S T A T U T O R Y  I N S T R U M E N T S  
2019 No. 638 
EXITING THE EUROPEAN UNION 
DESIGNS 
TRADE MARKS 
The Designs and International Trade Marks (Amendmen t etc.) 
(EU Exit) Regulations 2019 
Made  - - - - 18th March 2019 
Coming into force into force in accordance with reg ulation 1 
The Secretary of State in exercise of powers confer red by section 8(1) of, paragraph 1 of Schedule 
4 to, and paragraph 21(b) of Schedule 7 to, the Eur opean Union (Withdrawal) Act 2018( a) and by 
section 36 of the Registered Designs Act 1949( b) and by section 78 of the Trade Marks Act 
1994( c) and with the consent of the Treasury makes the fo llowing Regulations. 
A draft of these Regulations has been approved by r esolutions of both Houses of Parliament 
pursuant to paragraph 1(1) of Schedule 7 to the Eur opean Union (Withdrawal) Act 2018. 
Citation and commencement 
1.  These Regulations may be cited as the Designs and International Trade Marks (Amendment 
etc.) (EU Exit) Regulations 2019 and come into forc e on exit day. 
Interpretation 
2.  In these Regulations— 
“1949 Act” means the Registered Designs Act 1949; 
“1994 Act” means the Trade Marks Act 1994; 
“2005 Regulations” means the Community Design Regul ations 2005( d); 
“continuing unregistered Community design” has the meaning given by regulation 4(2); 
“Design Regulation” means Council Regulation (EC) N o 6/2002 of 12th December 2001 on 
Community Designs as amended by Council Regulation (EC) 1891/2006 of 18th December 
2006 to give effect to the accession of the Europea n Community to the Geneva Act of the 
Hague Agreement concerning the international regist ration of industrial designs and by the 
                                                                                                                                            
(a) 2018 c.16. See section 20(1) of that Act for a de finition of “Minister of the Crown”. 
(b) 1949 c.88. 
(c) 1994 c.26. 
(d) 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.  2Decision of the European Union of 5th December 2011  on the admission of the Republic of 
Croatia to the European Union; 
“Registered Designs Rules” means the Registered Des igns Rules 2006( a); and 
“Trade Marks Rules” means the Trade Marks Rules 200 8(b). 
Amendments to the Design Regulation and the 2005 Re gulations relating to the creation and 
application of the supplementary unregistered desig n etc. 
3. —(1) The Design Regulation is amended by Part 1 of Schedule 1 to create the supplementary 
unregistered design. 
(2)  The 2005 Regulations are amended by Part 2 of Sched ule 1 to apply them to the 
supplementary unregistered design. 
Unregistered Community designs existing immediately  before exit day 
4. —(1) The amendments to the Design Regulation and th e 2005 Regulations made by regulation 
3 do not apply to an unregistered Community design which is protected under the Design 
Regulation immediately prior to exit day and remain s protected on exit day. 
(2)  That design is referred to as a “continuing unregis tered Community design”. 
(3)  The Design Regulation and the 2005 Regulations appl y to a continuing unregistered 
Community design subject to— 
(a)  as regards the Design Regulation, the modifications  set out in Part 1 of Schedule 2; and 
(b)  as regards the 2005 Regulations, the modifications set out in Part 2 of Schedule 2. 
Certain registered Community designs and internatio nal designs to have effect under the 
1949 Act 
5.  Schedule 3 contains amendments to the 1949 Act to make provision: 
(a)  for certain registered Community designs to be trea ted as registered under the 1949 Act 
from exit day and about certain applications for re gistered Community designs made 
before exit day; and 
(b)  for certain international registered designs design ating the European Union to be treated 
as registered under the 1949 Act from exit day and about certain applications for 
international designs designating the European Unio n made before exit day. 
International trade marks 
6.  Schedule 4 contains amendments to the 1994 Act to make provision for certain international 
trade marks protected in the European Union to be t reated as registered trade marks under the 
1994 Act from exit day and about certain applicatio ns for the protection of an international trade 
mark in the European Union and transformation appli cations made before exit day. 
Fees payable in respect of re-registered designs, i nternational re-registered designs, and 
comparable trade marks (IR) 
7.  Schedule 5 makes provision for the payment of fees  in respect of— 
(a)  a re-registered design (as that term is defined for  the purposes of Schedule 1A to the 1949 
Act as inserted by Schedule 3); 
                                                                                                                                            
(a) S.I. 2006/1975, as amended by S.I. 2008/2683, 200 9/546, 2013/444 and 2014/2405. 
(b) S.I. 2008/1797, as amended by S.I. 2009/546, S.I.  2009/2089, S.I. 2012/1003, S.I. 2013/2235, S.I. 20 18/825; there are other 
amending instruments but none are relevant.  3(b)  an international re-registered design (as that term  is defined for the purposes of Schedule 
1B to the 1949 Act as inserted by Schedule 3); 
(c)  a comparable trade mark (IR) (as that term is defin ed for the purposes of Schedule 2B to 
the 1994 Act as inserted by Schedule 4). 
Amendments to the Registered Designs Rules 
8.  Schedule 6, which contains amendments to the Regis tered Designs Rules, has effect. 
Amendments to the Trade Marks Rules 
9.  Schedule 7, which contains amendments to the Trade  Marks Rules, has effect. 
Other amendments to legislation 
10. —(1) Schedule 8, which contains other amendments to  legislation, has effect. 
(2)  Any application or proceeding under the 1994 Act wh ich was made or commenced before 
the coming into force of these Regulations shall be  dealt with under the 1994 Act as it had effect 
before paragraph (1) comes into force. 
Revocation 
11.  The Community Designs (Designation of Community De sign Courts) Regulations 2005( a) 
are revoked. 
 
 
 
 
 Chris Skidmore  
 Minister of State for Universities, Science, Resea rch and Innovation 
18th March 2019 Department for Business, Energy and  Industrial Strategy 
 
We consent to the making of these regulations 
 
 Rebecca Harris  
 Jeremy Quin  
15th March 2019 Two of the Lords Commissioners of H er Majesty’s Treasury 
 
                                                                                                                                            
(a) S.I. 2005/696.  4 SCHEDULE 1 Regulation 3 
Amendments to the Design Regulation and 2005 Regula tions relating to 
the creation and application of the supplementary u nregistered design 
right etc. 
PART 1 
Design Regulation and supplementary unregistered de signs 
Introductory 
1. —(1) The Design Regulation is amended as set out in  this Part. 
(2)  A reference in this Part to an Article is to an Art icle of the Design Regulation. 
Substitution of Article 1 – supplementary unregiste red designs 
2.  For Article 1, substitute— 
“Article 1 
Supplementary unregistered design 
1. A design which complies with the conditions cont ained in this Regulation is referred 
to as a “supplementary unregistered design”. 
2. A design shall be protected as a supplementary u nregistered design, if made 
available to the public in the manner provided for in this Regulation. 
3. But a design that is made available to the publi c before exit day is not protected 
under this Regulation.”. 
Omission of Article 2 (European Union Intellectual Property Office) 
3.  Omit Article 2. 
Amendments to Article 3 (definitions) 
4.  In Article 3, after point (c), insert— 
“(d) ‘qualifying country’ and ‘qualifying territory ’ mean a country or territory 
designated by regulations made under Article 7.”. 
Amendments to Article 4 (requirements for protectio n) 
5.  In Article 4(1), for “Community”, substitute “supp lementary unregistered”. 
Amendments to Article 5 (novelty) 
6.  In Article 5(1)— 
(a)  in point (a)— 
(i)  for “an”, substitute “a supplementary”; 
(ii)  omit “Community”; 
(b)  omit point (b).  5Amendments to Article 6 (individual character) 
7.  In Article 6(1)— 
(a)  in point (a)— 
(i)  for “an”, substitute “a supplementary”; 
(ii)  omit “Community”; 
(b)  omit point (b). 
Substitution of Article 7 (disclosure) 
8.  For Article 7, substitute— 
“Article 7 
Disclosure 
1. Subject to paragraph 4, for the purposes of appl ying Articles 5 and 6, a 
supplementary unregistered design shall be deemed t o have been made available to the 
public where paragraph 2 or 3 applies. 
2. This paragraph applies where before exit day, th e design was published or exhibited, 
used in trade or otherwise disclosed except where t hose events could not have become 
known in the normal course of business to the circl es specialised in the sector operating 
within the European Union. 
3. This paragraph applies where on or after exit da y but before the date mentioned in 
Articles 5(1)(a) or 6(1)(a), the design was publish ed or exhibited, used in trade or otherwise 
disclosed except where those events could not have become known in the normal course of 
business to the circles specialised in the sector o perating within the United Kingdom, a 
qualifying country or a qualifying territory. 
4. A design shall not, however, be deemed to have b een made available to the public 
for the sole reason that it has been disclosed to a  third person under explicit or implicit 
conditions of confidentiality. 
5. For the purposes of this Regulation, a “qualifyi ng country” is a country designated as 
such, and a “qualifying territory” is a territory d esignated as such, in Regulations made by 
the Secretary of State. 
6. Regulations under paragraph 5 are to be made by statutory instrument and are subject 
to annulment in pursuance of a resolution of either  House.” 
Amendments to Articles 8 to 10 (technical function,  interconnections, public policy and 
morality) 
9.  In Articles 8, 9 and 10(1), for “Community”, in ea ch place it appears, substitute 
“supplementary unregistered”. 
Amendments to Article 11 (commencement and term of protection of the unregistered 
Community design) 
10.  In Article 11— 
(a)  in the heading— 
(i)  before “unregistered”, insert “supplementary”; 
(ii)  omit “Community”; 
(b)  in point 1— 
(i)  for “an”, substitute “a supplementary”; 
(ii)  omit “Community”, the in the first place it appears ;  6(iii)  for “Community”, in the second place it appears, su bstitute “United Kingdom, a 
qualifying country or a qualifying territory”; 
(c)  in paragraph 2, for “Community”, in both places it appears, substitute “United Kingdom, 
a qualifying country or a qualifying territory”. 
Omission of Articles 12 and 13 (registered Communit y design: commencement, term of 
protection and renewal) 
11.  Omit Articles 12 and 13. 
Amendment to the heading of section 3 of Title 2 (r ight to the Community design) 
12.  In the heading of section 3 of Title 2, for “Commu nity”, substitute “supplementary 
unregistered”. 
Amendments to Article 14 (right to the Community de sign) 
13.  In Article 14— 
(a)  for “Community”, in each place it appears, includin g in the heading, substitute 
“supplementary unregistered”; 
(b)  in point 3, omit “or specified under national law”.  
Amendments to Article 15 (claims relating to the en titlement to a Community design) 
14.  In Article 15— 
(a)  in the heading, for “Community”, substitute “supple mentary unregistered”; 
(b)  in point 1— 
(i)  for “an”, substitute “a supplementary”; 
(ii)  omit “Community”, in the first place it appears; 
(iii)  omit from “, or a registered” to “name of,”; 
(iv)  for “the Community”, substitute “that”; 
(c)  in point 2, for “Community”, substitute “supplement ary unregistered”; 
(d)  in point 3— 
(i)  omit “the date of publication of a registered Commu nity design or”; 
(ii)  for “an”, substitute “a supplementary”; 
(iii)  omit “Community”, in the second place it appears; 
(iv)  for “the unregistered Community”, substitute “that” ; 
(v)  omit “applied for or”; 
(e)  omit point 4. 
Omission of Articles 16 to 18 (effects of a judgmen t on entitlement, presumption, right to be 
cited) 
15.  Omit Articles 16 to 18. 
Amendment to the heading of section 4 of Title 2 (e ffects of the Community design) 
16.  In the heading of section 4 of Title 2, for “Commu nity”, substitute “supplementary 
unregistered”.  7Amendments to Article 19 (rights conferred by the C ommunity design) 
17.  In Article 19— 
(a)  in the heading, for “Community”, substitute “supple mentary unregistered”; 
(b)  in paragraph 1, for “registered Community”, substit ute “supplementary unregistered”; 
(c)  in point 2— 
(i)  for “An”, substitute “A supplementary”; 
(ii)  omit “Community”; 
(d)  omit point 3. 
Amendments to Article 20 (limitation of the rights conferred by a Community design)  
18.  In Article 20— 
(a)  in the heading and in point 1, for “Community”, sub stitute “supplementary unregistered”; 
(b)  in point 2— 
(i)  in the words before point (a), for “Community”, sub stitute “supplementary 
unregistered”; 
(ii)  in points (a) and (b), for “Community”, substitute “United Kingdom”. 
Amendments to Article 21 (exhaustion of rights) 
19.  In Article 21— 
(a)  for “Community”, in the first, second and fourth pl ace it appears, substitute 
“supplementary unregistered”; 
(b)  before “Community”, in the third place it appears, insert “United Kingdom or the 
European Economic Area”. 
Omission of Articles 22 and 23 (prior use and gover nment use) 
20.  Omit Articles 22 and 23. 
Amendments to Article 24 (declaration of invalidity ) 
21.  In Article 24— 
(a)  omit point 1; 
(b)  in point 2— 
(i)  for “Community”, in the first place it appears, sub stitute “supplementary 
unregistered”; 
(ii)  for “the Community design”, substitute “it”; 
(iii)  omit “or has been surrendered”; 
(c)  in point 3— 
(i)  for “Community”, in the first place it appears, sub stitute “supplementary 
unregistered”; 
(ii)  omit “Community”, in the second place it appears. 
Amendments to Article 25 (grounds for invalidity) 
22.  In Article 25— 
(a)  in point 1—  8(i)  in the words before subparagraph (a), for “Communit y”, substitute “supplementary 
unregistered”; 
(ii)  in point (c), omit “Community”; 
(iii)  omit point (d); 
(iv)  in point (e)— 
(aa)  omit “Community law or”; 
(bb)  omit “of the Member State”; 
(v)  in point (f)— 
(aa)  omit “the”, in the second place it appears; 
(bb)  omit “of a Member State”; 
(vi)  in point (g), for “a Member State”, substitute “the  United Kingdom, a qualifying 
country or a qualifying territory”; 
(b)  in point 2, for “Community”, substitute “supplement ary unregistered”; 
(c)  in point 3— 
(i)  omit “(d),”; 
(ii)  omit “the applicant for or”; 
(d)  omit points 5 and 6. 
Amendments to Article 26 (consequences of invalidit y) 
23.  In Article 26— 
(a)  in point 1, for “Community”, substitute “supplement ary unregistered”; 
(b)  in point 2— 
(i)  omit “the national provisions relating either to”; 
(ii)  for “Community”, in both places it appears, substit ute “supplementary unregistered”. 
Amendment to the heading of Title 3: supplementary unregistered designs as objects of 
property 
24.  In the heading of Title 3, for “Community”, substi tute “Supplementary Unregistered”. 
Amendments to Article 27: supplementary unregistere d design rights as national design 
rights 
25.  In Article 27— 
(a)  for the heading, substitute “Property right”; 
(b)  for points 1 to 4, substitute “A supplementary unre gistered design is personal property (in 
Scotland, incorporeal moveable property) which subs ists in accordance with this 
Regulation.”. 
Omission to Articles 28 to 31 (transfer, rights in rem, levy and insolvency) 
26.  Omit Articles 28 to 31. 
Article 32 (licensing) 
27.  In Article 32— 
(a)  in point 1— 
(i)  for “Community”, in the first place it appears, sub stitute “supplementary 
unregistered”;  9(ii)  omit “for the whole or part of the Community”; 
(b)  in points 2 to 4, for “Community”, in each placee i t appears, substitute “supplementary 
unregistered”; 
(c)  omit point 5. 
Omission of Articles 33 to 78 (general provisions) 
28.  Omit Articles 33 to 78. 
Amendment to the heading of Title 9 (jurisdiction a nd procedure in legal actions relating to 
Community designs) 
29.  In the heading of Title 9, for “Community”, substi tute “Supplementary Unregistered”. 
Omission of Article 79 (application of the Conventi on on jurisdiction and enforcement) 
30.  Omit Article 79. 
Amendment to the heading of section 2 (disputes con cerning infringement and validity of 
designs) of Title 9 
31.  In the heading of section 2 of Title 9, for “Commu nity”, substitute “supplementary 
unregistered”. 
Omission of Article 80 (Community design courts) 
32.  Omit Article 80. 
Substitution of Article 81 (The “design court” – ju risdiction over infringement and validity) 
33.  For Article 81, substitute— 
“Article 81 
The “design court” – Jurisdiction over infringement  and validity 
1. In this Regulation, “design court” means— 
(a) in England and Wales, the High Court; 
(b) in Scotland, the sheriff court and the Court of  Session; and 
(c) in Northern Ireland, the county court and the H igh Court. 
2. The design court has exclusive jurisdiction— 
(a) for infringement actions and actions in respect  of threatened infringement of 
supplementary unregistered designs; 
(b) for actions for declaration of non-infringement  of supplementary unregistered designs; 
(c) for actions for a declaration of invalidity of a supplementary unregistered design; 
(d) for counterclaims for a declaration of invalidi ty of a continuing a supplementary 
unregistered design raised in connection with actio ns under (a).” 
Omission of Articles 82 and 83: jurisdiction 
34.  Omit Articles 82 and 83.  10 Amendments to Article 84 (action or counterclaim fo r a declaration of invalidity of a 
supplementary unregistered design) 
35.  In Article 84— 
(a)  in the heading and in paragraph 1, for “Community”,  substitute “supplementary 
unregistered”; 
(b)  in point 2— 
(i)  before “(4)”, insert “and”; 
(ii)  omit “and (5)”; 
(c)  in point 3— 
(i)  for “Community”, substitute “supplementary unregist ered”; 
(ii)  for “conditions” to “situated”, substitute “laws ap plying to the design courts”; 
(d)  in point 4, for “Community”, substitute “supplement ary unregistered”. 
Amendments to Article 85 (presumption of validity –  defence as to the merits) 
36.  In Article 85— 
(a)  omit point 1; 
(b)  in point 2— 
(i)  for “an”, in the third place it appears, substitute  “a supplementary”; 
(ii)  omit “Community”, in the first and second places it  appears; 
(iii)  for “Community”, in the third and fourth places it appears, substitute “supplementary 
unregistered”. 
Amendments to Article 86 (judgments of invalidity) 
37.  In Article 86— 
(a)  in point 1— 
(i)  in the words before point (a)— 
(aa)  omit “Community”, in the first place it appears; 
(bb)  for “Community”, in the second place it appears, su bstitute “supplementary 
unregistered”; 
(ii)  in points (a) and (b), for “the Community”, in each  place it appears, substitute “that”; 
(b)  omit points 2 to 5. 
Omission of Articles 87 and 88 (effect of judgment on invalidity and applicable law) 
38.  Omit Articles 87 and 88. 
Amendments to Article 89 (sanctions in actions for infringement) 
39.  In Article 89— 
(a)  in point 1— 
(i)  in the words before point (a)— 
(aa)  omit “Community”, in the first place it appears; 
(bb)  for “Community”, in the second place it appears, su bstitute “supplementary 
unregistered”; 
(ii)  in point (a), for “the Community”, substitute “that ”; 
(iii)  in point (d), omit from “the law” to “international ”;  11 (b)  omit point 2. 
Amendments to Article 90 (provisional measures, inc luding protective measures) 
40.  In Article 90— 
(a)  in point 1— 
(i)  omit “of a Member State”; 
(ii)  omit “Community”, in the first place it appears; 
(iii)  for “Community”, in the second place it appears, su bstitute “supplementary 
unregistered”; 
(iv)  omit from “under” to the end of the sentence; 
(b)  in point 2, for “Community”, substitute “supplement ary unregistered”; 
(c)  in point 3— 
(i)  omit “Community”; 
(ii)  omit from “whose” to “(4)”; 
(iii)  omit from “, which” to “jurisdiction”. 
Omission of Articles 91 and 92 (specific rules on r elated actions and appeals) 
41.  Omit Articles 91 and 92. 
Amendment to the heading of section 3 (other disput es concerning Community designs) of 
Title 9 
42.  In the heading of section 3 of Title 9, for “Commu nity”, substitute “supplementary 
unregistered”. 
Omission of Articles 93 (supplementary provisions o n the jurisdiction of national courts) 
43.  Omit Article 93. 
Amendments to Article 94 (obligation of the nationa l court) 
44.  In Article 94— 
(a)  for “national”, substitute “design”, in the heading  and the other place it appears; 
(b)  for “Community”, substitute “supplementary unregist ered”. 
Omission of Title 10 (effects on the laws of the Me mber States) 
45.  Omit Title 10. 
Omission of Title 11 (supplementary provisions rega rding the Office) 
46.  Omit Title 11. 
Omission of Title 11A (international registration) 
47.  Omit Title 11A. 
Omission of Articles 107 to 109 (implementing regul ation, procedure of Boards of Appeal 
and Committee) 
48.  Omit Articles 107 to 109.  12 Omission of Article 110 (transitional provision) 
49.  In Article 110— 
(a)  in point 1— 
(i)  omit from “Until” to “subject,”; 
(ii)  for “Community”, substitute “supplementary unregist ered”; 
(b)  omit point 2. 
Omission of Article 110a (provisions relating to th e enlargement of the Community) 
50.  Omit Article 110a. 
Omission of Article 111 (entry into force) 
51.  Omit paragraphs 2 and 3. 
Omission of text after Title 12 
52.  After Title 12, omit “This Regulation shall be bin ding it its entirety and directly applicable in 
all Member States.”. 
 
