006/1975, as amended by S.I. 2008/2683, 200 9/546, 2013/444 and 2014/2405.  
(e) S.I. 2019/605. 
(f) S.I. 2019/265. 
(g) S.I. 2019/269.  3(a)  in section 52A of the 1994 Act( a) (to be inserted by paragraph 2), for “exit day”, in both 
places it occurs, substitute “IP completion day”; 
(b)  in Schedule 2A to the 1994 Act (to be inserted by p aragraph 3)— 
(i)  for “exit day”, in each place it occurs, substitute  “IP completion day”; 
(ii)  after paragraph 21, insert— 
“Existing EUTM: effect of invalidity or revocation 
21A. —(1) This paragraph applies where, on IP completion  day, an existing EUTM is the 
subject of proceedings under Article 58 (Grounds fo r revocation), 59 (Absolute grounds for 
invalidity) or 60 (Relative grounds for invalidity)  which have been instituted but not finally 
determined before IP completion day (“cancellation proceedings”). 
(2) Subject to sub-paragraph (4), where— 
(a) the existing EUTM is revoked or declared invali d (whether wholly or partially) 
pursuant to a decision in the cancellation proceedi ngs which is finally determined, 
and 
(b) the registrar has— 
 (i) received notice of the situation referred to i n paragraph (a) (“a cancellation 
notice”), or 
 (ii) otherwise become aware of the situation refer red to in paragraph (a), 
the registration of the comparable trade mark (EU) which derives from the existing EUTM 
must be revoked or declared invalid to the same ext ent as the existing EUTM. 
(3) Where (by virtue of sub-paragraph (2)) the regi stration of a comparable trade mark 
(EU) is revoked or declared invalid to any extent, the registrar must— 
(a) remove the comparable trade mark (EU) from the register (where the revocation or 
declaration of invalidity relates to all the goods or services for which the existing 
EUTM was registered); or 
(b) amend the entry in the register listing the goo ds or services for which the 
comparable trade mark (EU) is registered (where the  revocation or declaration of 
invalidity relates to only some of the goods or ser vices for which the existing 
EUTM was registered). 
(4) The registration of a comparable trade mark (EU ) must not be revoked or declared 
invalid under sub-paragraph (2) where the grounds o n which the existing EUTM was 
revoked or declared invalid (whether wholly or part ially) would not apply or would not 
have been satisfied in relation to the comparable t rade mark (EU)— 
(a) if the comparable trade mark (EU) had existed a s at the date the cancellation 
proceedings were instituted, and 
(b) an application for the revocation or a declarat ion of invalidity of the comparable 
trade mark (EU) based on those grounds had been mad e on that date under section 
46 or 47 (as the case may be). 
(5) Where a comparable trade mark (EU) is revoked o r declared invalid to any extent 
pursuant to this paragraph— 
(a) the rights of the proprietor are deemed to have  ceased to that extent as from the 
date on which the rights of the proprietor of the e xisting EUTM are deemed to 
have ceased under the EUTM Regulation; 
(b) subject to any claim for compensation for damag e caused by negligence or lack of 
good faith on the part of the proprietor or a claim  for restitution based upon the 
                                                                                                                                            
(a) 1994 c. 26.  4unjust enrichment of the proprietor, the revocation  or invalidity of the comparable 
trade mark (EU) does not affect— 
 (i) a decision arising from infringement proceedin gs which has been finally 
determined and which has been enforced prior to the  date on which the entry 
in the register of the comparable trade mark (EU) h as been removed or 
amended pursuant to sub-paragraph (3) (“the decisio n date”); 
 (ii) any contract entered into prior to the decisi on date to the extent that it has 
been performed prior to the decision date, subject to the right of a party to the 
contract to claim the repayment of any consideratio n paid under the contract 
where, having regard to the circumstances, it is fa ir and equitable for such 
repayment to be made. 
(6) A cancellation notice may be submitted to the r egistrar by any person. 
(7) For the purposes of this paragraph— 
(a) proceedings are instituted if an application or  counterclaim for revocation or for a 
declaration of invalidity— 
 (i) has been filed (and not subsequently withdrawn ) with the European Union 
Intellectual Property Office or a court designated for the purposes of Article 
123, and 
 (ii) meets the requirements for being accorded a f iling date under the European 
Union Trade Mark Regulation and Commission Delegate d Regulation (EU) 
2018/625 of 5th March 2018; 
(b) a decision is finally determined when— 
 (i) it has been determined, and 
 (ii) there is no further possibility of the determ ination being varied or set aside 
(disregarding any power to grant permission to appe al out of time).”. 
10.  Schedule 3 (Other amendments to the 1994 Act) is a mended as follows— 
(a)  for paragraph 2(4) substitute— 
“(4) In subsection (4B)— 
(a) in paragraph (a) for “provision of EU law” subs titute “enactment or rule of law”; 
(b) in paragraph (b) for “EU” substitute “United Ki ngdom”.”; 
(b)  in paragraph 4(5)(a), for “exit day” substitute “IP  completion day”; 
(c)  in paragraph 10, for “exit day” substitute “IP comp letion day”. 
