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The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019

Type Statutory-Instrument

Publication 2019-03-18

Last updated 2021-11-26

State In force

Department King's Printer of Acts of Parliament

Source legislation.gov.uk

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Made: 18th March 2019

Coming into force into force in accordance with regulation 1

The Secretary of State in exercise of powers conferred by section 8(1) of, paragraph 1 of Schedule 4 to, and paragraph 21(b) of Schedule 7 to, the European Union (Withdrawal) Act 2018 and by section 36 of the Registered Designs Act 1949 and by section 78 of the Trade Marks Act 1994 and with the consent of the Treasury makes the following Regulations.

A draft of these Regulations has been approved by resolutions of both Houses of Parliament pursuant to paragraph 1(1) of Schedule 7 to the European 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 force 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 Regulations 2005 ;

“continuing unregistered Community design” has the meaning given by regulation 4(2);

“Design Regulation” means Council Regulation (EC) No 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 European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs and by the Decision of the European Union of 5th December 2011 on the admission of the Republic of Croatia to the European Union;

“Registered Designs Rules” means the Registered Designs Rules 2006 ; and

“Trade Marks Rules” means the Trade Marks Rules 2008 .

Amendments to the Design Regulation and the 2005 Regulations relating to the creation and application of the supplementary unregistered design 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 Schedule 1 to apply them to the supplementary unregistered design.

Unregistered Community designs existing immediately before IP completion day

4

(1) The amendments to the Design Regulation and the 2005 Regulations made by regulation 3 do not apply to an unregistered Community design which is protected under the Design Regulation immediately prior to IP completion day and remains protected on IP completion day.

(2) That design is referred to as a “continuing unregistered Community design”.

(3) The Design Regulation and the 2005 Regulations apply 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 international 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 treated as registered under the 1949 Act from IP completion day and about certain applications for registered Community designs made before IP completion day; and

(b) for certain international registered designs designating the European Union to be treated as registered under the 1949 Act from IP completion day and about certain applications for international designs designating the European Union made before IP completion 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 treated as registered trade marks under the 1994 Act from IP completion day and about certain applications for the protection of an international trade mark in the European Union and transformation applications made before IP completion day.

Fees payable in respect of re-registered designs, international 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);

(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 defined 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 Registered 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) Subject to regulation 10A, any application or proceeding under the 1994 Act which 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 Design Courts) Regulations 2005 are revoked.

SCHEDULE 1 — Amendments to the Design Regulation and 2005 Regulations relating to the creation and application of the supplementary unregistered design right etc.

PART 1 — Design Regulation and supplementary unregistered designs

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 Article of the Design Regulation.

Substitution of Article 1 – supplementary unregistered designs

2

For Article 1, substitute—

(1) A design which complies with the conditions contained in this Regulation is referred to as a “supplementary unregistered design”. (2) A design shall be protected as a supplementary unregistered 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 public before IP completion 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 protection)

5

In Article 4(1), for “Community”, substitute “ supplementary 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).

Amendments 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—

(1) Subject to paragraph 4, for the purposes of applying Articles 5 and 6, a supplementary unregistered design shall be deemed to have been made available to the public where paragraph 2 or 3 applies. (2) This paragraph applies where before IP completion day, the design was published 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 operating within the European Union. (3) This paragraph applies where on or after IP completion day but before the date mentioned in Articles 5(1)(a) or 6(1)(a), the design was published 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 operating within the United Kingdom, a qualifying country or a qualifying territory. (4) A design shall not, however, be deemed to have been 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 “qualifying country” is a country designated as such, and a “qualifying territory” is a territory designated 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 each 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;

(iii) for “Community”, in the second place it appears, substitute “ 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 Community design: commencement, term of protection and renewal)

11

Omit Articles 12 and 13.

Amendment to the heading of section 3 of Title 2 (right to the Community design)

12

In the heading of section 3 of Title 2, for “Community”, substitute “ supplementary unregistered ”.