PART 2 
2005 Regulations and the supplementary unregistered  design right 
53.  The 2005 Regulations are amended as follows. 
Regulation 1: interpretation 
54.  In regulation 1— 
(a)  for the definitions in paragraph (2), substitute— 
““design court” has the meaning given by Article 81  of the Design Regulation; 
“Design Regulation” means Council Regulation (EC) N o 6/2002 of 12th December 
2001 on Community Designs as amended by regulation 4(1) of, and Part 1 of Schedule 
1 to, the Designs and International Trade Marks (Am endment etc.) (EU Exit) 
Regulations 2018; and 
“supplementary unregistered design” has the meaning  given by Article 1 of the Design 
Regulation.”; 
(b)  omit paragraph (3). 
Regulation 1A: infringement proceedings 
55.  In regulation 1A— 
(a)  in paragraph (1) omit “Community”, in both places i t appears; 
(b)  in paragraph (2)— 
(i)  for “paragraphs (3) to”, substitute “paragraph”; 
(ii)  for “Community”, in both places where it appears, s ubstitute “supplementary 
unregistered”; 
(c)  omit paragraphs (3) and (4); 
(d)  in paragraph (5)—  13 (i)  for “an”, in both places where it appears before “u nregistered”, substitute “a 
supplementary”; 
(ii)  omit “Community”, in both places where it appears. 
Regulation 1B: order for delivery up 
56.  In regulation 1B— 
(a)  in paragraph (1)(b)— 
(i)  for “Community”, in the first and second places whe re it appears, substitute 
“supplementary unregistered”; 
(ii)  omit “Community”, in the third place where it appea rs; 
(iii)  before “court”, in the second place where it appear s, insert “design”; 
(b)  in paragraph (2), before “court”, in both places wh ere it appears, insert “design”; 
(c)  in paragraph (4), for “Community”, substitute “supp lementary unregistered”; 
(d)  in paragraph (8), before “court”, insert “design”. 
Regulation 1C: order for disposal 
57.  In regulation 1C— 
(a)  in paragraph (1)— 
(i)  in the words before sub-paragraph (a), omit “Commun ity”; 
(ii)  in sub-paragraph (a), for “Community”, substitute “ supplementary unregistered”; 
(iii)  in sub-paragraph (b), before “court”, insert “desig n”; 
(b)  in paragraph (2)— 
(i)  before “court”, insert “design”; 
(ii)  for “Community”, substitute “supplementary unregist ered”; 
(c)  in paragraphs (3) and (4), before “court”, insert “ design”. 
Regulation 1D: meaning of “infringing article” 
58.  In regulation 1D— 
(a)  in paragraphs (2), (3)(b) and (4), for “Community”,  in each place where it appears, 
substitute “supplementary unregistered”; 
(b)  in paragraph (5), for the words from “an enforceabl e” to the end substitute “anything 
which forms part of retained EU law as a result of section 3 or 4 of the European Union 
(Withdrawal) Act 2018( a)”. 
Regulation 2: unjustified threats: threats of infri ngement proceedings 
59.  In regulation 2(1), for “Community”, in both place s where it appears, substitute 
“supplementary unregistered”. 
Regulation 2B: unjustified threats: permitted commu nications 
60.  In regulation 2B— 
(a)  in paragraph (2), for “Community”, in each place wh ere it appears, substitute 
“supplementary unregistered”; 
(b)  in paragraph (3), before “court”, insert “design”; 
                                                                                                                                            
(a) 2018 c.16.  14 (c)  in paragraph (5)— 
(i)  omit sub-paragraphs (a)(i) and (ii); 
(ii)  in sub-paragraph (a)(iii)— 
(aa)  for “an”, substitute “a supplementary”; 
(bb)  omit “Community”; 
(iii)  in sub-paragraph (b), for “Community”, in both plac es where it appears, substitute 
“supplementary unregistered”. 
Regulation 2C, 2E and 2F: unjustified threats: gene ral 
61. —(1) In regulation 2C(2), for “Community”, substitu te “supplementary unregistered”. 
(2)  Omit regulation 2E. 
(3)  In regulation 2F, for “Community”, substitute “supp lementary unregistered”. 
Regulation 3: false representation 
62.  Omit regulation 3. 
Regulation 4: privileged communications 
63.  In regulation 4— 
(a)  in paragraph (1), for “any”, in the second place wh ere it appears, substitute “a 
supplementary unregistered”; 
(b)  for paragraph (3), substitute— 
“(3) In paragraph (2) “professional designs represe ntative” means a person whose name 
appears on the special list of professional represe ntatives for design matters maintained by 
the European Union Intellectual Property Office ref erred to in Article 78(4) of Council 
Regulation (EC) 6/2002 of 12th December 2001 on Com munity designs as it had effect 
immediately before exit day.”. 
Regulation 5 and the Schedule: services of the Crow n 
64. —(1) In regulation 5— 
(a)  in the heading, for “Community”, substitute “supple mentary unregistered”; 
(b)  omit “registered Community designs and”; 
(c)  before “unregistered”, insert “supplementary”; 
(d)  omit “Community”, in the second place where it appe ars. 
(2)  In the Schedule— 
(a)  for “Community”, in each place where it appears, su bstitute “supplementary 
unregistered”; 
(b)  before “court”, in each place where it appears, ins ert “design”; 
(c)  omit paragraph 5(6).  15  SCHEDULE 2 Regulation 4 
Continuing unregistered Community designs 
PART 1 
Design Regulation and continuing unregistered Commu nity designs 
1. —(1) The Design Regulation applies to a continuing unregistered community design subject to 
the modifications in this Part. 
(2)  A reference in this Part to an Article is to an Art icle of the Design Regulation. 
Article 1: continuing unregistered Community design  
2.  The Design Regulation has effect in relation to a continuing unregistered community design 
subject to the modifications in this Schedule. 
3.  In Article 1— 
(a)  in the heading, before “Community”, insert “Continu ing unregistered”; 
(b)  in point 1, before “Community” and within the inver ted commas, insert “continuing 
unregistered”; 
(c)  in point 2(a)— 
(i)  for “an”, substitute “a”; 
(ii)  before “unregistered” and within the inverted comma s, insert “continuing”; 
(d)  omit points 2(b) and 3. 
Article 2: Office 
4.  Omit Article 2. 
Article 3: definitions 
5.  In Article 3, after the definition of “design”, in sert “(ab) “European Union” means the 
countries that were part of the European Union imme diately before exit day;”. 
Article 4: requirements for protection 
6.  In Article 4(1), before “Community”, insert “conti nuing unregistered”. 
Article 5: novelty 
7.  In Article 5(1)— 
(a)  before “design” in the first place where it appears , insert “continuing unregistered 
Community” 
(b)  in point (a)— 
(i)  omit “in the case of an unregistered Community desi gn,”; 
(ii)  for “an”, substitute “a continuing”; 
(c)  omit point (b). 
Article 6: individual character 
8.  In Article 6(1)—  16 (a)  before “design” in the first place where it appears  insert “continuing unregistered 
Community” 
(b)  in point (a)— 
(i)  omit “in the case of an unregistered Community desi gn,”; 
(ii)  for “an”, substitute “a continuing”; 
(c)  omit point (b). 
Article 7: disclosure 
9.  In Article 7— 
(a)  in point 1— 
(i)  after “a”, in the first place where it appears, ins ert “continuing unregistered 
Community”; 
(ii)  omit “following registration or otherwise,”; 
(iii)  omit “or in Articles 5(1)(b) and 6(1)(b), as the ca se may be,”; 
(iv)  for “Community”, where it appears after “operating within the”, substitute 
“European Union”; 
(b)  omit points 2 and 3. 
Articles 8 to 10: technical function, interconnecti ons, public policy, morality and protection 
10.  In Articles 8, 9 and 10(1), before “Community”, in  each place where it appears, substitute 
“continuing unregistered”. 
Article 11: commencement and term of protection 
11.  In Article 11— 
(a)  in point 1— 
(i)  for “an”, substitute “a continuing”; 
(ii)  for “Community”, in the second place where it appea rs, substitute “European 
Union”; 
(b)  in point 2, for “Community”, in both places in whic h it appears, substitute “European 
Union”. 
Articles 12 and 13: registered Community design: co mmencement, term of protection and 
renewal 
12.  Omit Articles 12 and 13. 
Article 14: right to the Community design 
13.  In Article 14— 
(a)  before “Community”, in each place where it appears including in the heading, insert 
“continuing unregistered”; 
(b)  in point 3, omit “or specified under national law”.  
Article 15: claims relating to the entitlement to a  Community design 
14.  In Article 15— 
(a)  in the heading, for before “Community”, insert “con tinuing unregistered”; 
(b)  in point 1—  17 (i)  for “an”, substitute “a continuing”; 
(ii)  omit “, or a registered Community design has been a pplied for or registered in the 
name of,”; 
(iii)  for “the Community”, substitute “that”; 
(c)  in point 2, before “Community”, insert “continuing unregistered”; 
(d)  in point 3— 
(i)  omit “the date of publication of a registered Commu nity design or”; 
(ii)  for “an”, substitute “a continuing”; 
(iii)  for “the unregistered Community”, substitute “that” ; 
(iv)  omit “applied for or”; 
(e)  omit point 4. 
Articles 16 to 18: effects of a judgment on entitle ment, presumptions, right to be cited 
15.  Omit Articles 16 to 18. 
Article 19: rights conferred by the Community desig n 
16.  In Article 19— 
(a)  in the heading, before “Community”, insert “continu ing unregistered”; 
(b)  in point 1, for “registered”, substitute “continuin g unregistered”; 
(c)  in point 2, for “An”, where it first appears, subst itute “A continuing”; 
(d)  omit point 3. 
Article 20: limitation of the rights conferred by a  Community design 
17.  In Article 20— 
(a)  in the heading and in point 1, before “Community”, insert “continuing unregistered”; 
(b)  in point 2— 
(i)  in the words before point (a), before “Community”, insert “continuing unregistered”; 
(ii)  in points (a) and (b), for “Community”, substitute “United Kingdom”. 
Article 21: exhaustion of rights 
18.  In Article 21— 
(a)  before “Community”, in the first, second and fourth  places where it appears, insert 
“continuing unregistered”; 
(b)  before “Community”, in the third place where it app ears, insert “United Kingdom or the”. 
Articles 22 and 23: prior use and government use 
19.  Omit Articles 22 and 23. 
Article 24: declaration of invalidity 
20.  In Article 24— 
(a)  omit point 1; 
(b)  in point 2— 
(i)  before “Community”, in both places where it appears , insert “continuing 
unregistered”;  18 (ii)  omit “or has been surrendered”; 
(c)  in point 3— 
(i)  before “Community”, in the first place where it app ears, insert “continuing 
unregistered”; 
(ii)  omit “Community”, in the second place where it appe ars. 
Article 25: grounds for invalidity 
21.  In Article 25— 
(a)  in point 1— 
(i)  in the words before subparagraph (a), before “Commu nity”, insert “continuing 
unregistered”; 
(ii)  in point (c), omit “Community”; 
(iii)  omit point (d); 
(iv)  in point (e)— 
(aa)  omit “Community law or”; 
(bb)  omit “of the Member State”; 
(v)  in point (f)— 
(aa)  omit “the”, in the second place where it appears; 
(bb)  omit “of a Member State”; 
(vi)  in point (g), for “a Member State”, substitute “the  European Union”; 
(b)  in point 2, before “Community”, insert “continuing unregistered”; 
(c)  in point 3— 
(i)  omit “(d),”; 
(ii)  omit “applicant for or”; 
(d)  omit points 5 and 6. 
Article 26: consequences of invalidity 
22.  In Article 26— 
(a)  in point 1, before “Community”, insert “continuing unregistered”; 
(b)  in point 2, in the words before subparagraph (a)— 
(i)  omit “the national provisions relating either to”; 
(ii)  before “Community”, in both places where it appears , insert “continuing 
unregistered”. 
Article 27: Community design rights as national des ign rights 
23.  In Article 27— 
(a)  for the heading, substitute “Property right”; 
(b)  for points 1 to 4, substitute “A continuing unregis tered Community design right is 
personal property (in Scotland, incorporeal moveabl e property) which subsists in 
accordance with this Regulation.”. 
Articles 28 to 31: transfer, rights in rem, levy an d insolvency 
24.  Omit Articles 28 to 31.  19 Article 32: licensing 
25.  In Article 32— 
(a)  in point 1— 
(i)  before “Community” in the first place where it appe ars, insert “continuing 
unregistered”; 
(ii)  omit “for the whole or part of the Community”; 
(b)  in points 2 to 4, before “Community”, in every plac e where it appears, insert “continuing 
unregistered”; 
(c)  omit points 5. 
Articles 33 to 78: general provisions 
26.  Omit Articles 33 to 78. 
Article 79: Application of the Convention on jurisd iction and enforcement 
27.  Omit Article 79. 
Article 80: Community design courts 
28.  Omit Article 80. 
Article 81: The “design court” – jurisdiction over infringement and validity 
29.  For Article 81, substitute— 
“Article 81 
The “design court” – Jurisdiction over infringement  and validity 
1. In this Regulation, “design court” means— 
(a) in England and Wales, the High Court; 
(b) in Scotland, the sheriff court and the Court of  Session; and 
(c) in Northern Ireland, the county court and the H igh Court. 
2. The design court has exclusive jurisdiction— 
(a) for infringement actions and actions in respect  of threatened infringement of 
supplementary unregistered designs; 
(b) for actions for declaration of non-infringement  of supplementary unregistered designs; 
(c) for actions for a declaration of invalidity of a supplementary unregistered design; 
(d) for counterclaims for a declaration of invalidi ty of a continuing a supplementary 
unregistered design raised in connection with actio ns under (a).” 
Articles 82 and 83 
30.  For Articles 82 to 83 substitute— 
“Article 82 
Pending proceedings concerning a continuing unregis tered Community design 
1. This paragraph applies where on exit day a conti nuing unregistered Community 
design is the subject of proceedings which are pend ing (“pending proceedings”) before a 
court in the United Kingdom designated for the purp oses of Article 80 of the Design 
Regulation as it had effect immediately before exit  day.  20 2. Subject to sub-paragraphs (3) and (4), the provi sions contained or referred to in Title 
IX of the Design Regulation (with the exception of Articles 86(2), (3), (4) and (5) and 91) 
shall continue to apply to the pending proceedings as if the United Kingdom were still a 
Member State with effect from exit day 
3. Where the pending proceedings involve a claim fo r infringement or for threatened 
infringement of a continuing unregistered Community  design, without prejudice to any 
other relief by way of damages, accounts or otherwi se available to the proprietor of the 
design, the design court may grant an injunction to  prohibit unauthorised use of the 
continuing unregistered Community design. 
4. For the purposes of this paragraph proceedings a re treated as pending on exit day if 
they were instituted but not finally determined bef ore exit day. 
Article 83 
Effect of injunction protecting an unregistered Com munity design 
1. This paragraph applies where immediately before exit day an injunction is in force 
prohibiting the performance of acts in the United K ingdom which infringe or would 
infringe a continuing unregistered Community design  (a “relevant injunction”). 
2. Subject to any order of the court to the contrar y, a relevant injunction will continue 
to have effect and be enforceable to prohibit the p erformance of acts which infringe or 
would infringe the right in a continuing unregister ed Community design to the same extent 
as before exit day.”. 
Article 84: action or counterclaim for a declaratio n of invalidity of a Community design 
31.  In Article 84— 
(a)  in the heading and in point 1, before “Community”, insert “continuing unregistered”; 
(b)  in point 2— 
(i)  before “(4)”, insert “and”; 
(ii)  omit “and (5)”; 
(c)  in point 3— 
(i)  before “Community”, insert “continuing unregistered ”; 
(ii)  for “conditions” to “situated”, substitute “laws ap plying to the design courts”; 
(d)  in point 4, before “Community”, insert “continuing unregistered”. 
Article 85: presumption of validity – defence as to  the merits 
32.  In Article 85— 
(a)  omit point 1; 
(b)  in point 2— 
(i)  for “an”, in the second place where it appears, sub stitute “a continuing unregistered”; 
(ii)  omit “Community”, in the second place where it appe ars; 
(iii)  before “Community”, in the third and fourth places where it appears, insert 
“continuing unregistered”. 
Article 86: judgments of invalidity 
33.  In Article 86— 
(a)  in point 1— 
(i)  in the words before point (a)— 
(aa)  omit “Community”, in the first place it appears;  21 (bb)  before “Community”, in the second place it appears,  insert “continuing 
unregistered”; 
(b)  in points (a) and (b), for “Community”, in each pla ce where it appears, substitute “that”; 
(c)  omit points 2 to 5. 
Articles 87 and 88: sanctions in actions for infrin gement 
34.  Omit Articles 87 and 88. 
Article 89: sanctions in actions for infringement 
35.  In Article 89— 
(a)  in point 1— 
(i)  in the words before subparagraph (a)— 
(aa)  omit “Community”, in the first place it appears; 
(bb)  before “Community”, in the second place it appears,  insert “continuing 
unregistered”; 
(ii)  in point (a), for “the Community”, substitute “that ”; 
(iii)  in point (d), omit from “the law” to “international ”; 
(b)  omit point 2. 
Article 90: provisional measures, including protect ive measures 
36.  In Article 90— 
(a)  in point 1— 
(i)  omit “of a Member State”; 
(ii)  omit “Community”, in the first place it appears; 
(iii)  before “Community”, in the second place it appears,  insert “continuing 
unregistered”; 
(iv)  omit from “under the law” to the end of the sentenc e; 
(b)  in point 2, before “Community”, insert “continuing unregistered”; 
(c)  in point 3— 
(i)  omit “Community”; 
(ii)  omit from “whose” to “(4)”; 
(iii)  omit from “, which” to “jurisdiction”. 
Articles 91 and 92: specific rules on related actio ns and further appeals 
37.  Omit Articles 91 and 92. 
Article 93: supplementary provisions on the jurisdi ction of national courts 
38.  Omit Article 93. 
Article 94: obligation of the national court 
39.  In Article 94— 
(a)  for “national”, in the heading and the other time i t appears, substitute “design”; 
(b)  after “a”, the second times it appears, substitute “continuing unregistered Community”.  22 Title 10 
40.  Omit Title 10. 
Title 11: supplementary provisions concerning the O ffice 
41.  Omit Title 11. 
Title 11A: international registration 
42.  Omit Title 11A. 
Articles 107 to 109: implementing regulation, proce dure of Boards of Appeal and Committee 
43.  Omit Articles 107 to 109. 
Article 110: transitional provision 
44.  In Article 110— 
(a)  in point 1— 
(i)  omit from “Until” to “subject,”; 
(ii)  before “Community”, insert “continuing unregistered ”; 
(b)  omit point 2. 
Article 110a: provisions relating to the enlargemen t of the Community 
45.  In Article 110a— 
(a)  in point 1— 
(i)  for ““new Member States(s)”” substitute ““specified  countries””; 
(ii)  before “Community”, the first time it appears, inse rt “continuing unregistered”; 
(iii)  omit “or applied for”; 
(iv)  for “Member States”, the second time it appears, su bstitute “specified countries”; 
(v)  omit from “in order” to the end of the sentence; 
(b)  omit point 2; 
(c)  in point 3— 
(i)  before “Community”, insert “continuing unregistered ”; 
(ii)  for “a new Member State”, substitute “one or more s pecified countries”; 
(d)  in point 4— 
(i)  omit “the applicant or”; 
(ii)  for “a new Member State”, substitute “one or more s pecified countries”; 
(iii)  before “Community”, insert “continuing unregistered ”; 
(iv)  after “Article 25(1) omit “(d)”. 
(e)  in point 5— 
(i)  omit the first sentence; 
(ii)  for “Community”, the second time it appears, substi tute “European Union”; 
(iii)  for “an”, substitute “a continuing”. 
Article 111: entry into force 
46.  Omit paragraphs 2 and 3.  23 Text after Title 12 
47.  After Title 12, omit “This Regulation shall be bin ding it its entirety and directly applicable in 
all Member States.”. 
PART 2 
2005 Regulations and continuing unregistered Commun ity designs 
48.  The 2005 Regulations apply to continuing unregiste red community designs subject to the 
following modification. 
Regulation 1: interpretation 
49.  In regulation 1— 
(a)  for the definitions in paragraph (2), substitute— 
““design court” has the meaning given by Article 81  of the Design Regulation; 
“Design Regulation” means Council Regulation (EC) N o 6/2002 of 12th December 
2001 on Community Designs as amended by regulation 5 of, and Part 1 of Schedule 2 
to, the Designs and International Trade Marks (Amen dment etc.) (EU Exit) Regulations 
2018; and 
“continuing unregistered Community design” has the meaning given by Article 1 of the 
Design Regulation.”; 
(b)  omit paragraph (3). 
Regulation 1A: infringement proceedings 
50.  In regulation 1A— 
(a)  in paragraph (1) omit “Community”, in both places w here it appears; 
(b)  in paragraph (2)— 
(i)  for “paragraphs (3) to”, substitute “paragraph”; 
(ii)  before “Community”, in both places where it appears , insert “continuing 
unregistered”; 
(c)  omit paragraphs (3) and (4); and 
(d)  in paragraph (5), for “an”, in both places where it  appears, substitute “a continuing”. 
Regulation 1B: order for delivery up 
51.  In regulation 1B— 
(a)  in paragraph (1)(b)— 
(i)  before “Community”, in the first and second places where it appears, insert 
“continuing unregistered”; 
(ii)  omit “Community”, in the third place where it appea rs; 
(iii)  before “court”, in the second place where it appear s, insert “design”; 
(b)  in paragraph (2), before “court”, in both places wh ere it appears, insert “design”; 
(c)  in paragraph (4), before “Community”, insert “conti nuing unregistered”; 
(d)  in paragraph (8), before “court”, insert “design”. 
Regulation 1C: order for disposal 
52.  In regulation 1C—  24 (a)  in paragraph (1)— 
(i)  in the words before paragraph (a), omit “Community” ; 
(ii)  in paragraph (a), before “Community”, insert “conti nuing unregistered”; 
(iii)  in sub-paragraph (b), before “court”, insert “desig n”; 
(b)  in paragraph (2)— 
(i)  before “court, insert “design”; 
(ii)  before “Community”, insert “continuing unregistered ”; 
(c)  in paragraphs (3) and (4), before “court”, in each place where it appears, insert “design”. 
Regulation 1D: meaning of “infringing article” 
53.  In regulation 1D— 
(a)  in paragraph (2), before “Community”, insert “conti nuing unregistered”; 
(b)  in paragraph (3)(b)— 
(i)  before “Community”, in the first place where it app ears, insert “continuing 
unregistered”; 
(ii)  omit “Community”, in the second place where it appe ars; 
(c)  in paragraph (4), before “Community, in both places  where it appears, insert “continuing 
unregistered”; 
(d)  in paragraph (5), for “an enforceable” to the end o f the sentence, insert “anything which 
forms part of retained EU law as a result of sectio n 3 or 4 of the European Union 
(Withdrawal) Act 2018( a).”. 
Regulation 2: unjustified threats: threats of infri ngement proceedings 
54.  In regulation 2(1), before “Community”, in both pl aces where it appears, insert “continuing 
unregistered”. 
Regulation 2B: unjustified threats: permitted commu nications 
55.  In regulation 2B— 
(a)  in paragraph (2), before “Community”, in each place  where it appears, insert “continuing 
unregistered”; 
(b)  in paragraph (3), before “court”, insert “design”; 
(c)  in paragraph (5)— 
(i)  omit sub-paragraphs (a)(i) and (ii); 
(ii)  in sub-paragraph (b), before “Community”, in both p laces where it appears, insert 
“continuing unregistered”. 
Regulation 2C, 2E and 2F: unjustified threats: gene ral 
56. —(1) In regulation 2C(2), before “Community”, inser t “continuing unregistered”. 
(2)  Omit regulation 2E. 
(3)  In regulation 2F, before “Community”, insert “conti nuing unregistered”. 
Regulation 3: false representation 
57.  Omit regulation 3. 
                                                                                                                                            