11.  Schedule 4 (Amendments to the Rules) is amended as  follows— 
(a)  for paragraph 6 substitute— 
“6. —(1) Rule 11 is amended as follows. 
(2) At the end of paragraph (1)(d), omit “.” and su bstitute “;”. 
(3) After paragraph (1)(d) insert— 
“(e) a proprietor of a comparable trade mark (EU) w ho sends a derogation notice 
to the registrar under rule 43A.”. 
(4) In paragraph (4), for “another EEA state” subst itute “an EEA state”.”. 
(b)  after paragraph 6 insert— 
“6A. —(1) Rule 12 is amended as follows. 
(2) At the end of paragraph (4)(d), omit “.” and su bstitute “;”. 
(3) After paragraph (4)(d), insert—  5“(e) in the case of the proprietor who sends a dero gation notice to the registrar, 
the registrar must proceed as if the proprietor had  not sent a derogation 
notice.”.”. 
(c)  after paragraph 10 insert— 
“10A. —(1) Rule 43 is amended as follows. 
(2) At the end of paragraph (1)(b), omit “, or” and  substitute “;”. 
(3) At the end of paragraph (1)(c), omit “,” and su bstitute “; or”. 
(4) After paragraph (1)(c), insert— 
“(d) the registration of a comparable trade mark (E U) is revoked or declared 
invalid to any extent under rule 43A(6),”. 
(5) In paragraph (2), after “application and shall”  insert “, in the cases referred to in 
paragraph (1)(a) to (c),”. 
(6) In paragraph (3)— 
(a) after “TM8” insert “or the derogation notice”; 
(b) after “TM26(O)” omit “or” and substitute “,”; 
(c) after “TM 26(I)” insert “or notification from t he registrar under rule 43(4)(b) that 
the comparable trade mark (EU) will be revoked or d eclared invalid to the same 
extent as the corresponding EUTM”. 
10B. After rule 43 insert— 
“Invalidation or revocation of Existing EUTM: Cance llation notice and 
procedure on application for derogation; Schedule 2 A paragraph 21A 
43A. —(1) A cancellation notice under paragraph 21A of S chedule 2A must— 
(a) identify the existing EUTM by the number under which the existing EUTM 
was registered in the EUTM Register immediately bef ore IP completion 
day, together with a representation of the mark, 
(b) include the following details with regard to th e decision pursuant to which 
the existing EUTM was revoked or declared invalid ( whether wholly or 
partially)— 
 (i) the date of the decision (including any decisi on determined on appeal), 
 (ii) whether the revocation or declaration of inva lidity related to all or part 
of the goods or services for which the existing EUT M was registered, 
 (iii) where the existing EUTM was revoked (whether  wholly or partially) 
the date on which the revocation took effect, 
(c) be accompanied by a copy of the decision (inclu ding any decision 
determined on appeal) pursuant to which the existin g EUTM was revoked 
or declared to be invalid, and 
(d) include a statement confirming that the decisio n pursuant to which the 
existing EUTM was revoked or declared invalid (whet her wholly or 
partially) has been finally determined. 
(2) Where a cancellation notice is submitted to the  registrar by the proprietor of the 
comparable trade mark (EU) which derives from the e xisting EUTM, the 
cancellation notice must be accompanied by— 
(a) a notice (a “derogation notice”) in writing to the registrar that, based upon 
the provisions in paragraph 21A(4) of Schedule 2A, the comparable trade 
mark (EU) should not be revoked or declared invalid  (whether wholly or 
partially), and  6(b) a statement of the reasons why paragraph 21A(4)  of Schedule 2A applies (a 
“statement”) together with relevant supporting evid ence (“supporting 
evidence”). 
(3) Where the proprietor of a comparable trade mark  (EU) submits a cancellation 
notice to the registrar but fails to send a derogat ion notice, a statement or supporting 
evidence, the registration of the comparable trade mark (EU) which derives from the 
existing EUTM identified in the cancellation notice  must be revoked or declared 
invalid to the same extent as the existing EUTM, un less the registrar directs 
otherwise. 
(4) Where the registrar receives a cancellation not ice submitted by a person other 
than the proprietor of the comparable trade mark (E U) which derives from the 
existing EUTM, the registrar must as soon as reason ably practicable after receipt of 
the cancellation notice— 
(a) send a copy of the cancellation notice to the p roprietor of the comparable 
trade mark (EU) which derives from the existing EUT M identified in the 
cancellation notice, and 
(b) notify the proprietor of the comparable trade m ark (EU) which derives from 
the existing EUTM that based upon the revocation or  declaration of 
invalidity of the existing EUTM, the comparable tra de mark (EU) will be 
revoked or declared invalid to the same extent as t he corresponding EUTM. 
(5) Where the registrar has become aware of the sit uation referred to in paragraph 
21A(2)(a) of Schedule 2A otherwise than by a cancel lation notice, the registrar must 
as soon as reasonably practicable after becoming aw are of that situation, notify the 
proprietor of the comparable trade mark (EU) which derives from the existing 
EUTM in the terms provided in paragraph (4)(b). 