Amendments to Article 14 (right to the Community design)

13

In Article 14—

(a) for “Community”, in each place it appears, including in the heading, substitute “ supplementary unregistered ”;

(b) in point 3, omit “or specified under national law”.

Amendments to Article 15 (claims relating to the entitlement to a Community design)

14

In Article 15—

(a) in the heading, for “Community”, substitute “ supplementary 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 ”;

(d) in point 3—

(i) omit “the date of publication of a registered Community 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 judgment on entitlement, presumption, right to be cited)

15

Omit Articles 16 to 18.

Amendment to the heading of section 4 of Title 2 (effects of the Community design)

16

In the heading of section 4 of Title 2, for “Community”, substitute “ supplementary unregistered ”.

Amendments to Article 19 (rights conferred by the Community design)

17

In Article 19—

(a) in the heading, for “Community”, substitute “ supplementary unregistered ”;

(b) in paragraph 1, for “registered Community”, substitute “ supplementary unregistered ”;

(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”, substitute “ supplementary unregistered ”;

(b) in point 2—

(i) in the words before point (a), for “Community”, substitute “ 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 place it appears, substitute “ supplementary unregistered ”;

(b) for “Community”, in the third place it appears, substitute “United Kingdom or the European Economic Area”.

Omission of Articles 22 and 23 (prior use and government 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, substitute “ supplementary unregistered ”;

(ii) for “the Community design”, substitute “ it ”;

(iii) omit “or has been surrendered”;

(i) for “Community”, in the first place it appears, substitute “ 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—

(i) in the words before subparagraph (a), for “Community”, 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 “ supplementary unregistered ”;

(i) omit “(d),”;

(ii) omit “the applicant for or”;

(d) omit points 5 and 6.

Amendments to Article 26 (consequences of invalidity)

23

In Article 26—

(a) in point 1, for “Community”, substitute “ supplementary unregistered ”;

(b) in point 2—

(i) omit “the national provisions relating either to”;

(ii) for “Community”, in both places it appears, substitute “ 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”, substitute “ Supplementary Unregistered ”.

Amendments to Article 27: supplementary unregistered 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 unregistered design is personal property (in Scotland, incorporeal moveable property) which subsists 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, substitute “ supplementary unregistered ”;

(ii) omit “for the whole or part of the Community”;

(b) in points 2 to 4, for “Community”, in each place it appears, substitute “ supplementary unregistered ”;

Omission of Articles 33 to 78 (general provisions)

28

Omit Articles 33 to 78.

Amendment to the heading of Title 9 (jurisdiction and procedure in legal actions relating to Community designs)

29

In the heading of Title 9, for “Community”, substitute “ Supplementary Unregistered ”.

Omission of Article 79 (application of the Convention on jurisdiction and enforcement)

30

Omit Article 79.

Amendment to the heading of section 2 (disputes concerning infringement and validity of designs) of Title 9

31

In the heading of section 2 of Title 9, for “Community”, substitute “ supplementary unregistered ”.

Omission of Article 80 (Community design courts)

32

Omit Article 80.

Substitution of Article 81 (The “design court” – jurisdiction over infringement and validity)

33

For Article 81, substitute—

(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 High 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 invalidity of ... a supplementary unregistered design raised in connection with actions under (a).

Omission of Articles 82 and 83: jurisdiction

34

Omit Articles 82 and 83.

Amendments to Article 84 (action or counterclaim for 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)”;

(i) for “Community”, substitute “ supplementary unregistered ”;

(ii) for “conditions” to “situated”, substitute “ laws applying to the design courts ”;

(d) in point 4, for “Community”, substitute “ supplementary 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, substitute “ 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, substitute “ supplementary unregistered ”;

(ii) in point (a), for “the Community”, substitute “ that ”;

(iii) in point (d), omit from “the law” to “international”;

(b) omit point 2.

Amendments to Article 90 (provisional measures, including 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, substitute “ supplementary unregistered ”;

(iv) omit from “under” to the end of the sentence;

(b) in point 2, for “Community”, substitute “ supplementary unregistered ”;

(i) omit “Community”;

(ii) omit from “whose” to “(4)”;

(iii) omit from “, which” to “jurisdiction”.