(a) 2018 c.16.  25 Regulation 4: privileged communications 
58.  In regulation 4— 
(a)  in paragraph (1), for “any”, in the second place wh ere it appears, substitute “a continuing 
unregistered Community”; 
(b)  for paragraph (3), substitute— 
“(3) In paragraph (2) “professional designs represe ntative” means a person whose name 
appears on— 
(a) the special list of professional representative s for design matters maintained by the 
European Union Intellectual Property Office referre d to in Article 78(4) of Council 
Regulation (EC) 6/2002 of 12th December 2001 on Com munity designs as it had 
effect immediately before exit day.”. 
Regulation 5 and the Schedule: services of the Crow n 
59. —(1) In regulation 5— 
(a)  in the heading, before “Community”, insert “continu ing unregistered”; 
(b)  for “registered Community designs and” substitute “ continuing”. 
(2)  In the Schedule— 
(a)  before “Community”, in each place where it appears,  insert “continuing unregistered”; 
(b)  before “court”, in each place where it appears, ins ert “design”; 
(c)  omit paragraph 5(6). 
 SCHEDULE 3 Regulations 5 
Amendments to the 1949 Act to make provision for ce rtain registered 
Community designs and International designs to be t reated as registered 
under the 1949 Act from exit day and about certain applications for 
registered Community designs made before exit day 
1.  The 1949 Act is amended as follows. 
2.  Before section 13, insert— 
“Application of the Act to certain registered Commu nity designs 
12A. Schedule 1A makes provision— 
(a) for registered Community designs (including cer tain designs whose registration 
has expired or which have been removed from the reg ister) to be treated as 
registered under this Act with effect from exit day , and 
(b) about certain applications for registered Commu nity designs made before exit day. 
Application of the Act to certain international des igns 
12B. Schedule 1B makes provision— 
(a) for certain designs which are registered in the  international register maintained by 
the International Bureau of the World Intellectual Property Organization in respect 
of which the European Union is designated (includin g certain designs whose 
registration has expired) to be treated as register ed under this Act with effect from 
exit day, and  26 (b) about certain applications made before exit day  to register in the international 
register maintained by the International Bureau of the World Intellectual Property 
Organization a design in respect of which the Europ ean Union is designated.”. 
3.  After Schedule 1, insert— 
 “SCHEDULE 1A Section 12A 
EUROPEAN COMMUNITY REGISTERED DESIGNS 
PART 1 
Existing registered Community designs 
Designs registered as Community designs to be treat ed as registered under the Act 
1. —(1) A design which, immediately before exit day, i s entered in the RCD register and 
has been published in the Community Designs Bulleti n as mentioned in Article 73(1) (an 
“existing registered Community design”) is to be tr eated on and after exit day as if an 
application for its registration had been made, and  it had been registered, under this Act. 
(2) A registered design which comes into being by v irtue of sub-paragraph (1) is referred 
to in this Schedule as a “re-registered design”. 
(3) This Act applies to a re-registered design as i t applies to other registered designs 
except as otherwise provided in this Schedule. 
(4) For the purposes of this Act— 
(a) the date of registration of a re-registered des ign is the date on which the existing 
registered Community design from which the re-regis tered design derives was 
treated as registered under the Community Design Re gulation, and 
(b) the date of the application of a re-registered design is the date treated, under 
Article 38, as the date of filing of the applicatio n for the registration of the existing 
registered Community design from which the re-regis tered design derives. 
(5) Nothing in this Act authorises the imposition o f a fee, or the making of provision by 
rules or regulations which authorises the impositio n of a fee, in respect of any matter 
relating to a re-registered design (see instead pro vision made by regulations under Schedule 
4 to the European Union (Withdrawal) Act 2018). 
(6) The following provisions of this Act do not app ly to a re-registered design— 
(a) section 7A(6); 
(b) section 18. 
(7) In this Schedule— 
(a) “the RCD register” means the register of regist ered Community designs 
maintained under Article 72; 
(b) “the Community Design Regulation” means Council  Regulation (EC) No 6/2002 
of 12th December 2001 on Community Designs as it ha d effect immediately 
before exit day. 
Entries to be made in the register in relation to d esigns treated as registered under 
this Act 
2. —(1) The registrar must as soon as reasonably pract icable on or after exit day enter a 
re-registered design in the register of designs.  27 (2) The obligation under section 22(1) (inspection of registered designs) applies to a re-
registered design on and after the day on which the  re-registered design is entered in the 
register (notwithstanding that no certificate of re gistration has been granted). 
Opt out 
3. —(1) Subject to sub-paragraph (2), the proprietor o f an existing registered Community 
design may at any time on or after exit day serve a  notice on the registrar that the design is 
not to be treated as if it had been registered unde r this Act. 
(2) A notice under sub-paragraph (1) may not be ser ved where on or after exit day— 
(a) the re-registered design which derives from the  existing registered Community 
design (or any interest in it)— 
 (i) has been assigned or otherwise transferred exc ept by an assent by personal 
representatives, or 
 (ii) has had an interest created in it by a mortga ge, licence or other instrument; or 
(b) proceedings based on the re-registered design h ave been initiated by the proprietor 
or with the proprietor’s consent. 
(3) A notice served under sub-paragraph (1) must— 
(a) identify the existing registered Community desi gn; and 
(b) include the name and address of any person havi ng an interest in the existing 
registered Community design which had effect before  exit day in the United 
Kingdom and in respect of which an entry was record ed in the RCD register. 
(4) A notice under sub-paragraph (1) is of no effec t unless the proprietor in that notice 
certifies that any such person— 
(a) has been given not less than three months’ noti ce of the proprietor’s intention to 
serve such a notice; or 
(b) is not affected by, or if affected consents to,  the notice. 
(5) Where a notice has been served under sub-paragr aph (1)— 
(a) the design ceases with effect from exit day to be treated as if it had been registered 
under this Act, 
(b) the obligation imposed on the registrar under p aragraph 2 (entries to be made in 
the register in relation to designs treated as regi stered under this Act) ceases to 
have effect, and 
(c) the registrar must make any necessary amendment s to the register. 
Effect of claim of priority 
4. —(1) This paragraph applies where a right of priori ty has been claimed in accordance 
with Article 42 in respect of an existing registere d Community design. 
(2) The proprietor of the re-registered design whic h derives from the existing registered 
Community design is to be treated on and after exit  day as having the same claim of 
priority. 
(3) Accordingly, the relevant date for the purposes  of establishing whether (or to what 
extent) the re-registered design is new or has indi vidual character is the date of filing of the 
application for registration of a design in a conve ntion country which formed the basis for 
the claim of priority. 
Unregistered pre-exit transfers 
5. —(1) This paragraph applies where immediately befor e exit day there is a transfer of an 
existing registered Community design that has not b een entered in the RCD register (a 
“relevant transfer”).  28 (2) Section 19 (registration of assignments, etc.) applies in relation to a relevant transfer 
as if it were an assignment of the re-registered de sign which derives from the existing 
registered Community design which has been transfer red. 
Pre-exit licences to continue to have effect in the  United Kingdom 
6. —(1) This paragraph applies where immediately befor e exit day an existing registered 
Community design is the subject of a licence which—  
(a) authorises the doing of acts in the United King dom which would otherwise 
infringe an existing registered Community design, a nd 
(b) does not expire on exit day (a “relevant licenc e”). 
(2) Subject to any agreement to the contrary betwee n the licensee and the licensor, a 
relevant licence continues to authorise the doing o f acts which would otherwise infringe the 
right in the re-registered design which derives fro m the existing registered Community 
design. 
(3) Sub-paragraph (2) is subject to the terms on wh ich the relevant licence was granted, 
subject to such modifications as are necessary for their application in the United Kingdom. 
(4) Section 19 (registration of assignments, etc.) applies in relation to a relevant licence as 
if it were a licence of the re-registered design de riving from the existing registered 
Community design which is subject to the relevant l icence, subject to the following 
modification. 
(5) Where immediately before exit day there is an e ntry in the RCD register relating to 
the relevant licence, section 19(5) does not apply to the licence until after the expiry of the 
period of 12 months beginning with the day after th at on which exit day falls. 
Security interests in existing registered Community  designs 
7. —(1) This paragraph applies where immediately befor e exit day an existing registered 
Community design is the subject of an interest whic h has been granted as security and does 
not expire on exit day (a “relevant security intere st”). 
(2) References to the existing registered Community  design in any document which 
grants or refers to the relevant security interest are to be read as including references to the 
re-registered design which derives from the existin g registered Community design. 
(3) Section 19 (registration of assignments, etc.) applies in relation to a relevant security 
interest as if it were a security interest granted in respect of the re-registered design deriving 
from the existing registered Community design which  is subject to the relevant security 
interest, subject to the following modification. 
(4) Where immediately before exit day there is an e ntry in the RCD register relating to 
the relevant security interest, section 19(5) does not apply to the document granting the 
interest until after the expiry of the period of 12  months beginning with the day after that on 
which exit day falls. 
Continuity of rights in relation to an existing reg istered Community design 
8. —(1) References to an existing registered Community  design or the registration of an 
existing registered Community design in any documen t entered into before exit day shall, 
unless there is evidence that the document was not intended to have effect in the United 
Kingdom, be read on and after exit day as including  references to the re-registered design or 
the registration of the re-registered design which derives from the existing registered 
Community design. 
(2) Subject to any agreement to the contrary, a con sent granted before exit day by the 
proprietor of an existing registered Community desi gn to the doing on or after exit day of 
an act in the United Kingdom which would otherwise infringe the right in the re-registered 
design which derives from the existing registered C ommunity design is to be treated for the  29 purposes of section 7A as a consent to the doing of  that act granted by the registered 
proprietor of the re-registered design. 
Pending proceedings concerning an existing register ed Community design 
9. —(1) This paragraph applies where on exit day an ex isting registered Community 
design is the subject of proceedings which are pend ing (“pending proceedings”) before a 
court in the United Kingdom designated for the purp oses of Article 80 (“a Community 
design court”). 
(2) Subject to sub-paragraphs (3) and (4), the prov isions contained or referred to in Title 
IX of the Community Design Regulation (with the exc eption of Articles 86(2), (4), (5) and 
91) shall continue to apply to the pending proceedi ngs as if the United Kingdom were still a 
Member State with effect from exit day. 
(3) Where the pending proceedings involve a claim f or infringement or for threatened 
infringement of an existing registered Community de sign, without prejudice to any other 
relief by way of damages, accounts or otherwise ava ilable to the proprietor of the existing 
registered Community design, the Community design c ourt may grant an injunction to 
prohibit unauthorised use of the re-registered desi gn which derives from the existing 
registered Community design. 
(4) Where the pending proceedings involve a counter claim for a declaration of invalidity 
in relation to an existing registered Community des ign, the Community design court may 
declare the registration of the re-registered desig n which derives from the existing 
registered Community design to be invalid (wholly o r in part). 
(5) Where the registration of a re-registered desig n is declared invalid to any extent, the 
registration shall to that extent be treated as hav ing been invalid from the date of 
registration or from such other date as the court m ay direct. 
(6) For the purposes of this paragraph proceedings are treated as pending on exit day if 
they were instituted but not finally determined bef ore exit day. 
Effect of injunction protecting an existing registe red Community design 
10. —(1) This paragraph applies where immediately befor e exit day an injunction is in 
force prohibiting the performance of acts in the Un ited Kingdom which infringe or would 
infringe an existing registered Community design (a  “relevant injunction”). 
(2) Subject to any order of the court to the contra ry, a relevant injunction will have effect 
and be enforceable to prohibit the performance of a cts which infringe or would infringe the 
right in a re-registered design to the same extent as in relation to the existing registered 
Community design from which the re-registered desig n derives as if it were an injunction 
granted by the court. 
PART 2 
Applications for registered Community designs which  are pending at exit day 
Applications for registration pending immediately b efore exit day 
11. —(1) In this Part references to an existing EU appl ication are to an application for 
registration of a design under the Community Design  Regulation in respect of which the 
conditions in sub-paragraph (2) are satisfied. 
(2) The conditions referred to in sub-paragraph (1)  are that immediately before exit day— 
(a) the application has been accorded a filing date  pursuant to Article 38; and 
(b) the application has been neither granted nor re fused by the European Union 
Intellectual Property Office.  30 12. —(1) Where a person who has filed an existing EU ap plication or a successor in title 
of that person applies for registration of the same  design under this Act within a period 
beginning with exit day and ending with the end of the relevant period, the relevant date for 
the purposes of establishing whether (or to what ex tent) the design which is the subject of 
the application under this Act is new or has indivi dual character is the earliest of— 
(a) the filing date accorded pursuant to Article 38  to the existing EU application; 
(b) the date of priority (if any) claimed under Art icle 42 in respect of the existing EU 
application. 
(2) In sub-paragraph (1), the “relevant period” mea ns the period of nine months 
beginning with the day after that on which exit day  falls. 
(3) For the purposes of this Act— 
(a) where an application is made of the type referr ed to in sub-paragraph (1) within the 
period referred to in that sub-paragraph, the date of the application is the filing date 
accorded pursuant to Article 38 to the existing EU application, and 
(b) where the registrar registers a design which is  the subject of an application of the 
type referred to in sub-paragraph (1) which is made  within the period referred to in 
that sub-paragraph, the date of registration of the  design is the filing date accorded 
pursuant to Article 38 to the existing EU applicati on. 
(4) Accordingly section 3C does not apply in relati on to the design. 
PART 3 
Registered Community designs where publication is d eferred at exit day 
Designs registered at the EUIPO immediately before exit day where publication is 
deferred 
13. —(1) In this Part references to a deferred design a re to a design registered under the 
Community Design Regulation in respect of which the  conditions in sub-paragraph (2) are 
satisfied. 
(2) The conditions referred to in sub-paragraph (1)  are that immediately before exit day— 
(a) the design is entered in the RCD register, and 
(b) publication of the design is deferred under Art icle 50. 
14. —(1) This paragraph applies where the proprietor of  a deferred design or a successor 
in title of that person applies for registration of  the same design under this Act within a 
period beginning with exit day and ending with the end of the relevant period. 
(2) Sections 3A(4) and 3B do not apply in relation to the application. 
(3) The relevant date for the purposes of establish ing whether (or to what extent) the 
design which is the same as the deferred design is new or has individual character is the 
earliest of— 
(a) the filing date accorded pursuant to Article 38  to the application for the deferred 
design; 
(b) the date of priority (if any) claimed under Art icle 42 in respect of the application 
for the deferred design. 
(4) If the registrar registers a design which is th e subject of an application of the type 
referred to in sub-paragraph (1) which is made with in the period referred to in that sub-
paragraph, the date of registration of the design i s the date on which the deferred design 
which is the same as that design was treated as reg istered under the Community Design 
Regulation. 
(5) Accordingly section 3C does not apply in relati on to the design.  31 (6) In sub-paragraph (1), the “relevant period” mea ns, the period of nine months 
beginning with the day after that on which exit day  falls. 
PART 4 
Treatment of registered Community designs whose reg istrations expire during 
the period of six months ending on exit day 
Application of Part 
15. —(1) This Part applies to a design in respect of wh ich the conditions in sub-paragraph 
(2) are satisfied (an “expired Community design”). 
(2) The conditions referred to in sub-paragraph (1)  are that— 
(a) immediately before the transitional period, the  design was the subject of a 
registration under the Community Design Regulation,  
(b) the registration of the design expired during t he transitional period (such that the 
design did not fall within paragraph 1(1)), and 
(c) the registration of the design would have been capable of being renewed under 
Article 13 for at least one further period of five years had a request for renewal 
been made under Article 13 prior to that expiry. 
(3) An expired Community design is to be treated as  if it were an existing registered 
Community design. 
(4) The provisions of Part 1 of this Schedule apply  to an expired Community design as 
they apply to an existing Community design subject to the provisions of this Part of the 
Schedule. 
(5) Notwithstanding the entry in the register of de signs (under paragraph 2, as applied by 
sub-paragraph (4)) of a re-registered design which derives from an expired Community 
design, the right in the re-registered design is ex pired until the period for which it subsists is 
extended in accordance with paragraph 16 (or the re -registered design is removed from the 
register in accordance with paragraph 16(3)). 
(6) In this paragraph, “transitional period” means the period of six months ending with 
exit day. 
Renewal of registration of an expired Community des ign 
16. —(1) Where the registration of an expired Community  design is renewed in 
accordance with Article 13(3) of the Continuing Com munity Design Regulation the 
registrar must, as soon as reasonably practicable a fter the date of such renewal, record in 
the register of designs the extension of the period  for which subsists the right in the re-
registered design which derives from the expired Co mmunity design. 
(2) Where the period for which the right in a re-re gistered design subsists is extended 
under sub-paragraph (1), the right is to be treated  as if it had never expired, with the result 
that— 
(a) anything done under or in relation to the right  in the period beginning with exit day 
and ending with the extension under sub-paragraph ( 1) is to be treated as valid, 
(b) an act which would have constituted an infringe ment of the right if it had not 
expired is to be treated as an infringement, and 
(c) an act which would have constituted use of the design for the services of the 
Crown if the right had not expired is to be treated  as such use. 
(3) If the registration of an expired Community des ign is not renewed within the time 
period permitted by Article 13(3) of the Continuing  Community Design Regulation—  32 (a) the registrar must remove from the register of designs the re-registered design 
which derives from the expired Community design; an d 
(b) the re-registered design ceases with effect fro m exit day to be treated as if it had 
been registered under this Act. 
(4) In this Schedule “the Continuing Community Desi gn Regulation” means the Council 
Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as it has effect 
in EU law. 
PART 5 
Restoration of registered Community design registra tions and applications 
Restoration of registered Community design to the R CD register 
17. —(1) This paragraph applies where: 
(a) before exit day a registered Community design i s removed from the RCD register 
pursuant to the Community Design Regulation, and 
(b) on or after exit day the registration of the sa id design is restored pursuant to Article 
67 of the Continuing Community Design Regulation. 
(2) Where the proprietor of the design files a requ est with the registrar within the period 
of six months beginning with the date of such resto ration— 
(a) the design will be treated as if it were an exi sting registered Community design on 
exit day; 
(b) the provisions of Part 1 apply to the re-regist ered design which derives from the 
existing registered Community design. 
Restoration of application for registered Community  design 
18. —(1) This paragraph applies where— 
(a) before exit day an application for a registered  Community design is refused 
pursuant to the Community Design Regulation; and 
(b) on or after exit day the application is restore d pursuant to Article 67 of the 
Continuing Community Design Regulation (a “relevant  application”). 
(2) Where a person who has filed a relevant applica tion or a successor in title of that 
person applies for registration of the same design under this Act within a period beginning 
with exit day and ending with the end of the releva nt period, the relevant date for the 
purposes of establishing whether the design which i s the subject of the application under 
this Act is new or has individual character is the earliest of— 
(a) the filing date accorded pursuant to Article 38  to the relevant application; 
(b) the date of priority (if any) claimed under Art icle 42 in respect of the relevant 
application. 
(3) In sub-paragraph (2), the “relevant period” mea ns the period of nine months 
beginning with the day on which the application is restored as referred to in sub-paragraph 
(1)(b).  33 PART 6 
Interpretation 
Interpretation 
19.  In this Schedule— 
“the Community Design Regulation” has the meaning g iven by paragraph 1(7); 
“the Continuing Community Design Regulation” has th e meaning given by paragraph 
16(4); 
“existing registered Community design” has the mean ing given by paragraph 1(1); 
“expired Community design” has the meaning given by  paragraph 15(1); 
“RCD register” has the meaning given by paragraph 1 (7); 
“re-registered design” has the meaning given by par agraph 1(2). 
20.  References in this Schedule to an “Article” are to  an Article of the Community 
Design Regulation. 
 SCHEDULE 1B Section 12B 
INTERNATIONAL DESIGNS 
PART 1 
Existing international designs 
International designs in respect of which the Europ ean Union is designated to be 
treated as registered under the Act 
1. —(1) A design which, immediately before exit day, m eets the requirements of sub-
paragraph (2) (a “protected international registere d design (EU))” is to be treated on and 
after exit day as if an application for its registr ation had been made, and it had been 
registered, under this Act. 
(2) The requirements referred to in sub-paragraph ( 1) are— 
(a) the design is the subject of an international r egistration which designates the 
European Union; 
(b) the international registration has been publish ed by the International Bureau 
pursuant to Article 10(3) of the Geneva Act; 
(c) the European Union Intellectual Property Office  has sent to the International 
Bureau a statement under Rule 18 bis  of the Common Regulations under the 1999 
Act and the 1960 Act of the Hague Agreement to the effect that protection is 
granted in relation to the design, or the period un der Article 106e(1) of the 
Community Design Regulation for communicating to th e International Bureau a 
notification of refusal in respect of the internati onal registration has expired; and 
(d) the effects of the international registration s o far as they relate to the design have 
neither been— 
 (i) refused by the European Union Intellectual Pro perty Office pursuant to 
Article 106e(1) of the Community Design Regulation;  nor 
 (ii) declared wholly invalid pursuant to Article 1 06f of the Community Design 
Regulation.  34 (3) Where prior to exit day the effects of the inte rnational registration to which a 
protected international registered design (EU) is s ubject are declared partly invalid so far as 
relating to that design pursuant to Article 106f of  the Community Design Regulation, the 
re-registered international design which derives fr om the protected international registered 
design (EU) has effect under this Act to the extent  that the effects of the international 
registration so far as relating to the design have not been declared invalid. 
(4) A registered design which comes into being by v irtue of sub-paragraph (1) is referred 
to in this Schedule as a “re-registered internation al design”. 
(5) This Act applies to a re-registered internation al design as it applies to other registered 
designs except as otherwise provided in this Schedu le. 
(6) For the purposes of this Act— 
(a) the date of registration of a re-registered int ernational design is the date on which 
the protected international registered design (EU) from which the re-registered 
international design derives was treated as registe red under the Geneva Act, and 
(b) the date of the application of a re-registered international design is the date treated, 
under Article 9 of the Geneva Act, as the filing da te of the application for the 
registration of the protected international registe red design (EU) from which the 
re-registered international design derives. 
(7) Nothing in this Act authorises the imposition o f a fee, or the making of provision by 
rules or regulations which authorises the impositio n of a fee, in respect of any matter 
relating to a re-registered international design (s ee instead provision made by regulations 
under Schedule 4 to the European Union (Withdrawal)  Act 2018). 
(8) The following provisions of this Act do not app ly to a re-registered international 
design— 
(a) section 7A(6); 
(b) section 18. 
(9) In this Schedule— 
(a) “the Community Design Regulation” means Council  Regulation (EC) No 6/2002 
of 12th December 2001 on Community Designs as it ha d effect immediately 
before exit day; 
(b) “the Geneva Act” means the Geneva Act of the Ha gue Agreement Concerning the 
International Registration of Industrial Designs ad opted by the Diplomatic 
Conference on 2 July 1999; 
(c) “the International Bureau” means the Internatio nal Bureau of the World 
Intellectual Property Organization; and 
(d) “international registration” means the internat ional registration of an industrial 
design effected according to the Geneva Act. 
Entries to be made in the register in relation to d esigns treated as registered under 
this Act 
2. —(1) The registrar must as soon as reasonably pract icable on or after exit day enter a 
re-registered international design in the register of designs. 
(2) The obligation under section 22(1) (inspection of registered designs) applies to a re-
registered international design on and after the da y on which the re-registered international 
design is entered in the register (notwithstanding that no certificate of registration has been 
granted). 
Opt out 
3. —(1) Subject to sub-paragraph (2), the holder of th e international registration to which 
a protected international registered design (EU) is  subject (“the proprietor”) may at any  35 time on or after exit day serve a notice on the reg istrar that the design is not to be treated as 
if it had been registered under this Act. 
(2) A notice under sub-paragraph (1) may not be ser ved where on or after exit day— 
(a) the re-registered international design which de rives from the protected 
international registered design (EU) (or any intere st in it)— 
 (i) has been assigned or otherwise transferred exc ept by an assent by personal 
representatives, or 
 (ii) has had an interest created in it by a mortga ge, licence or other instrument; or 
(b) proceedings based on the re-registered internat ional design have been initiated by 
the proprietor or with the proprietor’s consent. 
(3) A notice served under sub-paragraph (1) must: 
(a) identify the protected international registered  design (EU); and 
(b) include the name and address of any person who,  to the best of the proprietor’s 
knowledge, has an interest in the protected interna tional registered design (EU). 
(4) A notice under sub-paragraph (1) is of no effec t unless the proprietor in that notice 
certifies that any such person— 
(a) has been given not less than three months’ noti ce of the proprietor’s intention to 
serve such a notice; or 
(b) is not affected by, or if affected consents to,  the notice. 
(5) Where a notice has been served under sub-paragr aph (1)— 
(a) the design ceases with effect from exit day to be treated as if it had been registered 
under this Act, 
(b) the obligation imposed on the registrar under p aragraph 2 (entries to be made in 
the register in relation to designs treated as regi stered under this Act) ceases to 
have effect, and 
(c) the registrar must make any necessary amendment s to the register. 
Effect of claim of priority 
4. —(1) This paragraph applies where a right of priori ty has been claimed in accordance 
with Article 6 of the Geneva Act in respect of the international registration to which a 
protected international registered design (EU) is s ubject. 
(2) The proprietor of the re-registered internation al design which derives from the 
protected international registered design (EU) is t o be treated on and after exit day as 
having the same claim of priority. 
(3) Accordingly, the relevant date for the purposes  of establishing whether (or to what 
extent) the re-registered international design is n ew or has individual character is the date of 
filing of the application for registration of a des ign in a convention country or a member of 
the World Trade Organization which formed the basis  for the claim of priority. 
Unregistered pre-exit transfers 
5. —(1) This paragraph applies where immediately befor e exit day— 
(a) there is a change in ownership of the internati onal registration to which a protected 
international registered design (EU) is subject, 
(b) the change in ownership has effect in respect o f the European Union and the 
protected international registered design (EU), and  
(c) the change in ownership has not been entered in  the international register 
(a “relevant transfer”).  36 (2) Section 19 (registration of assignments, etc.) applies in relation to a relevant transfer 
as if it were an assignment of the re-registered in ternational design which derives from the 
protected international registered design (EU) whic h has been transferred. 
Pre-exit licences to continue to have effect in the  United Kingdom 
6.—(1) This paragraph applies where immediately befor e exit day a protected 
international registered design (EU) is the subject  of a licence which— 
(a) authorises the doing of acts in the United King dom which would otherwise 
infringe the protected international registered des ign (EU), and 
(b) does not expire on exit day (a “relevant licenc e”). 
(2) Subject to any agreement to the contrary betwee n the licensee and the licensor, a 
relevant licence continues to authorise the doing o f acts which would otherwise infringe the 
re-registered international design which derives fr om the protected international registered 
design (EU). 
(3) Sub-paragraph (2) is subject to the terms on wh ich the relevant licence was granted, 
subject to such modifications as are necessary for their application in the United Kingdom. 
(4) Section 19 (registration of assignments, etc.) applies in relation to a relevant licence as 
if it were a licence of the re-registered internati onal design deriving from the protected 
international registered design (EU) which is subje ct to the relevant licence, subject to the 
following modification. 
(5) Section 19(5) does not apply to the licence unt il after the expiry of the period of 12 
months beginning with the day after that on which e xit day falls. 
Security interests in protected registered internat ional registered designs (EU) 
7.—(1) This paragraph applies where immediately befor e exit day a protected 
international registered design (EU) is the subject  of an interest which has been granted as 
security and does not expire on exit day (a “releva nt security interest”). 
(2) References to the protected international regis tered design (EU), or the international 
registration to which the protected international r egistered design (EU) is subject, in any 
document which grants or refers to the relevant sec urity interest are to be read as including 
references to the re-registered international desig n which derives from the protected 
international registered design (EU). 
(3) Section 19 (registration of assignments, etc.) applies in relation to a relevant security 
interest as if it were a security interest granted in respect of the re-registered design deriving 
from the protected international registered design (EU) which is subject to the relevant 
security interest, subject to the following modific ation. 
(4) Section 19(5) does not apply to the interest un til after the expiry of 12 months 
beginning with the day after that on which exit day  falls. 
Continuity of rights in relation to a protected int ernational registered design (EU) 
8.—(1) References to a protected international regist ered design (EU), or the international 
registration to which a protected international reg istered design (EU) is subject, in any 
document entered into before exit day shall, unless  there is evidence that the document was 
not intended to have effect in the United Kingdom, be read on and after exit day as 
including references to the re-registered internati onal design or the registration of the re-
registered international design which derives from the protected international registered 
design (EU) . 
(2) Subject to any agreement to the contrary, a con sent granted before exit day by the 
holder of the international registration to which a  protected international registered design 
(EU) is subject to the doing on or after exit day o f an act in the United Kingdom which 
would otherwise infringe the re-registered internat ional design which derives from the  37 protected international registered design (EU) is t o be treated for the purposes of section 7A 
as a consent to the doing of that act granted by th e registered proprietor of the re-registered 
international design. 
Pending proceedings concerning a protected internat ional registered design (EU) 
9.—(1) This paragraph applies where on exit day a pro tected international registered 
design (EU) is the subject of proceedings which are  pending (“pending proceedings”) 
before a court in the United Kingdom designated for  the purposes of Article 80 (“a 
Community design court”). 
(2) Subject to sub-paragraphs (3) and (4), the prov isions contained or referred to in Title 
IX of the Community Design Regulation (with the exc eptions of Articles 86(2), (4), (5) and 
91) shall continue to apply to the pending proceedi ngs as if the United Kingdom were still a 
Member State with effect from exit day. 
(3) Where the pending proceedings involve a claim f or infringement or for threatened 
infringement of a protected international registere d design (EU), without prejudice to any 
other relief by way of damages, accounts or otherwi se available to the holder of the 
international registration to which the protected i nternational registered design (EU) is 
subject, the Community design court may grant an in junction to prohibit unauthorised use 
of the re-registered international design which der ives from the protected international 
registered design (EU). 
(4) Where the pending proceedings involve a counter claim for a declaration of invalidity 
in relation to a protected international registered  design (EU), the Community design court 
may declare the registration of the re-registered i nternational design which derives from the 
protected international registered design (EU) to b e invalid (wholly or in part). 
(5) Where the registration of a re-registered inter national design is declared invalid to any 
extent, the registration shall to that extent be tr eated as having been invalid from the date of 
registration or from such other date as the court m ay direct. 
(6) For the purposes of this paragraph proceedings are treated as pending on exit day if 
they were instituted but not finally determined bef ore exit day. 
Effect of injunction protecting a protected interna tional registered design (EU) 
10.—(1) This paragraph applies where immediately befor e exit day an injunction is in 
force prohibiting the performance of acts in the Un ited Kingdom which infringe or would 
infringe a protected international registered desig n (EU) (a “relevant injunction”). 
(2) Subject to any order of the court to the contra ry, a relevant injunction will have effect 
and be enforceable to prohibit the performance of a cts which infringe or would infringe the 
right in a re-registered international design to th e same extent as in relation to the protected 
international registered design (EU) from which the  re-registered international design 
derives as if it were an injunction granted by the court. 
PART 2 
International registrations in respect of which the  period for refusal has not 
expired before exit day etc  
11. —(1) In this Part references to a “pending internat ional design (EU)” are to a design 
which, immediately before exit day, meets the requi rements of sub-paragraph (2). 
(2) The requirements referred to in sub-paragraph ( 1) are— 
(a) the design is the subject of an international r egistration which designates the 
European Union; 
(b) the design is not the subject of—  38  (i) a refusal by the European Union Intellectual P roperty Office pursuant to 
Article 106e(1) of the Community Design Regulation;  or 
 (ii) a statement by the European Union Intellectua l Property Office under Rule 
18 bis  of the Common Regulations under the 1999 Act and t he 1960 Act of the 
Hague Agreement to the effect that protection is gr anted in relation to it; 
(c) the international registration to which the des ign is subject— 
 (i) has not been published by the International Bu reau pursuant to Article 10(3) 
of the Geneva Act; or 
 (ii) has been published by the International Burea u but the period under Article 
106e(1) of the Community Design Regulation for comm unicating to the 
International Bureau a notification of refusal in r espect of the international 
registration has not expired. 
12. —(1) Where the holder of the international registra tion to which a pending 
international design (EU) is subject, or a successo r in title of that person, makes an 
application for registration of the same design und er this Act within a period beginning with 
exit day and ending with the end of the relevant pe riod, the relevant date for the purposes of 
establishing whether (or to what extent) the design  which is the subject of the application 
under this Act is new or has individual character i s the earliest of— 
(a) the date on which the international registratio n was treated as registered pursuant 
to Article 10(2) of the Geneva Act; 
(b) the date of priority (if any) claimed under Art icle 41 of the Community Design 
Regulation as applied by Article 106a of that Regul ation in respect of the pending 
international design (EU). 
(2) In sub-paragraph (1), the “relevant period” mea ns the period of nine months 
beginning with the day after that on which exit day  falls. 
(3) For the purposes of this Act— 
(a) where an application is made of the type referr ed to in sub-paragraph (1) within the 
period referred to in that sub-paragraph, the date of the application is the date on 
which the international registration to which the p ending international design (EU) 
is subject was treated as registered pursuant to Ar ticle 10(2) of the Geneva Act, 
and 
(b) where the registrar registers a design which is  the subject of an application of the 
type referred to in sub-paragraph (1) which is made  within the period referred to in 
that sub-paragraph, the date of registration of the  design is the date on which the 
international registration to which the pending int ernational design (EU) is subject 
was treated as registered pursuant to Article 10(2)  of the Geneva Act. 
(4) Accordingly section 3C does not apply in relati on to the design. 
PART 3 
Treatment of international registered designs whose  registrations expire during 
the period of six months ending on exit day 
Application of Part 
13.—(1) This Part applies to a design which met the re quirements set out in paragraph 
1(2)(b) to (d) in respect of which the conditions i n sub-paragraph (2) are satisfied (an 
“expired international design”). 
(2) The conditions referred to in sub-paragraph (1)  are that— 
(a) immediately before the transitional period, the  design was the subject of an 
international registration which designated the Eur opean Union,  39 (b) the international registration expired during t he transitional period (such that the 
design did not fall within paragraph 1(1)), and 
(c) the renewal of the international registration w ould have been capable of being 
effected for the European Union in accordance with Article 17 of the Geneva Act 
for at least one further period of five years had a  request for renewal been made in 
accordance with Article 17(2) prior to that expiry.  
(3) An expired international design is to be treate d as if it were a protected international 
registered design (EU). 
(4) The provisions of Part 1 of this Schedule apply  to an expired international design as 
they apply to a protected international registered design (EU) subject to the provisions of 
this Part of the Schedule. 
(5) Notwithstanding the entry in the register of de signs (under paragraph 2, as applied by 
sub-paragraph (4)) of a re-registered international  design which derives from an expired 
international design, the right in the re-registere d international design is expired until it is 
extended in accordance with paragraph 14 (or the re -registered design is removed from the 
register in accordance with paragraph 14(3)). 
(6) In this paragraph, “transitional period” means the period of six months ending with 
exit day. 
Renewal of registration of an expired international  design 
14.—(1) Where within the period beginning with exit da y and ending with the end of the 
relevant period— 
(a) the international registration to which an expi red international design was subject 
is renewed in accordance with Article 17(2) of the Geneva Act, 
(b) the renewal has effect in respect of the Europe an Union and the expired 
international design, and 
(c) the holder of that international registration n otifies the registrar of such renewal, 
the registrar must, as soon as reasonably practicab le after the date of notification, 
record in the register of designs the extension of the period for which subsists the 
right in the re-registered international design whi ch derives from the expired 
international design. 
(2) Where the period for which the right in a re-re gistered international design subsists is 
extended under sub-paragraph (1), the right is to b e treated as if it had never expired, with 
the result that— 
(a) anything done under or in relation to the right  in the period beginning with exit day 
and ending with the extension under sub-paragraph ( 1) is to be treated as valid, 
(b) an act which would have constituted an infringe ment of the right if it had not 
expired is to be treated as an infringement, and 
(c) an act which would have constituted use of the design for the services of the 
Crown if the right had not expired is to be treated  as such use. 
(3) If within the period referred to in sub-paragra ph (1) the holder fails to notify the 
registrar in accordance with sub-paragraph (1)(c)— 
(a) the registrar must remove from the register of designs the re-registered 
international design which derives from the expired  international design, and 
(b) the re-registered international design ceases w ith effect from exit day to be treated 
as if it had been registered under this Act. 
(4) In sub-paragraph (1), the “relevant period” mea ns the period of nine months 
beginning with the day after that on which exit day  falls.  40 PART 4 
Interpretation 
Interpretation 
15. —(1) In this Schedule— 
“the Community Design Regulation” has the meaning g iven by paragraph 1(9); 
“expired international design” has the meaning give n by paragraph 13(1); 
“the Geneva Act” has the meaning given by paragraph  1(9); 
“the International Bureau” has the meaning given by  paragraph 1(9); 
“international registration” has the meaning given by paragraph 1(9); 
“protected international registered design (EU)” ha s the meaning given by paragraph 
1(1); 
“re-registered international design” has the meanin g given by paragraph 1(4). 
(2) For the purposes of paragraphs 1(2)(b) and 11(2 )(c), where the international 
registration to which a design is subject has not b een published in its entirety but the design 
itself has been by virtue of a request made under A rticle 11(4)(a) of the Geneva Act, the 
international registration is to be treated as havi ng been published.”. 
 SCHEDULE 4 Regulation 6 
Amendments to the 1994 Act to make provision for ce rtain international 
trade marks protected in the European Union to be t reated as registered 
trade marks and about certain applications for such  marks and 
transformation applications 
1.  The 1994 Act is amended as follows. 
2.  After section 54( a) (and before the italic heading before section 55) , insert— 
“Certain international trade marks protected in the  European Union to be treated as 
registered trade marks 
54A. Schedule 2B makes provision for international trade  marks protected in the 
European Union (including certain expired marks) to  be treated as registered trade marks 
with effect from exit day and about certain applica tions for the protection of an 
international trade mark in the European Union and transformation applications made 
before exit day.” 
3.  Before Schedule 3, insert— 
                                                                                                                                            