(6) The proprietor of a comparable trade mark (EU) referred to in paragraph (4) 
and (5) must, within such period of not less than o ne month as may be specified in 
the notice referred to in paragraph (4)(b) and (5),  send to the registrar a derogation 
notice accompanied by a statement and supporting ev idence as referred to in 
paragraph (2), failing which the registration of th e comparable trade mark (EU) must 
be revoked or declared invalid to the same extent a s the corresponding EUTM, 
unless the registrar directs otherwise. 
(7) The registrar must, in reaching a decision as t o whether paragraph 21A(4) of 
Schedule 2A applies to a comparable trade mark (EU) , have regard to the statement 
and supporting evidence filed by the proprietor of the comparable trade mark (EU) 
and must send written notice of the decision to the  proprietor, stating the reasons for 
that decision. 
(8) For the purposes of any appeal against a decisi on referred to in sub-paragraph 
(7), the date on which the notice is sent must be t aken to be the date of the 
decision. ” .”. 
(d)  in rule 47(n) (to be inserted by paragraph 11(6)), after “corresponding EUTM” insert “, 
and where the corresponding EUTM is subject to canc ellation proceedings, that 
cancellation is pending”. 
12.  In Schedule 5 (Consequential amendments, repeals, revocations, transitional and saving 
provisions), in paragraph 6, in column 2 of the fir st entry in the Table, for “Schedule 12” 
substitute “Schedule 21”.  7PART 5 
Amendments to the Designs and International Trade M arks (Amendment etc.) (EU 
Exit) Regulations 2019 
13.  The Designs and International Trade Marks (Amendme nt etc.) (EU Exit) Regulations 
2019( a) are amended in accordance with this Part. 
14.  In the heading to regulation 4 and in regulation 4 (1), for “exit day”, in each place it occurs, 
substitute “IP completion day”. 
15.  In regulation 5, for “exit day”, in each place it occurs, substitute “IP completion day”. 
16.  In regulation 6, for “exit day”, in both places it  occurs, substitute “IP completion day”. 
17.  Schedule 1, Part 1 (Design Regulation and suppleme ntary unregistered designs) is amended 
as follows— 
(a)  in Article 1(3) of the Design Regulation (as substi tuted by paragraph 2), for “exit day” 
substitute “IP completion day”; 
(b)  in Article 7 of the Design Regulation (as substitut ed by paragraph 8), for “exit day”, in 
both places it occurs, substitute “IP completion da y”; 
(c)  for paragraph 19(b) substitute— 
“(b) for “Community”, in the third place it appears , substitute “United Kingdom or the 
European Economic Area”.”; 
(d)  in paragraph 27(b), for “placee” substitute “place” ; 
(e)  in Article 81(2)(d) (as substituted by paragraph 29 ), omit “a continuing”. 
18.  In Schedule 1, Part 2 (2005 Regulations and the su pplementary unregistered design right), in 
regulation 4(3) of the 2005 Regulations (as substit uted by paragraph 63(b)), for “exit day” 
substitute “IP completion day”. 
19.  Schedule 2, Part 1 (Design Regulation and continui ng unregistered Community designs) is 
amended as follows— 
(a)  in paragraph 5, for “exit day” substitute “IP compl etion day”; 
(b)  in Article 81(2) of the Design Regulation (as subst ituted by paragraph 29)— 
(i)  in sub-paragraphs (a) to (c)— 
(aa)  for “supplementary”, in each place it occurs, subst itute “continuing”; 
(bb)  after “unregistered”, insert “Community”; 
(ii)  in sub-paragraph (d)— 
(aa)  omit “a supplementary”; 
(bb)  after “unregistered”, insert “Community”; 
(c)  in Articles 82 and 83 of the Design Regulation (as substituted by paragraph 30), for “exit 
day”, in each place it occurs, substitute “IP compl etion day”. 
20.  In Schedule 2, Part 2 (2005 Regulations and contin uing unregistered Community designs), in 
regulation 4(3)(a) of the 2005 Regulations (as subs tituted by paragraph 58(b)), for “exit day” 
substitute “IP completion day”. 
21.  Schedule 3 (Amendments to the 1949 Act to make pro vision for certain registered 
Community designs and International designs to be t reated as registered under the 1949 Act from 
exit day and about certain applications for registe red Community designs made before exit day) is 
amended as follows— 
                                                                                                                                            
(a) S.I. 2019/638.  8(a)  in the heading, for “exit day”, in both places it o ccurs, substitute “IP completion day”; 
(b)  in sections 12A and 12B of the 1949 Act (as prospec tively inserted by paragraph 2), for 
“exit day”, in each place it occurs, substitute “IP  completion day”; 
(c)  in Schedule 1A to the 1949 Act (as prospectively in serted by paragraph 3)— 
(i)  for “exit day”, in each place it occurs, substitute  “IP completion day”; 
(ii)  after paragraph 9 insert— 
“Existing registered Community design: effect of in validity 
9A. —(1) This paragraph applies where, on IP completion  day, an existing registered 
Community design is the subject of proceedings unde r Article 25 (Grounds for invalidity) 
which have been instituted but not finally determin ed before IP completion day 
(“invalidation proceedings”). 