41

Omit Articles 91 and 92.

Amendment to the heading of section 3 (other disputes concerning Community designs) of Title 9

42

In the heading of section 3 of Title 9, for “Community”, substitute “ supplementary unregistered ”.

Omission of Articles 93 (supplementary provisions on the jurisdiction of national courts)

43

Omit Article 93.

Amendments to Article 94 (obligation of the national court)

44

In Article 94—

(a) for “national”, substitute “ design ”, in the heading and the other place it appears;

(b) for “Community”, substitute “ supplementary unregistered ”.

Omission of Title 10 (effects on the laws of the Member States)

45

Omit Title 10.

Omission of Title 11 (supplementary provisions regarding the Office)

46

Omit Title 11.

Omission of Title 11A (international registration)

47

Omit Title 11A.

Omission of Articles 107 to 109 (implementing regulation, procedure of Boards of Appeal and Committee)

48

Omit Articles 107 to 109.

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 unregistered ”;

(b) omit point 2.

Omission of Article 110a (provisions relating to the 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 binding 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) No 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 (Amendment 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 it appears;

(b) in paragraph (2)—

(i) for “paragraphs (3) to”, substitute “ paragraph ”;

(ii) for “Community”, in both places where it appears, substitute “ supplementary unregistered ”;

(d) in paragraph (5)—

(i) for “an”, in both places where it appears before “unregistered”, 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 where it appears, substitute “ supplementary unregistered ”;

(ii) omit “Community”, in the third place where it appears;

(iii) before “court”, in the second place where it appears, insert “ design ”;

(b) in paragraph (2), before “court”, in both places where it appears, insert “ design ”;

(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 “Community”;

(ii) in sub-paragraph (a), for “Community”, substitute “ supplementary unregistered ”;

(iii) in sub-paragraph (b), before “court”, insert “ design ”;

(b) in paragraph (2)—

(i) before “court”, insert “ design ”;

(ii) for “Community”, substitute “ supplementary unregistered ”;

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 enforceable” 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 ”.

Regulation 2: unjustified threats: threats of infringement proceedings

59

In regulation 2(1), for “Community”, in both places where it appears, substitute “ supplementary unregistered ”.

Regulation 2B: unjustified threats: permitted communications

60

In regulation 2B—

(a) in paragraph (2), for “Community”, in each place where it appears, substitute “ supplementary unregistered ”;

(b) in paragraph (3), before “court”, insert “ design ”;

(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 places where it appears, substitute “ supplementary unregistered ”.

Regulation 2C, 2E and 2F: unjustified threats: general

61

(1) In regulation 2C(2), for “Community”, substitute “ supplementary unregistered ”.

(2) Omit regulation 2E.

(3) In regulation 2F, for “Community”, substitute “ supplementary 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 where it appears, substitute “ a supplementary unregistered ”;

(b) for paragraph (3), substitute—

(3) In paragraph (2) “professional designs representative” means a person whose name appears on the special list of professional representatives for design matters maintained by the European Union Intellectual Property Office referred to in Article 78(4) of Council Regulation (EC) 6/2002 of 12th December 2001 on Community designs as it had effect immediately before IP completion day.

Regulation 5 and the Schedule: services of the Crown

64

(1) In regulation 5—

(a) in the heading, for “Community”, substitute “ supplementary unregistered ”;

(b) omit “registered Community designs and”;

(d) omit “Community”, in the second place where it appears.

(2) In the Schedule—

(a) for “Community”, in each place where it appears, substitute “ supplementary unregistered ”;

(b) before “court”, in each place where it appears, insert “ design ”;

SCHEDULE 2 — Continuing unregistered Community designs

PART 1 — Design Regulation and continuing unregistered Community 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 Article 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 “ Continuing unregistered ”;

(b) in point 1, before “Community” and within the inverted commas, insert “ continuing unregistered ”;

(i) for “an”, substitute “ a ”;

(ii) before “unregistered” and within the inverted commas, 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”, insert “ (ab) “European Union” means the countries that were part of the European Union immediately before IP completion day; ”.