(a) Section 54 was amended by the Intellectual Proper ty (Unjustified Threats) Act 2017 (c. 14), section 2(4).  41  “SCHEDULE 2B Section 54A 
INTERNATIONAL TRADE MARKS PROTECTED IN THE 
EUROPEAN UNION 
PART 1 
Existing international trade marks protected in the  European Union 
An international trade mark protected in the Europe an Union to be treated as 
registered under this Act 
1. —(1) A trade mark which, immediately before exit da y, is an international trade mark 
which is protected in the European Union in accorda nce with Article 189(2) of the 
European Union Trade Mark Regulation (an “existing IR(EU)”) is to be treated on and after 
exit day as if an application had been made, and th e trade mark had been registered, under 
this Act in respect of the same goods or services i n respect of which the international trade 
mark is protected in the European Union. 
(2) Where the international registration to which a n international trade mark is subject is 
sub-divided to reflect the making of more than one request for territorial extension to the 
European Union under Article 3 ter  there is to be deemed for the purposes of sub-para graph 
(1) to be a separate trade mark in respect of the g oods or services covered by each sub-
division of the registration. 
(3) Where the international registration to which a n international trade mark is subject has 
been created by virtue of Rule 27(2) (recording of partial change in ownership) (a “separate 
international registration”), it is irrelevant for the purposes of the application of sub-
paragraph (2) to that separate international regist ration that the requests for territorial 
extension were made before the separate internation al registration was created. 
(4) A registered trade mark which comes into being by virtue of sub-paragraph (1) is 
referred to in this Act as a comparable trade mark (IR). 
(5) This Act applies to a comparable trade mark (IR ) as it applies to other registered trade 
marks except as otherwise provided in this Schedule . 
(6) A comparable trade mark (IR) is deemed for the purposes of this Act to be registered 
as of— 
(a) where the protection in the European Union of t he existing IR(EU) from which the 
comparable trade mark (IR) derives resulted from a request for territorial extension 
under Article 3 ter (1) (request mentioned in original application), th e date of 
registration of the existing IR(EU) accorded pursua nt to Article 3(4); or 
(b) where the protection in the European Union of t he existing IR(EU) from which the 
comparable trade mark (IR) derives resulted from a request for territorial extension 
under Article 3ter (2) (subsequent request), the date on which the req uest was 
recorded in the International Register, 
and that date is deemed for the purposes of this Ac t to be the date of registration. 
(7) Section 40(3) and (4) does not apply to the reg istration of a comparable trade mark 
(IR) under this Part. 
(8) Section 67(1) applies in relation to the provis ion of information and the inspection of 
documents relating to a comparable trade mark (IR) notwithstanding that there will have 
been no application under this Act for the registra tion of the trade mark (and so no 
publication of an application). 
(9) Nothing in this Act authorises the imposition o f a fee, or the making of provision by 
rules or regulations which authorises the impositio n of a fee, in respect of any matter  42 relating to a comparable trade mark (IR) (see inste ad provision made by regulations under 
Schedule 4 to the European Union (Withdrawal) Act 2 018). 
(10) For the purposes of this Act— 
(a) the date of filing of an application for regist ration of a comparable trade mark (IR) 
is the same date as the deemed date of registration  of the comparable trade mark 
(IR) under sub-paragraph (6); 
(b) references to the date of application for regis tration of a comparable trade mark 
(IR) are to the date of filing of the application; 
(c) where an earlier trade mark is a comparable tra de mark (IR), references to the 
completion of the registration procedure for the ea rlier trade mark are to 
publication by the European Union Intellectual Prop erty Office of the matters 
referred to in Article 190(2) of the European Union  Trade Mark Regulation in 
respect of the existing IR(EU) from which the compa rable trade mark (IR) derives. 
(11) In this Schedule— 
(a) “the International Register” means the register  of trade marks maintained by the 
International Bureau for the purposes of the Madrid  Protocol; 
(b) “international registration” means a registrati on made in the International Register 
in accordance with the Madrid Protocol; 
(c) “international trade mark” means a trade mark w hich is the subject of an 
international registration. 
Opt out 
2. —(1) Subject to sub-paragraphs (2) and (6), the pro prietor of an existing IR(EU) may, 
at any time on or after exit day, serve notice on t he registrar that the trade mark is not to be 
treated as if the trade mark had been registered un der this Act (an “opt out notice”). 
(2) An opt out notice may not be served where on or  after exit day— 
(a) the comparable trade mark (IR) has been put to use in the United Kingdom by the 
proprietor or with the proprietor’s consent (which use includes affixing the trade 
mark to goods or to the packaging of goods in the U nited Kingdom solely for 
export purposes); 
(b) the comparable trade mark (IR) (or any right in  or under it) has been made the 
subject of an assignment, licence, security interes t or any other agreement or 
document except for an assent by personal represent atives in relation to the 
comparable trade mark (IR); or 
(c) proceedings based on the comparable trade mark (IR) have been initiated by the 
proprietor or with the proprietor’s consent. 
(3) An opt out notice must— 
(a) identify the number of the international regist ration to which the existing IR(EU) 
to which the notice relates is subject; and 
(b) include the name and address of any person havi ng an interest in the existing 
IR(EU) which had effect before exit day in the Unit ed Kingdom, and in respect of 
which an entry was recorded in the International Re gister. 
(4) An opt out notice is of no effect unless the pr oprietor in that notice certifies that any 
such person— 
(a) has been given not less than three months’ noti ce of the proprietor’s intention to 
serve an opt out notice; or 
(b) is not affected or if affected, consents to the  opt out. 
(5) Where a notice has been served in accordance wi th this paragraph—  43 (a) the comparable trade mark (IR) which derives fr om the existing IR(EU) ceases 
with effect from exit day to be treated as if it ha d been registered under this Act; 
and 
(b) the registrar must, where particulars of the co mparable trade mark (IR) have been 
entered in the register, remove the comparable trad e mark (IR) from the register. 
(6) Where an international trade mark which is prot ected in the European Union is treated 
as being more than one trade mark by virtue of para graph 1(2)— 
(a) an opt out notice must relate to all of the exi sting IR(EU)s which (by virtue of 
paragraph 1(2)) derive from the international trade  mark; 
(b) the references in sub-paragraph (2) to the comp arable trade mark (IR) are to be 
read as references to any of the comparable trade m arks (IR) which derive from the 
existing IR(EU)s to which the opt out notice relate s; and 
(c) the references in sub-paragraph (5) to the comp arable trade mark (IR) are to be 
read as references to all of the comparable trade m arks (IR) which derive from the 
existing IR(EU)s to which the notice relates. 
Entries to be made in the register in relation to a  comparable trade mark (IR) 
3. —(1) The registrar must as soon as reasonably pract icable after exit day enter a 
comparable trade mark (IR) in the register. 
(2) The particulars of the goods or services in res pect of which the comparable trade mark 
(IR) is treated as if it had been registered must b e taken from the English language version 
of the entry in the International Register for the corresponding (IR). 
(3) Where on or after exit day the entry in the Int ernational Register containing the 
particulars referred to in sub-paragraph (2) is mod ified to correct an error pursuant to Rule 
28, a person having a sufficient interest may apply  to the registrar for rectification of the 
register by the substitution of the English languag e version of the entry for the 
corresponding (IR) in the International Register as  modified. 
(4) In this Schedule, the “corresponding (IR)”, in relation to a comparable trade mark 
(IR), means the existing IR(EU) from which the comp arable trade mark (IR) derives. 
Comparable trade mark (IR) which derives from a mar k treated as an EU Collective 
Mark or EU Certification Mark 
4. —(1) This paragraph applies where the existing IR(E U) from which a comparable trade 
mark (IR) derives is dealt with for the purposes of  the European Union Trade Mark 
Regulation as an EU collective mark or an EU certif ication mark. 
(2) The comparable trade mark (IR) is to be treated  as either a collective mark or a 
certification mark, as the case may be. 
(3) The proprietor of the comparable trade mark (IR ) must, following notice from the 
registrar, file with the registrar regulations gove rning the use of the international trade 
mark, submitted pursuant to the European Union Trad e Mark Regulation, which had effect 
immediately before exit day. 
(4) Where the regulations referred to in sub-paragr aph (3) are in a language other than 
English they must be filed together with a translat ion into English verified to the 
satisfaction of the registrar as corresponding to t he original text. 
(5) Paragraph 9 of Schedule 1 and paragraph 10 of S chedule 2 apply in relation to the 
translation referred to in sub-paragraph (4) as the y apply in relation to the regulations 
referred to in sub-paragraph (3). 
(6) Where the regulations or any translation are no t filed in accordance with the above 
provisions— 
(a) the registrar must remove the comparable trade mark (IR) from the register; and  44 (b) the rights of the proprietor shall be deemed to  have ceased as from the date of 
removal. 
Renewal of a comparable trade mark (IR) which expir es within six months after exit 
day 
5. —(1) This paragraph applies to the renewal of the r egistration of a comparable trade 
mark (IR) which expires within the period beginning  with exit day and ending with the end 
of the relevant period (and accordingly section 43( 1) to (3A) does not apply). 
(2) The registration of the comparable trade mark ( IR) may be renewed at the request of 
the proprietor before the expiry of the registratio n. 
(3) Where the registration of the comparable trade mark (IR) is not renewed in 
accordance with sub-paragraph (2)— 
(a) on, or as soon as reasonably practicable after,  the expiry of the registration, the 
registrar must notify the proprietor that the regis tration has expired and of the 
manner in which the registration may be renewed; an d 
(b) a request for renewal must be made within the p eriod of six months beginning with 
the date of the notice. 
(4) If a request for renewal is made in respect of only some of the goods or services for 
which the comparable trade mark (IR) is registered,  the registration is to be renewed for 
those goods or services only. 
(5) If the registration is not renewed in accordanc e with the above provisions, the registrar 
must remove the comparable trade mark (IR) from the  register. 
(6) Section 43(4) and (6) applies to the registrati on of a comparable trade mark (IR) 
which is renewed in accordance with the above provi sions. 
(7) In sub-paragraph (1), the “relevant period” mea ns the period of six months beginning 
with the day after that on which exit day falls. 
Restoration of a comparable trade mark (IR) 
6.  Where a comparable trade mark (IR) is removed from  the register pursuant to 
paragraph 5, the rules relating to the restoration of the registration of a trade mark (referred 
to in section 43(5)) apply in relation to the resto ration of the comparable trade mark (IR) to 
the register. 
Raising of relative grounds in opposition proceedin gs in case of non-use 
7. —(1) Section 6A applies where an earlier trade mark  is a comparable trade mark (IR), 
subject to the modifications set out below. 
(2) Where the relevant period referred to in sectio n 6A(3)(a) (the “five-year period”) has 
expired before exit day— 
(a) the references in section 6A(3) and (6) to the earlier trade mark are to be treated as 
references to the corresponding (IR); and 
(b) the references in section 6A(3) and (4) to the United Kingdom include the 
European Union. 
(3) Where exit day falls within the five-year perio d, in respect of that part of the five-year 
period which falls before exit day— 
(a) the references in section 6A(3) and (6) to the earlier trade mark are to be treated as 
references to the corresponding (IR); and 
(b) the references in section 6A to the United King dom include the European Union.  45 Non-use as defence in infringement proceedings and revocation of registration of a 
comparable trade mark (IR) 
8. —(1) Sections 11A and 46 apply in relation to a com parable trade mark (IR), subject to 
the modifications set out below. 
(2) Where the period of five years referred to in s ections 11A(3)(a) and 46(1)(a) or (b) 
(the “five-year period”) has expired before exit da y— 
(a) the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 
46 to a trade mark are to be treated as references to the corresponding (IR); and 
(b) the references in sections 11A and 46 to the Un ited Kingdom include the European 
Union. 
(3) Where exit day falls within the five-year perio d, in respect of that part of the five-year 
period which falls before exit day— 
(a) the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 
46 to a trade mark, are to be treated as references  to the corresponding (IR); and 
(b) the references in sections 11A and 46 to the Un ited Kingdom include the European 
Union. 
Grounds for invalidity of registration of a trade m ark based upon an earlier 
comparable trade mark (IR) 
9. —(1) Section 47 applies where an earlier trade mark  is a comparable trade mark (IR), 
subject to the modifications set out below. 
(2) Where the period of five years referred to in s ections 47(2A)(a) and 47(2B) (the “five-
year period”) has expired before exit day— 
(a) the references in section 47(2B) and (2E) to th e earlier trade mark are to be treated 
as references to the corresponding (IR); and 
(b) the references in section 47 to the United King dom include the European Union. 
(3) Where exit day falls within the five-year perio d, in respect of that part of the five-year 
period which falls before exit day— 
(a) the references in section 47(2B) and (2E) to th e earlier trade mark are to be treated 
as references to the corresponding (IR); and 
(b) the references in section 47 to the United King dom include the European Union. 
Reputation of a comparable trade mark (IR) 
10. —(1) Sections 5 and 10 apply in relation to a compa rable trade mark (IR), subject to 
the modifications set out below. 
(2) Where the reputation of a comparable trade mark  (IR) falls to be considered in respect 
of any time before exit day, references in sections  5(3) and 10(3) to— 
(a) the reputation of the mark are to be treated as  references to the reputation of the 
corresponding (IR); and 
(b) the United Kingdom include the European Union. 
Rights conferred by registered trade mark 
11. Section 9 applies in relation to a comparable trade  mark (IR) but as if— 
(a) the words in brackets in subsection (3) referri ng to section 40(3) were replaced 
with a reference to paragraph 1(6) of this Schedule ; and 
(b) the proviso in subsection (3) were omitted.  46 Effect of disclaimer 
12. Where, immediately before exit day, the protection in the European Union of an 
existing IR(EU) is subject to a disclaimer recorded  in the International Register, the 
registration of the comparable trade mark (IR) whic h derives from the existing IR(EU) is to 
be treated on and after exit day as subject to the same disclaimer (and section 13 applies 
accordingly but as if the reference to “publication ” in subsection (2) was omitted). 
Effect of claim of priority 
13. —(1) This paragraph applies where— 
(a) a right of priority was claimed in respect of a n international application for 
protection of a trade mark in accordance with Rule 9(4)(iv); 
(b) immediately before exit day there is an entry i n the International Register in 
respect of that trade mark containing particulars o f that claim of priority (a “claim 
of priority”); 
(c) the trade mark is an existing IR(EU). 
(2) Subject to sub-paragraph (4), the proprietor of  the comparable trade mark (IR) which 
derives from the existing IR(EU) is to be treated o n and after exit day as having the same 
claim of priority. 
(3) Accordingly, the relevant date for the purposes  of establishing, in relation to the 
comparable trade mark (IR), which rights take prece dence is the date of filing of the 
application for a trade mark in a Convention countr y which formed the basis for the claim 
of priority. 
(4) Where the protection in the European Union of t he existing IR(EU) resulted from a 
request for territorial extension under Article 3 ter (2), the proprietor of the comparable trade 
mark (IR) which derives from the existing IR(EU) is  to be treated on and after exit day as 
having the same claim of priority only where the re quest for territorial extension was 
recorded in the International Register within a per iod of six months beginning with the day 
after the priority date recorded in the Internation al Register in respect of the international 
application referred to in sub-paragraph (1)(a). 
Effect of seniority claim 
14. —(1) This paragraph applies where immediately befor e exit day an existing IR(EU) 
has a valid claim to seniority of a trade mark whic h trade mark (the “senior mark”) is a 
registered trade mark or a protected international trade mark (UK). 
(2) The comparable trade mark (IR) which derives fr om the existing IR(EU) is to be 
treated on and after exit day as if it had a valid claim to seniority of the senior mark. 
(3) Accordingly, where the proprietor of the compar able trade mark (IR) surrenders the 
senior mark or allows it to lapse (whether wholly o r partially), subject to paragraph 15, the 
proprietor of the comparable trade mark (IR) is dee med to continue to have the same rights 
as the proprietor would have had if the senior mark  had continued to be registered in respect 
of all the goods or services for which it was regis tered prior to the surrender or lapse. 
(4) An existing IR(EU) has a valid claim to seniori ty of a trade mark where— 
(a) a claim has been filed in accordance with Artic le 191 or 192 of the European 
Union Trade Mark Regulation in respect of the inter national registration to which 
the existing IR(EU) is subject; and 
(b) the seniority so claimed has not lapsed in the circumstances referred to in Article 
39 of that Regulation (as it applies to internation al registrations under Article 182 
of that Regulation).  47 Determination of invalidity and liability to revoca tion in relation to claims of seniority 
15. —(1) Where pursuant to paragraph 14 a comparable tr ade mark (IR) is treated as if it 
had a valid claim to seniority of a registered trad e mark which has been— 
(a) removed from the register under section 43; or 
(b) surrendered under section 45, 
any person may apply to the registrar or to the cou rt for the declaration set out in sub-
paragraph (2). 
(2) The declaration is that if the trade mark had n ot been so removed or surrendered, the 
registration of the trade mark would have been liab le to be revoked under section 46 with 
effect from a date specified in the declaration or declared invalid under section 47. 
(3) Where the declaration is that had the trade mar k not been so removed or surrendered 
the registration of it would have been liable to be — 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) where there has been no claim of priority purs uant to Article 35 of the 
European Union Trade Mark Regulation (as it applies  to international 
registrations under Article 182 of that Regulation)  in respect of the existing 
IR(EU) from which the comparable trade mark (IR) de rives, the deemed date 
of registration of the comparable trade mark (IR); or 
 (ii) where there has been a claim of priority, the  priority date accorded pursuant to 
a right of priority claimed pursuant to Article 35 of the European Union Trade 
Mark Regulation in respect of the existing IR(EU) f rom which the comparable 
trade mark (IR) derives; or 
(b) declared invalid under section 47, 
the seniority claimed for the comparable trade mark  (IR) is to be treated as if it never had 
effect. 
(4) Where pursuant to paragraph 14 a comparable tra de mark (IR) is treated as if it had a 
valid claim to seniority of a protected internation al trade mark (UK) which has been— 
(a) removed from the International Register; or 
(b) surrendered under the Madrid Protocol, 
any person may apply to the registrar or to the cou rt for the declaration set out in sub-
paragraph (5). 
(5) The declaration is that, if the trade mark had not been so removed or surrendered, the 
protection of the mark in the United Kingdom would have been liable to be revoked under 
section 46 with effect from a date specified in the  declaration or declared invalid under 
section 47. 
(6) Where the declaration is that had the trade mar k not been so removed or surrendered 
the protection of the mark in the United Kingdom wo uld have been liable to be— 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) where there has been no claim of priority purs uant to Article 35 of the 
European Union Trade Mark Regulation (as it applies  to international 
registrations under Article 182 of that Regulation)  in respect of the existing 
IR(EU) from which the comparable trade mark (IR) de rives, the deemed date 
of registration of the comparable trade mark (IR); or 
 (ii) where there has been a claim of priority, the  priority date accorded pursuant to 
a right of priority claimed pursuant to Article 35 of the European Union Trade 
Mark Regulation in respect of the existing IR(EU) f rom which the comparable 
trade mark (IR) derives; or 
(b) declared invalid under section 47,  48 the seniority claimed for the comparable trade mark  (IR) is to be treated as if it never had 
effect. 
(7) Where the protection in the European Union of a n existing IR(EU) resulted from a 
request for territorial extension under Article 3 ter (2), a right of priority claimed pursuant to 
Article 35 of the European Union Trade Mark Regulat ion in respect of the existing IR(EU) 
is to be disregarded for the purposes of sub-paragr aphs (3)(a)(ii) and (6)(a)(ii) unless the 
request for territorial extension was recorded in t he International Register within a period of 
six months beginning with the day after the priorit y date recorded in the International 
Register in respect of the international applicatio n for protection of the trade mark which is 
the same as the one in respect of which the request  for territorial extension was filed. 
(8) References in sub-paragraphs (5) and (6) to sec tions 46 and 47 are to those sections as 
they apply to a protected international trade mark (UK) under an order made pursuant to 
section 54. 
(9) Where a trade mark has been surrendered or allo wed to lapse in respect of some only 
of the goods or services for which it is registered , the declaration in sub-paragraphs (2) and 
(5) is that if the goods or services had not been r emoved from the registration, the 
registration of the trade mark would have been liab le to be revoked under section 46 with 
effect from a date specified in the declaration or declared invalid under section 47 and sub-
paragraphs (3) and (6) shall be construed according ly. 
Procedure for declaration that trade mark would hav e been liable to be revoked or 
declared invalid 
16. —(1) In the case of proceedings on an application u nder paragraph 15 before the 
registrar, the rules relating to applications for a nd proceedings relating to the revocation or 
invalidation of a trade mark apply, with necessary modifications. 
(2) In the case of proceedings on an application un der paragraph 15 before the court, 
section 74 applies to the proceedings as it applies  to proceedings involving an application of 
the type referred to in section 74(1)(a) to (c). 
Assignment of an existing IR(EU) not registered on exit day 
17. —(1) This paragraph applies where before exit day a n existing IR(EU) (or any right in 
it) is the subject of an assignment (a “relevant as signment”) which immediately before exit 
day is not recorded in the International Register. 
(2) Section 25 applies in relation to a relevant as signment as if it were a registrable 
transaction affecting a comparable trade mark (IR),  subject to the modification set out 
below. 
(3) An application under section 25(1) may only be made by— 
(a) a person claiming to be entitled to an interest  in or under a comparable trade mark 
(IR) by virtue of a relevant assignment of the corr esponding (IR); or 
(b) the proprietor of the comparable trade mark (IR ). 
Effect of a licence of an existing IR(EU) 
18. —(1) This paragraph applies where immediately befor e exit day an existing IR(EU) is 
the subject of a licence (a “relevant licence”) whi ch— 
(a) authorises the doing of acts in the United King dom which would otherwise 
infringe the international trade mark; and 
(b) does not expire on exit day. 
(2) Subject to any agreement to the contrary betwee n the licensee and the licensor, a 
relevant licence continues to authorise the doing o f acts in the United Kingdom which 
would otherwise infringe the comparable trade mark (IR) which derives from the existing 
IR(EU).  49 (3) Sub-paragraph (2) is subject to— 
(a) the terms on which the relevant licence was gra nted; 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 li cence 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 exit day there is an e ntry in the International Register 
relating to a relevant licence— 
(a) section 25(3) and (4) does not apply until afte r the expiry of the relevant period; 
and 
(b) section 25(4)(a) applies after the expiry of th e 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 exit day. 
(7) In sub-paragraph (6)(a), the “relevant period” means the period of twelve months 
beginning with the day after that on which exit day  falls. 
Effect of a security interest in an existing IR(EU)  
19. —(1) This paragraph applies where immediately befor e exit day an existing IR(EU) 
(or any right in or under it) is the subject of a s ecurity interest (a “relevant security 
interest”) which— 
(a) restricts the proprietor’s right to dispose in the European Union of the existing 
IR(EU); and 
(b) does not terminate on exit day. 
(2) References to the existing IR(EU), or the inter national registration to which the 
existing IR(EU) is subject, in any document which g rants or refers to the relevant security 
interest are to be read as including references to the comparable trade mark (IR) which 
derives from the existing IR(EU). 
(3) Section 25 applies in relation to a relevant se curity interest as if it were a registrable 
transaction affecting a comparable trade mark (IR),  subject to the modifications set out 
below. 
(4) An application under section 25(1) may only be made by— 
(a) a person claiming to be entitled to an interest  in or under a comparable trade mark 
(IR) by virtue of the relevant security interest; o r 
(b) the proprietor of the comparable trade mark (IR ). 
(5) Where immediately before exit day there is an e ntry in the International Register 
relating to a relevant security interest— 
(a) section 25(3) and (4) do not apply until after the expiry of the relevant period; and 
(b) section 25(4)(a) applies after the expiry of th e 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 exit day. 
(6) In sub-paragraph (5)(a), the “relevant period” means the period of twelve months 
beginning with the day after that on which exit day  falls.  50 Continuity of rights in relation to a comparable tr ade mark (IR) 
20. —(1) References to an existing IR(EU), or the inter national registration to which an 
existing IR(EU) is subject, in any document made be fore exit day shall, unless there is 
evidence that the document was not intended to have  effect in the United Kingdom, be read 
on and after exit day as including references to th e comparable trade mark (IR) or the 
registration of the comparable trade mark (IR) whic h derives from the existing IR(EU). 
(2) Subject to any agreement to the contrary, a con sent granted before exit day by the 
proprietor of an existing IR(EU) to the doing on or  after exit day of an act in the United 
Kingdom which would otherwise infringe the comparab le trade mark (IR) which derives 
from the existing IR(EU) is to be treated for the p urposes of section 9 as a consent to the 
doing of that act. 
Existing IR(EU): pending proceedings 
21. —(1) This paragraph applies where on exit day an ex isting IR(EU) is the subject of 
proceedings which are pending (“pending proceedings ”) before a court in the United 
Kingdom designated for the purposes of Article 123 of the European Union Trade Mark 
Regulation (“EU trade mark court”). 
(2) Subject to sub-paragraphs (3) and (4), the prov isions contained or referred to in 
Chapter 10 of the European Union Trade Mark Regulat ion (with the exception of Articles 
128(2), (4), (6) and (7) and 132) continue to apply  to the pending proceedings as if the 
United Kingdom were still a Member State with effec t from exit day. 
(3) Where the pending proceedings involve a claim f or infringement of an existing 
IR(EU), without prejudice to any other relief by wa y of damages, accounts or otherwise 
available to the proprietor of the existing IR(EU),  the EU trade mark court may grant an 
injunction to prohibit unauthorised use of the comp arable trade mark (IR) which derives 
from the existing IR(EU). 
(4) Where the pending proceedings involve a counter claim for the revocation of, or a 
declaration of invalidity in relation to, an existi ng IR(EU), the EU trade mark court may 
revoke the registration of the comparable trade mar k (IR) which derives from the existing 
IR(EU) or declare the registration of the comparabl e trade mark (IR) which derives from 
the existing IR(EU) to be invalid. 
(5) Where the grounds for revocation or invalidity exist in respect of only some of the 
goods or services for which the existing IR(EU) is registered, the revocation or declaration 
of invalidity in respect of the registration of the  comparable trade mark (IR) which derives 
from the existing IR(EU) relates to those goods or services only. 
(6) Where (by virtue of sub-paragraph (4)) the regi stration of a comparable trade mark 
(IR) is revoked to any extent, the rights of the pr oprietor are deemed to have ceased to that 
extent as from— 
(a) the date of the counterclaim for revocation, or  
(b) if the court is satisfied that the grounds for revocation existed at an earlier date, 
that date. 
(7) Where (by virtue of sub-paragraph (4)) the regi stration of a comparable trade mark 
(IR) is declared invalid to any extent, the registr ation is to that extent to be deemed never to 