(2) Subject to sub-paragraph (4) where— 
(a) the existing registered Community design is dec lared invalid (whether wholly or 
partly) pursuant to a decision which is finally det ermined, and 
(b) the registrar has either— 
 (i) received notice of the situation referred to i n paragraph (a) (“an invalidation 
notice”), or 
 (ii) otherwise become aware of the situation refer red to in paragraph (a), 
the registration of the re-registered design which derives from the existing registered 
Community design must be declared invalid to the sa me extent as the existing registered 
Community design. 
(3) Where (by virtue of sub-paragraph (2)) the regi stration of a re-registered design is 
declared invalid, the registrar must— 
(a) where there is a partial declaration of invalid ity, amend the entry in the register of 
designs; 
(b) otherwise, remove the re-registered design from  the register. 
(4) The registration of a re-registered design must  not be declared invalid under sub-
paragraph (2) where the grounds on which the existi ng registered Community design was 
declared invalid (whether wholly or partly) would n ot apply or would not have been 
satisfied in relation to the re-registered Communit y design if— 
(a) the re-registered design had been the subject o f an entry on the register as at the 
date the invalidation proceedings were instituted, and 
(b) an application for a declaration of invalidity of the re-registered design based on 
those grounds had been made on that date under sect ion 11ZA. 
(5) Where the registration of a re-registered desig n is declared invalid to any extent 
pursuant to this paragraph— 
(a) it shall to that extent be treated as having be en invalid from the date on which the 
rights of the proprietor of the existing registered  Community design from which it 
derives are deemed to have ceased under the Communi ty Design Regulation; 
(b) subject to any claim for compensation for damag e caused by negligence or lack of 
good faith on the part of the proprietor or a claim  for restitution based upon the 
unjust enrichment of the proprietor, the invalidity  of the registration of the re-
registered design does not affect— 
 (i) a decision arising from infringement proceedin gs which has been finally 
determined and which has been enforced prior to the  date of the declaration of 
invalidity made pursuant to sub-paragraph (2) (“the  invalidity declaration 
date”);  9 (ii) any contract entered into prior to the invali dity declaration date to the extent 
that it has been performed prior to that date, subj ect to the right of a party to 
the contract to claim the repayment of any consider ation paid under the 
contract where, having regard to the circumstances,  it is fair and equitable for 
such repayment to be made. 
(6) Where a declaration is made under sub-paragraph  (2), section 11ZE(2) does not apply. 
(7) An invalidation notice may be sent by any perso n. 
(8) For the purposes of this paragraph— 
(a) proceedings are instituted if an application or  counterclaim for a declaration of 
invalidity— 
 (i) has been filed (and not subsequently withdrawn ) with the European Union 
Intellectual Property Office or a court designated for the purposes of Article 
80, and 
 (ii) meets the requirements for being accorded a f iling date under the Community 
Design Regulation and Commision Regulation (EC) No 2245/2002 of 21 
October 2002; 
(b) a decision is finally determined when— 
 (i) it has been determined; and 
 (ii) there is no further possibility of the determ ination being varied or set aside 
(disregarding any power to grant permission to appe al out of time). 
(9) An appeal lies from a declaration of invalidity  under sub-paragraph (2).”; 
(d)  in Schedule 1B to the 1949 Act (as prospectively in serted by paragraph 3)— 
(i)  for “exit day”, in each place it occurs, substitute  “IP completion day”; 
(ii)  in the heading to paragraph 7, omit “registered” th e first time it occurs. 
22.  Schedule 4 (Amendments to the 1994 Act to make pro vision 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 appl ications) is amended as follows— 
(a)  in section 54A of the 1994 Act (as prospectively in serted by paragraph 2), for “exit day”, 
in each place it occurs, substitute “IP completion day”; 
(b)  in Schedule 2B to the 1994 Act (as prospectively in serted by paragraph 3), for “exit day”, 
in each place it occurs, substitute “IP completion day”. 
23.  Schedule 5, Part 1 (Fees payable in respect of a r e-registered design or a re-registered 
international design) is amended as follows— 
(a)  in paragraph 1(2)— 
(i)  omit “of six months”; 
(ii)  for “exit day” substitute “IP completion day”; 
(b)  in paragraph 1(3)— 
(i)  for “ending” substitute “beginning”; 
(ii)  for “exit day” substitute “IP completion day”. 
24.  Schedule 6 (Amendments to the Registered Designs R ules) is amended as follows— 
(a)  in paragraph 3(a), for “exit day”, in both places i t occurs, substitute “IP completion day”; 
(b)  after paragraph 3 insert— 
“3A. After rule 15 insert—  10 “Invalidation of existing registered Community desi gn: invalidation notice and 
procedure on application for derogation; Schedule 1 A paragraph 9A 
15A. —(1) An invalidation notice under paragraph 9A of S chedule 1A must— 
(a) identify the existing registered Community desi gn by the number under 
which it was registered in the RCD register immedia tely before IP 
completion day, together with a representation of t he design, 
(b) be accompanied by a copy of the decision (inclu ding any decision 
determined on appeal) pursuant to which the existin g registered Community 
design was declared to be invalid, and 
(c) include a statement confirming that the decisio n pursuant to which the 
registered Community design was declared invalid (w hether wholly or 
partly) has been finally determined. 
(2) Where an invalidation notice is sent to the reg istrar by the proprietor of the re-
registered design which derives from the existing r egistered Community design, the 
invalidation notice must be accompanied by— 
(a) a notice (a “derogation notice”) in writing to the registrar that, based upon 
the provisions in paragraph 9A(4) of Schedule 1A, t he re-registered design 
should not be declared invalid (whether wholly or p artly), and 
(b) a statement of the reasons why paragraph 9A of Schedule 1A applies (a 
“statement”) together with relevant supporting evid ence (“supporting 
evidence”). 
(3) Where the proprietor of a re-registered design submits an invalidation notice to 
the registrar but fails to send a derogation notice , a statement, or supporting 
evidence, the registration of the re-registered des ign which derives from the existing 
registered Community design identified in the inval idation notice must be declared 
invalid to the same extent as the existing register ed Community design, unless the 
registrar directs otherwise. 
(4) Where the registrar has received an invalidatio n notice from a person other than 
the proprietor of the re-registered design which de rives from the existing registered 
Community design, the registrar must as soon as rea sonably practicable after receipt 
of the invalidation notice— 
(a) send a copy of the invalidation notice to the p roprietor of the re-registered 
design which derives from the existing registered C ommunity design 
identified in the invalidation notice, and 
(b) notify the proprietor of the re-registered desi gn which derives from the 
existing registered Community design that based upo n the declaration of 
invalidity of the existing registered Community des ign, the re-registered 
design will be declared invalid to the same extent as the existing registered 
Community design from which it derives. 
(5) Where the registrar has become aware of the sit uation referred to in paragraph 
9A of Schedule 1A otherwise than by an invalidation  notice, the registrar must as 
soon as reasonably practicable after becoming aware  of that situation notify the 
proprietor of the re-registered design which derive s from the existing registered 
Community design in the terms provided in paragraph  (4)(b). 
(6) The proprietor of the re-registered design refe rred to in paragraphs (4) and (5) 
must, within such period of not less than one month  as may be specified in the notice 
referred to in paragraphs (4)(b) and 5, send to the  registrar a derogation notice 
accompanied by a statement and supporting evidence as referred to in paragraph (2), 
failing which the registration of the re-registered  design must be declared invalid to 
the same extent as the registered Community design from which the re-registered 
design derives, unless the registrar directs otherw ise.  11 (7) The registrar must, in reaching a decision as t o whether paragraph 9A of 
Schedule 1A applies to a re-registered design, have  regard to the statement and 
supporting evidence filed by the proprietor of the re-registered design and must send 
written notice of the decision to the proprietor, s tating the reasons for that decision. 
(8) For the purposes of any appeal against a decisi on referred to in sub-paragraph 
(7), the date on which the notice is sent must be t aken to be the date of the 
decision. ” .”; 
(c)  in rule 27(e) of the Registered Designs Rules (as p rospectively inserted by paragraph 
6(b)), for “exit day” substitute “IP completion day ”; 
(d)  for paragraph 8 substitute— 
“8. —(1) Rule 42 (address for service) is amended as fo llows. 
(2) At the end of sub-paragraph (c) omit “, or” and  substitute “;”. 
(3) After sub-paragraph (1)(c) insert— 
“(d) a proprietor of a re-registered design who sen ds a derogation notice to the 
registrar under rule 15A.”. 
(4) In paragraph (4), for “another EEA state” subst itute “an EEA state”. ”; 
(e)  after paragraph 8 insert— 
“9. —(1) Rule 43 (failure to furnish an address for ser vice) is amended as follows. 
(2) At the end of sub-paragraph 4(c) omit “, or” an d substitute “;”. 
(3) After sub-paragraph (4)(c) insert— 
“(d) in the case of a proprietor who sends a deroga tion notice to the registrar, the 
registrar must proceed as if the proprietor had not  sent a derogation 
notice. ” .”. 
25.  In Schedule 8, Part 1 (Further amendments to the 1 949 Act), omit paragraph 7. 
PART 6 
Amendments to the Patents (Amendment) (EU Exit) Reg ulations 2019 
26.  The Patents (Amendment) (EU Exit) Regulations 2019 ( a) are amended in accordance with 
this Part. 
27.  For regulation 3(a) and (b), substitute— 
“(a) in the heading for “EU compulsory”, substitute  “Compulsory pharmaceutical”; 
(b) in subsection (1), for “an “EU compulsory”, sub stitute “a “compulsory 
pharmaceutical”;”. 
28.  Omit regulation 4. 
29.  For the definition of “plant breeders’ right” subs tituted by regulation 7(2)(c), substitute— 
““plant breeders’ right” means— 
(a) any right granted under, or having effect as if  granted under, section 3 of the 1997 
Act (including existing rights as defined by sectio n 40(4) of that Act); and 
(b) any right which by virtue of regulation 3 of th e Plant Breeders’ Rights 
(Amendment etc.) (EU Exit) Regulations 2019( b) is treated as if it were a plant 
breeders’ right granted in accordance with the 1997  Act and as if the variety were 
registered in accordance with regulations under sec tion 18(1)(c) of the 1997 Act;”. 