have been made, provided that this does not affect transactions past and closed. 
(8) For the purposes of this paragraph proceedings are treated as pending on exit day if 
they were instituted but not finally determined bef ore exit day. 
Existing IR(EU): effect of injunction 
22. —(1) This paragraph applies where immediately befor e exit day an injunction is in 
force prohibiting the performance of acts in the Un ited Kingdom which infringe or would 
infringe an existing IR(EU) (a “relevant injunction ”).  51 (2) Subject to any order of the court to the contra ry, a relevant injunction will have effect 
and be enforceable to prohibit the performance of a cts which infringe or would infringe a 
comparable trade mark (IR) to the same extent as in  relation to the existing IR(EU) from 
which the comparable trade mark (IR) derives as if it were an injunction granted by the 
court. 
PART 2 
Treatment of international trade marks protected in  the European Union which 
expire during the period of six months ending on ex it day 
Registration of certain expired international trade  marks 
23. —(1) This Part applies to an international trade ma rk which, immediately before the 
transitional period, was protected in the European Union in accordance with Article 189(2) 
of the European Union Trade Mark Regulation but whi ch, as a result of the expiry of the 
registration of the international trade mark during  the transitional period, does not fall 
within paragraph 1(1) (an “expired IR(EU)”). 
(2) Where the international registration to which a n international trade mark is subject has 
been sub-divided as referred to in paragraph 1(2), there is to be deemed for the purposes of 
sub-paragraph (1) to be a separate expired trade ma rk in respect of the goods or services 
covered by each sub-division of the registration. 
(3) An expired IR(EU) is to be treated as if it wer e an existing IR(EU). 
(4) The provisions of Part 1 of this Schedule apply  to an expired IR(EU) as they apply to 
an existing IR(EU) subject to the provisions of thi s Part of the Schedule. 
(5) Notwithstanding the entry in the register (unde r paragraph 3, as applied by sub-
paragraph (4)) of a comparable trade mark (IR) whic h derives from an expired IR(EU), the 
registration of the comparable trade mark (IR) is e xpired until the proprietor gives notice to 
the registrar in accordance with paragraph 24(1)(b)  (or the comparable trade mark (IR) is 
removed from the register in accordance with paragr aph 24(2)). 
(6) In this paragraph, “transitional period” means the period of six months ending with 
exit day. 
Renewal of an expired IR(EU) 
24. —(1) Where within the period beginning with exit da y and ending with the end of the 
relevant period— 
(a) the international registration to which an expi red IR(EU) is subject is renewed in 
accordance with Article 7; and 
(b) the proprietor of the expired IR(EU) notifies t he registrar of such renewal (a 
“renewal notice”), 
paragraphs 25 and 26 apply to the renewal of the re gistration of the comparable trade mark 
(IR) which derives from the expired IR(EU). 
(2) If within the period referred to in sub-paragra ph (1) the proprietor fails to notify the 
registrar in accordance with sub-paragraph (1)(b)— 
(a) the registrar must remove from the register the  comparable trade mark (IR) which 
derives from the expired IR(EU); and 
(b) the comparable trade mark (IR) ceases with effe ct from exit day to be treated as if 
it had been registered under this Act. 
(3) In sub-paragraph (1), the “relevant period” mea ns the period of nine months 
beginning with the day after that on which exit day  falls.  52 Renewal of an expired IR(EU): territorial extension  under Article 3 ter (1) 
25. —(1) Where the protection in the European Union of an expired IR(EU) resulted from 
a request for territorial extension under Article 3 ter (1), the registrar must, as soon as 
reasonably practicable following receipt of the ren ewal notice, renew the registration of the 
comparable trade mark (IR) which derives from the e xpired IR(EU).  
(2) A comparable trade mark (IR) which is renewed u nder sub-paragraph (1) shall be 
renewed for a period of ten years from the expiry o f the international registration to which 
the expired IR(EU) is subject. 
(3) Section 43(6) applies to the registration of a comparable trade mark (IR) which is 
renewed in accordance with this paragraph. 
Renewal of an expired IR(EU): territorial extension  under Article 3 ter (2) 
26. —(1) This paragraph applies where the protection in  the European Union of an 
expired IR(EU) resulted from a request for territor ial extension under Article 3 ter (2). 
(2) The relevant date for the purposes of determini ng the date of renewal of the 
registration of the comparable trade mark (IR) whic h derives from the expired IR(EU) (the 
“relevant renewal date”) shall be— 
(a) the date of expiry of the period of ten years f rom the date on which the request for 
territorial extension was recorded in the Internati onal Register; or 
(b) where the international registration to which t he expired IR(EU) is subject has 
been renewed since the date referred to in paragrap h (a), the anniversary of that 
date, computed by reference to periods of ten years , following the last renewal of 
the registration prior to the date of the renewal n otice (the “notice date”). 
(3) Where the relevant renewal date of a comparable  trade mark (IR) falls prior to the 
notice date, the registrar must, as soon as reasona bly practicable following receipt of a 
renewal notice, renew the registration of the compa rable trade mark (IR) which derives 
from the expired IR(EU). 
(4) Where the relevant renewal date of a comparable  trade mark (IR) falls before the 
expiry of the period of six months beginning with t he notice date, sub-paragraphs (5) and 
(6) apply (and accordingly section 43(1) to (3A) do es not apply). 
(5) The registration of the comparable trade mark ( IR) may be renewed at the request of 
the proprietor before the relevant renewal date. 
(6) Where the registration of the comparable trade mark (IR) is not renewed in 
accordance with sub-paragraph (5)— 
(a) on, or as soon as reasonably practicable after,  the relevant renewal date, the 
registrar must notify the proprietor that the regis tration of the comparable trade 
mark (IR) has expired and of the manner in which re gistration may be renewed; 
and 
(b) a request for renewal must be made within a per iod of six months beginning with 
the date of the notice. 
(7) If a request for renewal is made in respect of only some of the goods or services for 
which the comparable trade mark (IR) is registered,  the registration is to be renewed for 
those goods or services only. 
(8) A comparable trade mark (IR) which is renewed u nder sub-paragraph (3) or pursuant 
to a request for renewal in accordance with sub-par agraph (5) or (6) shall be renewed for a 
period of ten years from the relevant renewal date (and accordingly, section 43(4) does not 
apply). 
(9) Where sub-paragraphs (5) and (6) apply to the r enewal of the registration of a 
comparable trade mark (IR) and the registration is not renewed in accordance with those 
provisions, the registrar must remove the comparabl e trade mark (IR) from the register.  53 (10) Section 43(6) applies to the registration of a  comparable trade mark (IR) which is 
renewed in accordance with this paragraph. 
(11) Where a comparable trade mark (IR) is removed from the register pursuant to sub-
paragraph (9), the rules relating to the restoratio n of the registration of a trade mark 
(referred to in section 43(5)) apply in relation to  the restoration of the comparable trade 
mark (IR) to the register. 
(12) Where the relevant renewal date of a comparabl e trade mark (IR) falls on or after the 
expiry of the period of six months beginning with t he notice date, section 43 applies to the 
renewal of the registration of the comparable trade  mark (IR) and references to the expiry 
of the registration are to be treated as references  to the relevant renewal date of the 
comparable trade mark (IR). 
PART 3 
Applications for the extension of protection of int ernational registrations to the 
European Union which are pending on exit day 
Interpretation 
27. —(1) In this Part— 
(a) references to an “existing ITM application” are  to an international application 
which contains a request for extension of the prote ction resulting from an 
international registration to the European Union un der Article 3 ter (1) in respect of 
which the conditions in sub-paragraph (2) are satis fied; 
(b) references to an “existing request for EU exten sion” are to a request for extension 
to the European Union of the protection resulting f rom an international registration 
made subsequent to the international registration p ursuant to Article 3 ter (2) in 
respect of which the conditions in sub-paragraph (3 ) are satisfied; 
(c) references to an “international application” ar e to an application to the 
International Bureau under Article 2(2) for the reg istration of a trade mark in the 
International Register. 
(2) The conditions referred to in sub-paragraph (1) (a) are— 
(a) the international application was filed before exit day with the Office of origin in 
accordance with Article 2(2); and 
(b) as at the time immediately before exit day, the  request for extension of protection 
to the European Union mentioned in the internationa l application has been neither 
granted nor refused by the European Union Intellect ual Property Office. 
(3) The conditions referred to in sub-paragraph (1) (b) are— 
(a) the request for extension of protection to the European Union was filed before exit 
day with the Office of origin or the International Bureau (as the case may be) in 
accordance with Rule 24(2); and 
(b) as at the time immediately before exit day, the  request for extension of protection 
to the European Union has been neither granted nor refused by the European 
Union Intellectual Property Office under the Europe an Union Trade Mark 
Regulation. 
(4) In sub-paragraphs (2)(b) and (3)(b) — 
(a) the reference to the request for extension of p rotection to the European Union 
being “granted” means the European Union Intellectu al Property Office having 
sent to the International Bureau a statement to the  effect that protection is granted 
to the mark in the European Union in accordance wit h Rule 18 ter ; and 
(b) the reference to the request for extension of p rotection to the European Union 
being “refused” means the European Union Intellectu al Property Office having  54 sent to the International Bureau a notification of refusal in accordance with Article 
5(1) or (2) which refusal has not been subsequently  withdrawn. 
Application for registration under this Act based u pon an existing ITM application or 
an existing request for EU extension recorded in th e International Register prior to 
exit day 
28. —(1) This paragraph applies where— 
(a) either— 
 (i) an existing ITM application has been filed wit h the International Bureau in 
respect of a trade mark and the date accorded to th e international registration 
of the trade mark pursuant to Article 3(4) is a dat e prior to exit day; or 
 (ii) an existing request for EU extension in respe ct of a trade mark has been filed 
with the International Bureau and the date on which  it was recorded in the 
International Register pursuant to Article 3 ter (2) is a date prior to exit day; 
(b) the person who filed the existing ITM applicati on or (as the case may be) the 
existing request for EU extension, or a successor i n title of that person, applies for 
registration of the same trade mark under this Act for some or all of the same 
goods or services, and 
(c) the application under this Act is made within a  period beginning with exit day and 
ending with the end of the period referred to in su b-paragraph (4). 
(2) Where this paragraph applies, the relevant date  for the purposes of establishing which 
rights take precedence is the earliest of— 
(a) the date accorded to the international trade ma rk the subject of the existing ITM 
application pursuant to Article 3(4) or, in the cas e of an existing request for EU 
extension, the date on which the request was record ed in the International Register 
pursuant to Article 3 ter (2); 
(b) the date of priority (if any) accorded pursuant  to a right of priority claimed 
pursuant to Article 4 of the Paris Convention in re spect of the existing ITM 
application or the existing request for EU extensio n (as the case may be). 
(3) The registrability of the trade mark the subjec t of an application under this Act of the 
type mentioned in sub-paragraph (1)(b) and made wit hin the period mentioned in sub-
paragraph (1)(c) shall not be affected by any use o f the mark in the United Kingdom which 
commenced in the period between the date referred t o in sub-paragraph (2) and the date of 
the application under this Act. 
(4) In sub-paragraph (1)(c), the period referred to  is the period of nine months beginning 
with the day after that on which exit day falls. 
(5) A right of priority claimed pursuant to Article  4 of the Paris Convention in respect of 
an existing request for EU extension is to be disre garded for the purposes of sub-paragraph 
(2)(b) unless the existing request for EU extension  was recorded in the International 
Register within a period of six months beginning wi th the day after the priority date 
recorded in the International Register in respect o f the international application for 
protection of the trade mark which is the same as t he one in respect of which the existing 
request for EU extension was filed. 
Application for registration under this Act based u pon an existing ITM application or 
an existing request for EU extension recorded in th e International Register on or after 
exit day 
29. —(1) This paragraph applies where— 
(a) either—  55  (i) an existing ITM application has been filed wit h the International Bureau in 
respect of a trade mark and the date accorded to th e international registration 
of the trade mark pursuant to Article 3(4) is a dat e on or after exit day; or 
 (ii) an existing request for EU extension in respe ct of a trade mark has been filed 
with the International Bureau and the date on which  it was recorded in the 
International Register pursuant to Article 3 ter (2) is a date on or after exit day; 
(b) the person who filed the existing ITM applicati on or (as the case may be) the 
existing request for EU extension, or a successor i n title of that person, applies for 
registration of the same trade mark under this Act for some or all of the same 
goods or services; and 
(c) the application under this Act is made within t he period of nine months beginning 
with the date referred to in sub-paragraph (a)(i) o r (ii) (as the case may be). 
(2) Where this paragraph applies, the relevant date  for the purposes of establishing which 
rights take precedence is the earliest of— 
(a) the date accorded to the international trade ma rk the subject of the existing ITM 
application pursuant to Article 3(4) or, in the cas e of an existing request for EU 
extension, the date on which the request was record ed in the International Register 
pursuant to Article 3 ter (2); 
(b) the date of priority (if any) accorded pursuant  to a right of priority claimed 
pursuant to Article 4 of the Paris Convention in re spect of the existing ITM 
application or the existing request for EU extensio n (as the case may be). 
(3) The registrability of the trade mark the subjec t of an application under this Act of the 
type mentioned in sub-paragraph (1)(b) and made wit hin the period mentioned in sub-
paragraph (1)(c) shall not be affected by any use o f the mark in the United Kingdom which 
commenced in the period between the date referred t o in sub-paragraph (2) and the date of 
the application under this Act. 
(4) A right of priority claimed pursuant to Article  4 of the Paris Convention in respect of 
an existing request for EU extension is to be disre garded for the purposes of sub-paragraph 
(2)(b) unless the existing request for EU extension  was recorded in the International 
Register within a period of six months beginning wi th the day after the priority date 
recorded in the International Register in respect o f the international application for 
protection of the trade mark which is the same as t he one in respect of which the existing 
request for EU extension was filed. 
Right to claim seniority where seniority has been c laimed by an existing ITM 
application or an existing request for EU extension  
30. —(1) Where an existing ITM application or an existi ng request for EU extension 
claims seniority of a trade mark which trade mark ( “the senior mark”) is a registered trade 
mark or a protected international trade mark (UK), the applicant may claim seniority of the 
senior mark in an application for registration of a  trade mark (a “relevant mark”) pursuant 
to this Part. 
(2) The effect of a seniority claim made pursuant t o sub-paragraph (1) is that where 
following the registration of the relevant mark the  proprietor of that mark surrenders the 
senior mark or allows it to lapse (wholly or partia lly), subject to paragraph 31, the 
proprietor of the relevant mark is deemed to contin ue to have the same rights as the 
proprietor would have had if the senior mark had co ntinued to be registered in respect of all 
the goods or services for which it was registered p rior to the surrender or lapse. 
(3) Provision may be made by rules as to the manner  of claiming seniority pursuant to 
this paragraph. 
(4) In sub-paragraph (1), an application for regist ration of a trade mark “pursuant to this 
Part” means an application that is of the type ment ioned in paragraph 28(1)(b) or 29(1)(b) 
and that is made within the period mentioned in par agraph 28(1)(c) or 29(1)(c) (as the case 
may be).  56 Determination of invalidity and liability to revoca tion in relation to claim of seniority 
under paragraph 30 
31. —(1) Where a relevant mark has claimed seniority of  a registered trade mark which 
has been— 
(a) removed from the register under section 43; or 
(b) surrendered under section 45, 
any person may apply to the registrar or to the cou rt for the declaration set out in sub-
paragraph (2). 
(2) The declaration is that, if the trade mark had not been so removed or surrendered, the 
registration of the trade mark would have been liab le to be revoked under section 46 with 
effect from a date specified in the declaration or declared invalid under section 47. 
(3) Where the declaration is that had the trade mar k not been so removed or surrendered, 
the registration of it would have been liable to be — 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) where the application for registration of the relevant mark was based on an 
existing ITM application and there has been no clai m of priority, the date of 
registration accorded pursuant to Article 3(4) to t he international trade mark 
the subject of the existing ITM application; 
 (ii) where the application for registration of the  relevant mark was based on an 
existing request for EU extension and there has bee n no claim of priority, the 
date on which the request was recorded in the Inter national Register pursuant 
to Article 3 ter (2); 
 (iii) where the application for registration of th e relevant mark was based on an 
existing ITM application or an existing request for  EU extension and there has 
been a claim of priority, the priority date accorde d pursuant to a right of 
priority claimed pursuant to Article 4 of the Paris  Convention; or 
(b) declared invalid under section 47, 
the seniority claimed for the relevant mark is to b e treated as if it never had effect. 
(4) Where a relevant mark has claimed seniority of a protected international trade mark 
(UK) which has been— 
(a) removed from the International Register; or 
(b) surrendered under the Madrid Protocol, 
any person may apply to the registrar or to the cou rt for the declaration set out in sub-
paragraph (5). 
(5) The declaration is that, if the trade mark had not been so removed or surrendered, the 
protection of the trade mark in the United Kingdom would have been liable to be revoked 
under section 46 with effect from a date specified in the declaration or declared invalid 
under section 47. 
(6) Where the declaration is that had the trade mar k not been so removed or surrendered, 
the registration of it would have been liable to be — 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) where the application for registration of the relevant mark was based on an 
existing ITM application and there has been no clai m of priority, the date of 
registration accorded pursuant to Article 3(4) to t he international trade mark 
the subject of the existing ITM application; 
 (ii) where the application for registration of the  relevant mark was based on an 
existing request for EU extension and there has bee n no claim of priority, the 
date on which the request was recorded in the Inter national Register pursuant 
to Article 3 ter (2);  57  (iii) where the application for registration of th e relevant mark was based on an 
existing ITM application or an existing request for  EU extension and there has 
been a claim of priority, the priority date accorde d pursuant to a right of 
priority claimed pursuant to Article 4 of the Paris  Convention; or 
(b) declared invalid under section 47, 
the seniority claimed for the relevant mark is to b e treated as if it never had effect. 
(7) Where the application for registration of the r elevant mark was based on an existing 
request for EU extension a right of priority claime d pursuant to Article 35 of the European 
Union Trade Mark Regulation in respect of the reque st for EU extension is to be 
disregarded for the purposes of sub-paragraphs (3)( a)(iii) and (6)(a)(iii) unless the request 
for territorial extension was recorded in the Inter national Register within a period of six 
months beginning with the day after the priority da te recorded in the International Register 
in respect of the international application for pro tection of the trade mark which is the same 
as the one in respect of which the request for EU e xtension was filed. 
(8) References in sub-paragraphs (5) and (6) to sec tions 46 and 47 are to those sections as 
they apply to a protected international trade mark (UK) under an order made pursuant to 
section 54. 
(9) Where a trade mark has been surrendered or allo wed to lapse in respect of only some 
of the goods or services for which it is registered , the declaration in sub-paragraphs (2) and 
(5) is that if the goods or services had not been r emoved from the registration, the 
registration of the trade mark would have been liab le to be revoked under section 46 with 
effect from a date specified in the declaration or declared invalid under section 47 and sub-
paragraphs (3) and (6) shall be construed according ly. 
(10) The provisions of paragraph 16 apply in relati on to an application under this 
paragraph as they apply to an application under par agraph 15. 
PART 4 
Transformation applications which are pending on ex it day 
Transformation applications 
32. —(1) In this Part, references to a “transformation application” are to an application for 
transformation of an international registration whi ch has been cancelled (a “cancelled 
international registration”) into an application fo r registration of a European Union trade 
mark filed under Article 204 of the European Union Trade Mark Regulation in respect of 
which the conditions in sub-paragraph (2) are satis fied. 
(2) The conditions referred to in sub-paragraph (1)  are— 
(a) the transformation application was filed before  exit day with the European Union 
Intellectual Property Office; 
(b) as at the time immediately before exit day the transformation application has 
neither been granted nor refused by the European Un ion Intellectual Property 
Office under the European Union Trade Mark Regulati on; and 
(c) the international registration was not cancelle d at the request of the Patent Office 
as Office of origin for the international registrat ion of the trade mark. 
(3) In sub-paragraph (2)(b)— 
(a) the reference to the transformation application  being “granted” means a European 
Union trade mark being registered under the Europea n Union Trade Mark 
Regulation pursuant to the transformation applicati on; and 
(b) the reference to the transformation application  being “refused” means the 
transformation application being subject to the pro visions in Article 204(5) of the 
European Union Trade Mark Regulation.  58 Application for registration based upon a cancelled  international registration 
33. —(1) This paragraph applies where— 
(a) a person who has filed a transformation applica tion in respect of a cancelled 
international registration, or a successor in title  of that person, applies for 
registration under this Act of a trade mark which i s the same as the trade mark 
which was the subject of the cancelled internationa l registration and in respect of 
some or all of the same goods or services included in the international registration; 
(b) the application for registration under this Act  is made within the period beginning 
with exit day and ending with the end of the releva nt period; and 
(c) on or before the date of the transformation app lication on which the application for 
registration under this Act is based the trade mark  that was the subject of the 
cancelled international registration— 
 (i) was protected in the European Union in accorda nce with Article 189(2) of the 
European Union Trade Mark Regulation; or 
 (ii) was the subject of an existing ITM applicatio n or an existing request for EU 
extension which, as at that date, had neither been granted nor refused by the 
European Union Intellectual Property Office (the re ferences to “granted” and 
“refused” having the same meaning as given by parag raph 27(4)). 
(2) Where this paragraph applies by virtue of sub-p aragraph (1)(c)(i), the relevant date for 
the purposes of establishing which rights take prec edence is the earliest of— 
(a) where— 
 (i) the protection in the European Union of the tr ade mark that was the subject of 
the cancelled international registration resulted f rom a request for territorial 
extension under Article 3 ter (1), the date of registration accorded to the 
international registration pursuant to Article 3(4) ; or 
 (ii) the protection in the European Union of the t rade mark that was the subject of 
the cancelled international registration resulted f rom a request for territorial 
extension under Article 3 ter (2), the date on which the request was recorded in 
the International Register; and 
(b) the date of priority (if any) accorded pursuant  to a right of priority claimed 
pursuant to Article 4 of the Paris Convention in re spect of the request referred to in 
paragraph (a)(i) or (ii). 
(3) Where this paragraph applies by virtue of sub-p aragraph (1)(c)(ii), the relevant date 
for the purposes of establishing which rights take precedence is the earliest of— 
(a) the date accorded to the trade mark that was th e subject of the existing ITM 
application pursuant to Article 3(4) or, in the cas e of an existing request for EU 
extension, the date on which the request was record ed in the International Register 
pursuant to Article 3 ter (2); and 
(b) the date of priority (if any) accorded pursuant  to a right of priority claimed 
pursuant to Article 4 of the Paris Convention in re spect of the request referred to in 
paragraph (a). 
(4) A right of priority claimed pursuant to Article  4 of the Paris Convention in respect of 
a request for territorial extension to the European  Union made under Article 3ter (2)  is to be 
disregarded for the purposes of sub-paragraphs (2)( b) and (3)(b) unless the request for 
extension was recorded in the International Registe r within a period of six months 
beginning with the day after the priority date reco rded in the International Register in 
respect of the international application for protec tion of the trade mark which is the same as 
the one in respect of which the request for extensi on was filed. 
(5) The registrability of the trade mark the subjec t of an application under this Act of the 
type mentioned in sub-paragraph (1)(a) and made wit hin the period mentioned in sub-
paragraph (1)(b) shall not be affected by any use o f the mark in the United Kingdom which 
commenced in the period between the date referred t o in sub-paragraph (2) or (3) (as the  59 case may be) and the date of the application for re gistration of the trade mark under this 
Act. 
(6) Paragraphs 30 and 31 apply in relation to an ap plication for a trade mark under this 
Act of the type mentioned in sub-paragraph (1)(a) a nd made within the period mentioned in 
sub-paragraph (1)(b), as they apply in relation to an application for registration of a trade 
mark pursuant to Part 3, but as if— 
(a) the references to an existing ITM application o r an existing request for EU 
extension and an existing ITM application and an ex isting request for EU 
extension had the same meaning as they have in this  paragraph; and 
(b) the references to an existing ITM application i ncluded references to a “protected 
EU designation”. 
(7) In this paragraph— 
(a) an “existing ITM application” means an internat ional application which contains a 
request for extension of the protection resulting f rom an international registration 
to the European Union under Article 3 ter (1) which has been filed with the Office 
of origin in accordance with Article 2(2); 
(b) an “existing request for EU extension” means a request for extension to the 
European Union of the protection resulting from an international registration made 
subsequent to the international registration pursua nt to Article 3 ter (2) which has 
been filed with the Office of origin or the Interna tional Bureau (as the case may 
be) in accordance with Rule 24(2); 
(c) the “relevant period” means the period of nine months beginning with the day after 
that on which exit day falls; 
(d) a “protected EU designation” means an internati onal registration which prior to its 
cancellation was protected in the European Union in  accordance with Article 
189(2) of the European Union Trade Mark Regulation.  
PART 5 
Interpretation 
Interpretation 
34. —(1) In this Schedule— 
“comparable trade mark (IR)” has the meaning given by paragraph 1(4); 
“the Common Regulations” means the Common Regulatio ns under the Madrid 
Agreement concerning the international registration  of marks and the Madrid Protocol 
in force on 1st  November 2017( a); 
“corresponding (IR)” has the meaning given by parag raph 3(4); 
“existing IR(EU)” has the meaning given by paragrap h 1(1); 
“expired IR(EU)” has the meaning given by paragraph  23(1); 
“international application” has the meaning given b y paragraph 27(1)(c); 
“the International Register” has the meaning given by paragraph 1(11)(a); 
“international registration” has the meaning given by paragraph 1(11)(b); 
“international trade mark” has the meaning given by  paragraph 1(11)(c); 
“Office of origin” has the meaning given by Article  2(2); 
                                                                                                                                            