                                                                                                                                            
(a) S.I. 2019/801. 
(b) S.I. 2019/204.  12 30.  Omit regulation 17. 
31.  In the insertion after paragraph 10 of Regulation (EC) No 1610/96 made by regulation 20(3), 
for paragraph 12 substitute— 
“12. ‘court’ means— 
(a) as respects England and Wales, the High Court; 
(b) as respects Scotland, the Court of Session; 
(c) as respects Northern Ireland, the High Court in  Northern Ireland.”. 
32.  Omit regulation 21. 
33.  In regulation 24(3), in the insertion of paragraph  8(1)(b), for “Part A section 1, points 1 to 7 
or Part B, Section 1 points 1 to 5”, substitute “Pa rt A section 1, points 1.1 to 1.7 or Part B, Sectio n 
1 points 1.1 to 1.4.3”. 
34.  In Regulation 52(3) in the insertion after Article  1(e) of Regulation (EC) No 469/2009— 
(a)  for paragraph (g), substitute— 
“(g) ‘court’ means— 
 (i) as respects England and Wales, the High Court;  
 (ii) as respects Scotland, the Court of Session; 
 (iii) as respects Northern Ireland, the High Court  in Northern Ireland;” and 
(b)  in paragraph (j), after “granted” insert “or having  effect as if granted”. 
35.  Omit regulation 53. 
36.  In regulation 62, omit “before”. 
37.  In regulation 69, for “exit day” in each place it occurs, substitute “IP completion day”. 
PART 7 
Amendments to the Patents Act 1977 
38.  The Patents Act 1977( a) is amended as follows. 
39.  In Schedule A1— 
(a)  in paragraph 1, omit the definition of “Council Reg ulation”; 
(b)  in paragraph 3(3), for “Article 14(3) fourth indent  of the Council Regulation”, substitute 
“regulation 20A of the Plant Breeders’ Rights Regul ations 1998( b)”; 
(c)  in paragraph 4, for “Article 14(3) third indent of the Council Regulation”, substitute 
“section 9(10) of the Plant Varieties Act 1997( c)”. 
                                                                                                                                            
(a) 1977 c. 37. 
(b) S.I. 1998/1027. Regulation 20A is prospectively i nserted into the1998 Regulations by S.I. 2019/204, reg 17(5). 
(c) 1997 c. 66. Section 9(10) is prospectively insert ed into the 1997 Act by S.I. 2019/204, reg 15(2)(c) .  13 PART 8 
Amendments to Regulation (EC) No 469/2009 and relat ed amendments 
Amendments to Regulation (EC) No 469/2009 
40.  Regulation (EC) No 469/2009( a) of the European Parliament and of the Council of 6th May 
2009 concerning the supplementary protection certif icate for medicinal products is amended as set 
out in the Schedule. 
Amendment to Regulation (EU) No 2019/933 
41. —(1) Regulation (EU) 2019/933 of the European Parli ament and of the Council of 20th May 
2019 amending Regulation (EC) No 469/2009 concernin g the supplementary protection certificate 
for medicinal products is amended as follows. 
(2)  After Article 2 (entry into force), omit “This Regu lation shall be binding in its entirety and 
directly applicable in all Member States.”. 
Amendment to the Patents Rules 2007 
42.  In the Patents Rules 2007( b), after rule 116, insert— 
“Notifications relating to supplementary protection certificates 
116A.  Notifications under Article 5(2)(b) and (c) of the  Medicinal Products Regulation 
must be made on Patents Form SP5.”. 
Transitional provisions 
43. —(1) Paragraph (2) applies where, before IP complet ion day, a product or a medicinal 
product containing that product, as defined in Arti cle 1 of Regulation EC (No) 469/2009, is 
marked in accordance with that Regulation with the logo set out in Annex -I of that Regulation. 
(2)  That product or medicinal product containing that p roduct so marked is not required, after 
these Regulations come into force, to have the word s “UK export” affixed to it. 
(3)  Paragraph (4) applies where, before IP completion d ay, a notification is made to the 
Comptroller-General of Patents, Designs and Trade M arks in the form set out in Annex -Ia of 
Regulation (EC) No 469/2009. 
(4)  That notification is to be treated, on and after IP  completion day, as a notification made— 
(a)  on Patents Form SP5; and 
(b)  on the same date as the notification made on the fo rm set out in that Annex -Ia. 
 
 
 Amanda Solloway 
 Parliamentary Under Secretary 
22nd September 2020 Department for Business, Energy  and Industrial Strategy 
 
 
We consent to the making of these Regulations 
 
 Maggie Throup  
 Rebecca Harris  
28th September 2020 Two of the Lords Commissioners of Her Majesty’s Treasury 
                                                                                                                                            
(a) OJ L152, 16.6.2009, p.1 amended by Regulation (EU ) 2019/933, OJ L153, 11.6.2019, p.1. 
(b) S.I. 2007/3291, as amended by 2011/2052; there ar e other amending instruments but none are relevant.   14  SCHEDULE Regulation 40 
Amendments to Regulation (EC) No 469/2009 
Interpretation of Schedule 
1.  In this Schedule, a reference to an Article, parag raph, point or Annex is to that of Regulation 
(EC) No 469/2009. 
Article 1: definitions 
2.  In Article 1, in relation to the definition of “ma ker”— 
(a)  for “Union”, substitute “United Kingdom”; 
(b)  omit “third”; 
(c)  after “countries”, insert “outside the United Kingd om, the Isle of Man and the Member 
States of the European Union”; and 
(d)  renumber that definition as paragraph (k) and inser t after the definition of “UK 
authorisation( a)”. 
Article 5: effects of the certificate 
3.  In Article 5— 
(a)  in paragraph 2(a)— 
(i)  in point (i)— 
(aa)  omit “third”; and 
(bb)  after “countries”, insert “outside the United Kingd om, the Isle of Man and the 
Member States of the European Union”; 
(ii)  in point (ii), for “Union”, substitute “United King dom”; 
(iii)  in point (iii)— 
(aa)  for “Member State of making”, substitute “United Ki ngdom”; 
(bb)  for “Member States”, substitute “the United Kingdom , the Isle of Man or one 
or more Member States of the European Union”; 
(iv)  in point (iv), for “Union”, substitute “United King dom”; 
(b)  in paragraph 2(b)— 
(i)  for “authority” to “take place”, substitute “comptr oller”; 
(ii)  for “that Member State”, substitute “the United Kin gdom”; 
(iii)  for “a”, where it appears before the last occurrenc e of “certificate”, substitute “that”; 
(c)  in paragraph 2(c), for “authority referred to in Ar ticle 9(1)”, substitute “comptroller”; 
(d)  in paragraph 2(d)— 
(i)  omit “third”; 
(ii)  after “countries”, insert “outside the United Kingd om, the Isle of Man and the 
Member States of the European Union”; 
(iii)  for “a logo, in the form set out in Annex -I, is af fixed”, substitute “the words ‘UK 
export’ are affixed so as to be sufficiently clear and visible to the naked eye”; 
(e)  in paragraph 2(e), omit from “and” to the end of th e sentence; 
(f)  in paragraph 3, for “Union”, substitute “United Kin gdom”; 
                                                                                                                                            
(a) The definition of “UK authorisation” is inserted by S.I. 2019/801.  15 (g)  in paragraph 5— 
(i)  omit point (c); 
(ii)  in point (d), omit from “granted” the first time it  appears to “making” the second 
time it appears; 
(iii)  in point (e)— 
(aa)  omit “third”, both times it appears; 
(bb)  after “countries”, insert “outside the United Kingd om, the Isle of Man and the 
Member States of the European Union”; 
(h)  in paragraph 6— 
(i)  for “authority”, substitute “comptroller”; 
(ii)  for “contained in Annex -Ia”, substitute “prescribe d by rules made under section 123 
of the Patents Act 1977”; 
(i)  in paragraph 7— 
(i)  omit “third”; 
(ii)  after “country”, the first time it appears, insert “outside the United Kingdom, the Isle 
of Man and the Member States of the European Union” ; 
(j)  omit paragraph 8, including its footnote; 
(k)  after paragraph 10, insert— 
“11.  The Secretary of State may by regulations make fur ther provision as to the manner 
and form (including design and colour) of affixing the words “UK export” to the outer 
packaging of the product, or the medicinal product containing that product, referred to in 
paragraph 2(a)(i) of this Article, and, where feasi ble, to its immediate packaging. 
12.  Those regulations are to be made by statutory inst rument which is subject to 
annulment pursuant to a resolution of either House of Parliament.”. 
Article 11: publication 
4.  In Article 11(4)— 
(a)  for “authority referred to in Article 9(1)”, substi tute “comptroller”; 
(b)  for “It”, substitute “The comptroller”. 
Article 21a: evaluation 
5.  Omit Article 21a. 
Annex -I and Annex -I: logo and standard form 
6.  Omit Annex -I and Annex -Ia. 
 
 
 
EXPLANATORY NOTE 
(This note is not part of the Regulations) 
These Regulations amend the following statutory ins truments (the “existing regulations”) which 
were made as a consequence of the United Kingdom ex iting the European Union: 
• The Intellectual Property (Exhaustion of Rights) ( EU Exit) Regulations 2019 (S.I. 
2019/265); 
• The Trade Marks (Amendment etc.) (EU Exit) Regulat ions 2019 (S.I. 2019/269) (“the 
Trade Marks Regulations”);  16 • The Intellectual Property (Copyright and Related R ights) (Amendment) (EU Exit) 
Regulations 2019 (S.I. 2019/605) (“the Copyright Re gulations”); 
• The Designs and International Trade Marks (Amendme nt etc.) (EU Exit) Regulations 
2019 (S.I. 2019/638) (“the Designs Regulations”); a nd 
• The Patents (Amendment) (EU Exit) Regulations 2019  (S.I. 2019/801) (“the Patents 
Regulations”). 