(a) Available from the World Intellectual Property Or ganization at www.wipo.int.  60 “the previous EUTM Regulations” means Council Regul ation (EC) No 207/2009 of 
26th February 2009 on the European Union trade mark ( a) and Council Regulation (EC) 
No 40/94 of 20 th  December 1993 on the Community trade mark( b); 
“protected international trade mark (UK)” has the s ame meaning as in the Trade Marks 
(International Registration) Order 2008( c); 
(2) References in this Schedule to— 
(a) an “Article” are to an Article of the Madrid Pr otocol; 
(b) an Article of the European Union Trade mark Reg ulation include references to any 
equivalent Article contained in the previous EUTM R egulations; 
(c) the European Union Trade Mark Regulation includ e references to the previous 
EUTM Regulations; 
(d) an international trade mark include references to an international trade mark which 
is dealt with for the purposes of the European Unio n Trade Mark Regulation as an 
EU collective mark or an EU certification mark; 
(e) a “Rule” are to a Rule of the Common Regulation s. 
(3) In this Schedule, references to a request for t erritorial extension, in relation to an 
existing IR(EU) which is the subject of a separate international registration within the 
meaning of paragraph 1(3), are to the request made before the separate international 
registration was created.”. 
 
 SCHEDULE 5 Regulation 7 
Fees payable in respect of re-registered designs, r e-registered 
international designs and comparable trade marks (I R) 
PART 1 
Fees payable in respect of a re-registered design o r a re-registered international design 
1. —(1) The extension of the duration of the right in a re-registered design or a re-registered 
international design under section 8 of the Act is subject to the payment of a renewal fee and 
payment of the additional fee which applies in the circumstances referred to in section 8(4) of the 
Act. 
(2)  But no additional fee is payable if the application  for extension under section 8(4) of the Act 
relates to a re-registered design, or a re-register ed international design, the right in which expired  
within the period of six months beginning with exit  day and ending with the end of the relevant 
period. 
(3)  In sub-paragraph (2), “the relevant period” means t he period of six months ending with the 
day after that on which exit day falls. 
2.  The restoration of the right in a re-registered de sign or a re-registered international design 
under section 8A of the Act is subject to the payme nt of a renewal fee and payment of the 
additional fee which applies in the circumstances r eferred to in section 8(4) of the Act. 
3.  A request for a certified copy of an entry in the register or a certified extract from the register 
relating to a re-registered design or a re-register ed international design made under section 17(5) 
of the Act is subject to payment of a fee. 
                                                                                                                                            
(a) OJ No. L 78, 24.3.2009, p.1. 
(b) OJ No. L 11, 14.1.1994, p.1. 
(c) S.I. 2008/2206.  61 4.  The registrar may by rules provide that any person  who applies for an uncertified copy or 
extract from the register in respect of a re-regist ered design or re-registered international design 
shall be entitled to such a copy or extract on paym ent of a fee prescribed in relation to uncertified 
copies and extracts. 
5.  A request made to correct any error in the represe ntation of a re-registered design or re-
registered international design, or any error in th e register in respect of a re-registered design or re-
registered international design, made under section  21(2) of the Act is subject to payment of a fee. 
6.  A request for information under section 23 of the Act relating to a design which is a re-
registered design or re-registered international de sign is subject to payment of a fee. 
7.  The registrar may by regulations make provision ab out fees in relation to the making of 
requests to the registrar under section 28A for an opinion on specified matters relating to re-
registered designs or re-registered international d esigns. 
8.  The Registered Designs (Fees) Rules 2016( a) apply to re-registered designs and re-registered 
international designs as they apply to other regist ered designs. 
PART 2 
Fees payable in respect of a comparable trade mark (IR) 
9.  The renewal of the registration of a comparable tr ade mark (IR) under section 43 of the 1994 
Act is subject to the payment of a renewal fee and,  in the circumstances referred to in section 
43(3) of the 1994 Act, payment of an additional ren ewal fee. 
10.  The renewal of the registration of a comparable tr ade mark (IR) under paragraph 5 of 
Schedule 2B to the 1994 Act is subject to the payme nt of a renewal fee as if the renewal had been 
requested under section 43(1) of the 1994 Act befor e the expiry of the registration. 
11.  The renewal of a comparable trade mark (IR) under paragraph 26(5) or (6) of Schedule 2B 
to the 1994 Act is subject to the payment of a rene wal fee as if the renewal had been requested 
under section 43(1) of the 1994 Act before the expi ry of the registration. 
12.  If a renewal fee is paid in respect of only some o f the goods or services for which a 
comparable trade mark (IR) is registered, the regis tration is to be renewed for those goods or 
services only. 
13.  A request for information or inspection of documen ts relating to a comparable trade mark 
(IR) made under section 67 of the 1994 Act is subje ct to payment of the appropriate fee (if any). 
14.  The Trade Marks (Fees) Rules 2008( b) apply to comparable trade marks (IR) as they appl y 
to other registered trade marks. 
15.  The Commissioners for Her Majesty’s Revenue and Cu stoms may by regulations made by 
statutory instrument require the proprietor or a li censee of a comparable trade mark (IR) who is 
giving notice under section 89 of the 1994 Act to p ay such fees in respect of the notice as may be 
specified by the regulations. 
16.  Regulations under paragraph 15 may make different provision as respects different classes of 
case to which they apply and may include such incid ental and supplementary provisions as the 
Commissioners consider expedient. 
17.  A statutory instrument containing regulations unde r paragraph 15 is subject to annulment in 
pursuance of a resolution of either House of Parlia ment. 
                                                                                                                                            
(a) S.I. 2016/889. 
(b) S.I. 2008/1958 as amended by S.I. 2009/2089, rule s 15 to 19, S.I. 2010/33, rules 13 to 14, S.I. 2012 /1003, rule 3(2), S.I. 
2013/2236, rules 2(1) to (c).  62 18.  The Trade Marks (Customs) Regulations 1994, to the  extent that they make provision which 
could be made under paragraph 15, are to be treated  as if they had been made under paragraph 14 
as well as under section 90 of the 1994 Act. 
 