These Regulations substitute “IP completion day” fo r the various references to “exit day” in the 
existing regulations (“IP completion day” is define d in the European Union (Withdrawal 
Agreement) Act 2020 (c.1) (“the 2020 Act”) as 11pm on 31st December 2020). This will ensure 
that the provisions in the existing regulations wil l take effect by reference to IP completion day 
rather than exit day. The existing regulations will  come into force on IP completion day by 
operation of paragraph 1 of Schedule 5 to the 2020 Act. These Regulations also amend certain 
errors contained in the existing regulations. For e xample, Part 2 corrects an error where a 
reference to Schedule ZA1 to the Copyright, Designs  & Patents Act 1988 had been inadvertently 
retained in regulation 31(a) of the Copyright Regul ations despite its deletion from that Act by 
another provision of the Copyright Regulations. 
Part 4 amends the Trade Marks Regulations to make f urther changes to the Trade Marks Act 1994 
(“the 1994 Act”) and the Trade Marks Rules 2008 to implement Article 54(3) of the Agreement on 
the withdrawal of the United Kingdom of Great Brita in and Northern Ireland from the European 
Union and the European Atomic Energy Community sign ed on 24th January 2020 (“the 
Withdrawal Agreement”), insofar as it relates to Eu ropean Union trade marks. The Trade Marks 
Regulations provide that a European Union trade mar k (“an existing EUTM”) which is registered 
immediately before exit day (now amended to “IP com pletion day”) is to be treated on and after 
that day as if it were a trade mark registered unde r the 1994 Act (“a comparable trade mark 
(EU)”). 
New paragraph 21A of Schedule 2A to the 1994 Act ap plies where on IP completion day an 
existing EUTM is the subject of revocation or inval idity proceedings, which after IP completion 
day results in the revocation of or a declaration o f invalidity in respect of the existing EUTM. 
Where the registrar (as defined in the 1994 Act) re ceives notice or otherwise becomes aware of 
such revocation or declaration of invalidity, the c omparable trade mark (EU) which derives from 
the existing EUTM must be revoked or declared inval id to the same extent as the existing EUTM 
and with effect from the same date except where the  grounds on which the existing EUTM was 
revoked or declared invalid would not have applied had the proceedings been brought against the 
comparable trade mark (EU) under the 1994 Act. 
New rule 43A of the Trade Marks Rules 2008 (S.I. 20 08/1797) sets out the procedural matters 
which apply where the registrar receives notice or otherwise becomes aware of the revocation of 
or declaration of invalidity in respect of an exist ing EUTM. 
Part 5 amends the Designs Regulations to make furth er changes to the Registered Designs Act 
1949 (“the 1949 Act”) and the Registered Designs Ru les 2006 to implement Article 54(3) of the 
Withdrawal Agreement insofar as it relates to regis tered Community designs. The Designs 
Regulations provide that a registered Community des ign (“an existing registered Community 
design”) which is registered immediately before exi t day (now amended to “IP completion day”) 
is to be treated on and after that day as if it wer e a design registered under the 1949 Act (“a re-
registered design”). 
New paragraph 9A of Schedule 1A to the 1949 Act app lies where on IP completion day an 
existing registered Community design is the subject  of invalidity proceedings, which after IP 
completion day results in a declaration of invalidi ty. Where the registrar (as defined in the 1949 
Act) receives notice or otherwise becomes aware of such declaration of invalidity, the re-
registered design which derives from the existing r egistered Community design must be declared 
invalid to the same extent as the existing register ed Community design and with effect from the 
same date, except where the grounds on which the ex isting registered Community design was  17 declared invalid would not have applied had the pro ceedings been brought against the re-
registered design under the 1949 Act. 
New rule 15A of the Registered Designs Rules 2006 ( S.I. 2006/1975) sets out the procedural 
matters which apply where the registrar receives no tice or otherwise becomes aware of the 
declaration of invalidity in respect of an existing  registered Community design. 
Part 6 amends the Patents Regulations to correct mi nor errors, to acknowledge the treatment of 
Community plant variety rights as plant breeders’ r ights by virtue of the Plant Breeders’ Rights 
(Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2 019/204) (“the Plant Breeders’ 
Regulations”), and to update transitional provision s to refer to IP completion day. 
Part 7 amends the Patents Act 1977 to replace refer ences to EU law with equivalent domestic 
legislation, aligning with amendments made by the P lant Breeders’ Regulations. 
Part 8 and the Schedule relate to supplementary pro tection certificates for medicinal products and 
arise out of changes made by Regulation (EU) 2019/9 33 of the European Parliament and of the 
Council of 20th May 2019 amending Regulation (EC) N o 469/2009 concerning the supplementary 
protection certificate for medicinal products. Part  8 amends Regulation 2019/933 and the Patents 
Rules 2007 (S.I. 2007/3291) and contains transition al provisions. The Schedule amends 
Regulation (EC) No 469/2009 to address inoperabilit ies occurring as a result of the 
aforementioned changes. 
An impact assessment has not been produced for this  instrument as no, or no significant, impact 
on the private, public and voluntary sectors is for eseen. 
An explanatory memorandum is available alongside th is instrument on the Legislation UK website 
at www.legislation.gov.uk. 
  
  
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