 SCHEDULE 6 Regulation 8 
Amendments to the Registered Designs Rules 
1.  The Registered Designs Rules are amended as follow s. 
2.  After rule 2A (directions of the registrar), inser t— 
“Re-registered designs 
2B.  Except where provided to the contrary, these Rules  apply to a re-registered design 
and a re-registered international design as they ap ply to other registered designs.”. 
3.  In rule 13(2)— 
(a)  at the end of (2) insert— 
“except where the registered design is a re-registe red design or a re-registered international 
design where the duration of the right in the desig n ends within the period of six months 
beginning with exit day (as defined in section 20(1 ) of the European Union (Withdrawal) 
Act 2018) and ending with the end of the period of six months beginning with the day after 
that on which exit day falls (a “relevant re-regist ered design”)”. 
(b)  after (2) insert— 
“(2A) The period prescribed for the purposes of sec tion 8A(1) in respect of a relevant re-
registered design or a re-registered international design shall be the period of 12 months 
beginning immediately after the date on which the r egistrar gave notice under section 8(3).” 
4.  Omit rule 23. 
5.  In rule 26 (certificate of registration), after pa ragraph (3) insert “(4) This rule shall not apply 
to re-registered designs or re-registered internati onal designs.” 
6.  In rule 27 (registration of interests), in paragra ph (1)— 
(a)  at the end of sub-paragraph (d), for “.”, substitut e “;”; 
(b)  after sub-paragraph (d) insert— 
“(e) where the design to be registered is a re-regi stered design (within the meaning of 
“re-registered design” in paragraph 1(2) of Schedul e 1A) an indication that the re-
registered design was on exit day the subject of a registration at the European 
Union Intellectual Property Office, including the n umber of the registration of the 
registered Community design from which the re-regis tered design derives.”. 
7.  In rule 33 (copies of representations and specimen s), after paragraph (2) insert “(3) This rule 
shall not apply to re-registered designs or re-regi stered international designs.” 
8.  In rule 42 (address for service), in paragraph (4) , for “another” substitute “an”. 
 
 SCHEDULE 7 Regulation 9 
Amendments to the Trade Marks Rules 
1.  The Trade Marks Rules are amended as follows.  63 2.  In rule 2, after paragraph (2) insert— 
“(2A) Terms defined in Part 5 of Schedules 2A and 2 B have the same meaning in these 
Rules.”. 
3.  Before rule 3 insert— 
“2B Comparable trade mark (IR) 
These Rules apply to a comparable trade mark (IR) a s they apply to other registered trade 
marks.” 
4.  After rule 4 insert— 
“4A Prescribed comparable trade mark (IR) fees 
In relation to a comparable trade mark (IR), “presc ribed” in rule 4(1) means prescribed by 
virtue of regulations under Schedule 4 to the Europ ean Union (Withdrawal) Act 2018.”. 
5.  Before rule 6 insert— 
“5B Application for registration based upon an exist ing ITM application, existing 
request for EU extension or transformation applicat ion; Schedule 2B paragraph 28, 
29 or 33 
(1) Where an application for registration is made i n accordance with paragraph 28, 29 or 
33 of Schedule 2B, the application for registration  under rule 5 must specify— 
(a) the number of the international registration to  which the application relates; 
(b) the date referred to in paragraph 28(2)(a), 29( 2)(a) or 33(2)(a) or (3)(a) of Schedule 
2B (as the case may be) in respect of that applicat ion; and 
(c) the date of priority (if any) accorded pursuant  to a right of priority claimed in 
respect of the existing ITM application the existin g request for EU extension or the 
cancelled international registration the subject of  a transformation application. 
(2) Where— 
(a) a right of priority has been claimed (“a priori ty claim”) in respect of the existing 
ITM application, an existing request for EU extensi on or the cancelled 
international registration the subject of a transfo rmation application; or 
(b) the seniority of a registered trade mark or a p rotected international trade mark 
(UK) has been claimed (“a seniority claim”) pursuan t to paragraph 30 or 33 of 
Schedule 2B, 
the application for registration under rule 5 must,  in addition, specify the information 
provided in paragraph (3). 
(3) The information is— 
(a) in relation to a priority claim, the informatio n specified in rule 6(1)(a) to (c); and 
(b) in relation to a seniority claim, the number of  the registered trade mark or 
protected international trade mark (UK) from which the trade mark the subject of 
the application claims seniority and the seniority date. 
(4) The registrar may, in any particular case, by n otice require the applicant to file, within 
such period of not less than one month as the notic e may specify, such documentary 
evidence as the registrar may require certifying, o r verifying to the satisfaction of the 
registrar— 
(a) the date referred to in paragraph (1)(b) in res pect of the existing ITM application, 
existing request for EU extension or transformation  application, the representation 
of the mark and the goods or services covered by th at application; and  64 (b) in relation to a priority claim, the date of fi ling of the overseas application, the 
country or registering or competent authority, the representation of the mark and 
the goods or services covered by the overseas appli cation.” 
6.  In rule 14, after paragraph (3) insert— 
“(3A) References in paragraph (2) to the proprietor  of a trade mark also include a person 
who has applied for registration of a trade mark wh ich, if registered, would be an earlier 
trade mark by virtue of section 6(1)(ab).”. 
7.  Before rule 30 insert— 
“29B Filing of regulations for International collect ive and certification marks; 
Schedule 2B, paragraph 4 
Regulations governing the use of a comparable trade  mark (IR) which is a collective mark 
or a certification mark and any translation require d to be filed under paragraph 4 of 
Schedule 2B must be filed within a period of three months following the date of notice from 
the registrar.” 
8. —(1) Rule 47 is amended as follows. 
(2)  After paragraph (a) insert— 
“(aa) in the case of a comparable trade mark (IR), the date of registration as 
determined in accordance with paragraph 1 of Schedu le 2B”. 
(3)  After paragraph (b) insert— 
“(bb) in the case of a comparable trade mark (IR), the date of completion of the 
registration procedure which is the date of publica tion by the European Union 
Intellectual Property Office of the matters referre d to in Article 190(2) of the 
European Union Trade Mark Regulation in respect of the existing IR(EU) from 
which the comparable trade mark (IR) derives”. 
(4)  Before paragraph (d) insert— 
“(cc) in the case of a comparable trade mark (IR)— 
 (i) the priority date (if any) accorded pursuant t o a claim of priority filed in 
respect of the corresponding (IR) pursuant to Artic le 4 of the Paris 
Convention; and 
 (ii) the number of the registered trade mark or in ternational trade mark (UK) from 
which the corresponding (IR) claimed seniority (if any) and the seniority date; 
(cd) where the mark is registered pursuant to an ap plication referred to in paragraph 28, 
29 or 33 of Schedule 2B— 
 (i) the priority date (if any) accorded pursuant t o a claim to a right to priority 
made under paragraph 28(2)(b) (taking account of pa ragraph 28(5)), 29(2)(b) 
(taking account of paragraph 29(4)) or 33(2)(b) or (3)(b) (taking account of 
paragraph 33(4)) of Schedule 2B; and 
 (ii) the number of the registered trade mark or in ternational trade mark (UK) from 
which the application claims seniority (if any) and  the seniority date;”. 
(5)  After paragraph (n) insert— 
“(o) in the case of a comparable trade mark (IR) an  indication that it is derived from an 
existing IR(EU), including the number of the intern ational registration to which the 
existing IR(EU) is subject.”. 
  65  SCHEDULE 8 Regulation 10(1) 
Other amendments to legislation 
PART 1 
Further amendments to the 1949 Act 
1.  The 1949 Act is further amended as follows. 
2.  In section 1B( a) (requirement of novelty and individual character) , in subsection (6)(a), for 
“the European Economic Area”, substitute “the geogr aphical area comprising the United Kingdom 
and the European Economic Area”. 
3.  In section 11ZA( b) (grounds for invalidity of registration), in subs ection (1A)(b) omit sub- 
paragraphs (i) and (ii) and insert “by virtue of re gistration under this Act or an application for suc h 
registration.” 
4.  In section 11ZB( c) (applications for declaration of invalidity), in subsection (4)— 
(a)  omit “or the Community Design Regulation”; 
(b)  omit “, the holder of the registered Community desi gn”. 
5.  In section 20( d) (rectification of register), in subsection (1B)— 
(a)  omit “or the Community Design Regulation”; 
(b)  omit “, the holder of the registered Community desi gn”. 
6.  In section 24D( e) (order as to disposal of infringing articles etc) , in subsection (5)— 
(a)  in paragraph (b) at the end of the paragraph (after  the semi-colon in that paragraph) insert 
“or”; 
(b)  at the end of paragraph (c) omit “or”; 
(c)  omit paragraph (d). 
7.  In section 24G( f) (meaning of “infringing article”), omit subsectio n (5). 
8.  After section 25( g) (certificate of contested validity of registratio n), insert— 
“25A Privilege for communications with those on the special list of professional 
designs representatives 
(1) This section applies to communications as to an y matter relating to the protection of a 
design as a registered design. 
(2) Any such communication— 
(a) between a person and a professional designs rep resentative; or 
                                                                                                                                            
(a) Section 1B was inserted by S.I. 2001/3949, regula tion 2. 
(b) Section 11ZA was inserted by S.I. 2001/3949, regu lation 7 and amended by S.I 2006/1974, article 7(2) , S.I. 2007/3378, 
regulation 2. 
(c) Section 11ZB was inserted by S.I. 2001/3949, regu lation 7 and amended by S.I. 2003/550, regulation 2 (3)(a) and (b), S.I. 
2006/1974, article 8(2), (3), (4) and (5). 
(d) Section 20 was amended by the Copyright, Designs and Patents Act 1988 (c.48), section 272, Schedule 3, paragraph 11, S.I. 
2001/3949, regulation 8(2), (3), (4), S.I. 2003/550 , regulation 2(4)(a) and (b) and S.I. 2006/1974, ar ticle 10(2) and (3). 
(e) Section 24D was inserted by S.I. 2006/1028, Sched ule 1, paragraph 3. 
(f) Section 24G was inserted by S.I. 2006/1028, Sched ule 1, paragraph 3 and amended by S.I. 2011/1043, a rticle 6(1)(f). 
(g) Section 25 was amended by the Copyright, Designs and Patents Act 1988 (c.48), section 272, Schedule 3, paragraph 14, S.I. 
2001/3949, Schedule 1, paragraph 8(2) and (3).  66 (b) for the purposes of obtaining, or in response t o a request for, information which a 
person is seeking for the purpose of instructing a professional designs 
representative, 
is privileged from, or in Scotland protected agains t, disclosure in legal proceedings in the 
same way as a communication between a person and a solicitor or, as the case may be, a 
communication for the purpose of obtaining, or in r esponse to a request for, information 
which a person is seeking for the purpose of instru cting a solicitor. 
(3) In subsection (2) “professional designs represe ntative” means a person whose name 
appears on the special list of professional represe ntatives for design matters maintained by 
the European Union Intellectual Property Office ref erred to in Article 78(4) of Council 
Regulation (EC) 6/2002 of 12th December 2001 on Com munity designs as it has effect in 
EU law.”. 
9.  In section 35ZA( a) (offence of unauthorised copying etc of design in  course of business), 
omit subsection (7). 
10.  In section 44( b) (interpretation), in subsection (1), omit the def initions of “Community 
Design Regulation” and “registered Community design ”. 
PART 2 
Amendments to the Copyright, Designs and Patents Ac t 1988 
11.  The Copyright, Designs and Patents Act 1988( c) is amended as follows— 
(a)  in section 217( d) (qualifying persons and qualifying countries), in  subsection (3)— 
(i)  in paragraph (b), at the end insert “or”; 
(ii)  omit paragraph (c) together with “or” at the end; 
(b)  in section 220( e) (qualification by reference to first marketing), in subsection (1)(b)— 
(i)  after “Kingdom” insert “or”; 
(ii)  omit “or another member State of the European Econo mic Community”. 
PART 3 
Amendments to the Design Right (Proceedings before the Comptroller) Rules 1989 
12.  The Design Right (Proceedings before the Comptroll er) Rules 1989( f) are amended as 
follows. 
13.  In rule 22 (costs), in paragraph (2), omit “or ano ther member State of the European Union”. 
14.  In rule 23 (service and translation of documents),  in paragraph (1A), for “another”, substitute 
“an”. 
15.  In Schedule 1 (forms) for “another”, each time it appears before “EEA state”, substitute 
“an”. 
                                                                                                                                            
(a) Section 35ZA was inserted by the Intellectual Pro perty Act 2014 (c.18), section 13. 
(b) Section 44 was amended by the Copyright, Designs and Patents Act 1988 (c.48), section 272, Schedule 3, paragraph 31(3), 
(4), (6), (7), (8), (9) and (10), S.I. 2001/3949, S chedule 2, paragraph 1, 14(2), (3) and (4), S.I. 20 03/550, regulation 2(5), S.I. 
2006/1229, article 3 and the Intellectual Property Act 2014 (c.18), section 10(6). 
(c) 1988 c.48. 
(d) Section 217 was amended by the Intellectual Prope rty Act 2014 (c.18), section 3(1)(a), (b) and (2). 
(e) Section 220 was amended by S.I. 2011/1043, articl e 4(1), Intellectual Property Act 2014 (c.18), sect ion 2(2)(g) and 3(4)(a), 
(b), (c) and (d). 
(f) S.I. 1989/1130 as amended by S.I. 2006/546 and S. I. 2011/1043; there are other amending instruments but none are 
relevant.  67 PART 4 
Further amendments to the 1994 Act 
16.  The 1994 Act is further amended as follows. 
17. —(1) Section 6( a) is amended as follows. 
(2)  Before subsection (1)(b) insert— 
“(ab) a comparable trade mark (IR) or a trade mark registered pursuant to an 
application made under paragraph 28, 29 or 33 of Sc hedule 2B which has a valid 
claim to seniority of an earlier registered trade m ark or protected international 
trade mark (UK) even where the earlier trade mark h as been surrendered or its 
registration has expired;”. 
(3)  At the end of subsection (2) insert “(taking accoun t of subsection (2C))”. 
(4)  Before subsection (3) insert— 
“(2B) References in this Act to an earlier trade ma rk include a trade mark in respect of 
which an application for registration has been made  pursuant to paragraph 28, 29 or 33 of 
Schedule 2B and which if registered would be an ear lier trade mark by virtue of subsection 
(1)(ab), subject to its being so registered. 
(2C) Where an application for registration of a tra de mark has been made pursuant to 
paragraph 25 of Schedule 2A or paragraph 28, 29 or 33 of Schedule 2B, subsection (l)(a) is 
to apply as if the date of application for registra tion of the trade mark were— 
(a) in the case of an application made pursuant to paragraph 25 of Schedule 2A, the 
relevant date referred to in paragraph 25(2) in res pect of that application; 
(b) in the case of an application made pursuant to paragraph 28 of Schedule 2B, the 
relevant date referred to in paragraph 28(2) in res pect of that application (taking 
account of paragraph 28(5)); 
(c) in the case of an application made pursuant to paragraph 29 of Schedule 2B, the 
relevant date referred to in paragraph 29(2) in res pect of that application (taking 
account of paragraph 29(4)); 
(d) in the case of an application made pursuant to paragraph 33 of Schedule 2B, the 
relevant date referred to in paragraph 33(2) or (3)  (as the case may be) in respect of 
that application (taking account of paragraph 33(4) ).” 
18.  In section 53( b) omit ““international trade mark (EC)” means a tra de mark which is entitled 
to protection in the European Union under that Prot ocol;”. 
19. —(1) Section 104 is amended as follows. 
(2)  Before the entry in the table for “Convention count ry” insert— 
 
“comparable trade mark (IR) Schedule 2B, paragraph 
1(4)” 
(3)  Before the entry in the table for “date of filing” insert— 
 
“date of application (comparable trade mark (IR)) S chedule 2B, paragraph 
1(10)(b)” 
(4)  Before the entry in the table for “date of registra tion” insert— 
 
“date of filing (comparable trade mark (IR)) Schedu le 2B, paragraph 
                                                                                                                                            
(a) Section 6 was amended by S.I. 1999/1899, regulati on 13(1), S.I. 2004/2332, regulations 2 and 4, S.I.  2016/299, the 
Schedule, paragraph 1 and S.I. 2018/825, regulation  7. 
(b) Section 53 was amended by S.I. 2004/2332, regulat ion 5 and S.I. 2011/1043, article 4(1).  68 1(10)(a)” 
(5)  Before the entry in the table for “defendant (in Sc otland)” insert— 
 
“date of registration (comparable trade mark (IR)) Schedule 2B, paragraph 
1(6)” 
(6)  Omit the entry in the table for— 
 
“international trade mark (EC) Section 53” 
 
 
 
 
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) Ac t 2018 (c.16) (“the EUWA”) in order 
to address failures of retained EU law to operate e ffectively and other deficiencies; and 
• paragraph 1 of Schedule 4 of the EUWA (in relation  to the charging of fees or other 
charges by the registrar in connection with the exe rcise of functions conferred on the 
registrar in relation to certain designs and trade marks by virtue of provision made under 
section 8(1)). 
Regulation 3 and Schedule 1 make amendments to Coun cil Regulation (EC) No 6/2002 of 12 th  
December 2001 on Community Designs (as amended) (th e “EU Design Regulation”) and the 
Community Designs Regulations 2005 (the “2005 Regul ations”). The main effect of these 
amendments is to— 
• revoke provisions of this legislation so far as th ey relate to registered designs; 
• prospectively rename unregistered Community design s coming into force on or after exit 
day as “supplementary unregistered designs”; 
• provide that supplementary unregistered designs ar e protected where they are disclosed in 
the United Kingdom or countries or territories that  are designated by statutory instrument 
under powers inserted into the EU Design Regulation . 
Regulation 4 and Schedule 2 make provision in conne ction with the continued protection of an 
unregistered Community design which is protected be fore exit day. The amendments made by 
regulation 3 and Schedule 1 do not apply to such un registered designs. Instead the EU Design 
Regulation and the 2005 Regulations continue to app ly to such designs subject to the 
modifications set out in Schedule 1. 
Regulation 5(a) and Schedule 3 make provision for t he protection under the Registered Designs 
Act 1949 (the “1949 Act”) of a design which is at e xit day the subject of a registration at the 
European Union Intellectual Property Office (“EUIPO ”) under the EU Design Regulation (or 
where such registration has expired within 6 months  of exit day). Provision is also made allowing 
makers of applications to the EUIPO which are pendi ng at exit day to apply for protection under 
the 1949 Act treating applications under the 1949 A ct as having the same filing date and rights of 
priority as the application to the EUIPO. 
Regulation 5(b) and Schedule 3 make further provisi on for the protection of a design which at exit 
day is protected in the European Union under the Ge neva Act of the Hague Agreement by virtue 
of an international registration which designates t he European Union (or where such registration 
has expired within 6 months of exit day). Provision  is also made allowing the holders at exit day 
of international registrations which have not yet a chieved protected status to make applications for 
registration under the 1949 Act which are treated a s having a filing date of the date of the 
international registration and the same rights of p riority.  69 Regulation 6 and Schedule 4 make provision for the registration of a trade mark which at exit day 
is protected in the European Union under the Madrid  Protocol by virtue of an international 
registration which designates the European Union (o r where such registration has expired within 6 
months of exit day). Provision is also made allowin g the holders at exit day of international 
registrations which have not yet achieved protected  status to make applications for registration 
under the Trade Marks Act 1994 which are treated as  having a filing date of the date of the 
international registration and the same rights of p riority. Similar provisions are made in relation to  
transformation applications which are pending on ex it day.  
Regulation 7 and Schedule 5 make provision for the payment of renewal and other fees in relation 
to designs re-registered under the 1949 Act and tra de marks re-registered under the 1994 Act in 
consequence of provision made by these Regulations.  
Regulation 8 and Schedule 6 make amendments to the Registered Design Rules 2006 in 
consequence of other provision made by these Regula tions. 
Regulation 9 and Schedule 7 make amendments to the Trade Mark Rules 2008 in consequence of 
other provision made by these Regulations. 
Regulation 10 and Schedule 8 make a number of amend ments to other legislation in consequence 
of other provision made in the Regulations. 
Regulation 11 revokes the Community Designs (Design ation of Community Design Courts) 2005 
Regulations. 
An impact assessment has not been published for thi s instrument as no, or no significant, impact 
on the private, public and voluntary sectors is for eseen. An explanatory memorandum is available 
alongside this instrument on the Legislation UK web site at www.legislation.gov.uk. 
  
  
© Crown copyright 2019 
Printed and published in the UK by The Stationery O ffice Limited under the authority and superintenden ce of Jeff James, 
Controller of Her Majesty’s Stationery Office and Q ueen’s Printer of Acts of Parliament.       
UK201903201004   03/2019   19585 
http://www.legislation.gov.uk/id/uksi/2019/638