Article 4: requirements for protection

6

In Article 4(1), before “Community”, insert “ continuing 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 design,”;

(ii) for “an”, substitute “ a continuing ”;

Article 6: individual character

8

In Article 6(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 design,”;

(ii) for “an”, substitute “ a continuing ”;

Article 7: disclosure

9

In Article 7—

(a) in point 1—

(i) after “a”, in the first place where it appears, insert “ continuing unregistered Community ”;

(ii) omit “following registration or otherwise,”;

(iii) omit “or in Articles 5(1)(b) and 6(1)(b), as the case 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, interconnections, 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 appears, substitute “ European Union ”;

(b) in point 2, for “Community”, in both places in which it appears, substitute “ European Union ”.

Articles 12 and 13: registered Community design: commencement, 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 “ continuing unregistered ”;

(b) in point 1—

(i) for “an”, substitute “ a continuing ”;

(ii) omit “, or a registered Community design has been applied for or registered in the name of,”;

(iii) for “the Community”, substitute “ that ”;

(d) in point 3—

(i) omit “the date of publication of a registered Community 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 entitlement, presumptions, right to be cited

15

Omit Articles 16 to 18.

Article 19: rights conferred by the Community design

16

In Article 19—

(a) in the heading, before “Community”, insert “ continuing unregistered ”;

(b) in point 1, for “registered”, substitute “ continuing unregistered ”;

(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 appears, 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 ”;

(ii) omit “or has been surrendered”;

(i) before “Community”, in the first place where it appears, insert “ continuing unregistered ”;

(ii) omit “Community”, in the second place where it appears.

Article 25: grounds for invalidity

21

In Article 25—

(a) in point 1—

(i) in the words before subparagraph (a), before “Community”, 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 ”;

(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 design rights

23

In Article 27—

(a) for the heading, substitute “ Property right ”;

(b) for points 1 to 4, substitute “ A continuing unregistered Community design right is personal property (in Scotland, incorporeal moveable property) which subsists in accordance with this Regulation. ”.

Articles 28 to 31: transfer, rights in rem, levy and insolvency

24

Omit Articles 28 to 31.

Article 32: licensing

25

In Article 32—

(a) in point 1—

(i) before “Community” in the first place where it appears, insert “ continuing unregistered ”;

(ii) omit “for the whole or part of the Community”;

(b) in points 2 to 4, before “Community”, in every place where it appears, insert “ continuing unregistered ”;

Articles 33 to 78: general provisions

26

Omit Articles 33 to 78.

Article 79: Application of the Convention on jurisdiction 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—

(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 High Court. (2) The design court has exclusive jurisdiction— (a) for infringement actions and actions in respect of threatened infringement of continuing unregistered Community designs; (b) for actions for declaration of non-infringement of continuing unregistered Community designs; (c) for actions for a declaration of invalidity of a continuing unregistered Community design; (d) for counterclaims for a declaration of invalidity of a continuing ... unregistered Community design raised in connection with actions under (a).

Articles 82 and 83

30

For Articles 82 to 83 substitute—

(1) This paragraph applies where on IP completion day a continuing unregistered Community design is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 80 of the Design Regulation as it had effect immediately before IP completion day. (2) Subject to sub-paragraphs (3) and (4), the provisions 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 IP completion day. (3) Where the pending proceedings involve a claim for infringement or for threatened infringement of a continuing unregistered Community design, without prejudice to any other relief by way of damages, accounts or otherwise 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 are treated as pending on IP completion day if they were instituted but not finally determined before IP completion day. (1) This paragraph applies where immediately before IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe a continuing unregistered Community design (a “relevant injunction”). (2) Subject to any order of the court to the contrary, a relevant injunction will continue to have effect and be enforceable to prohibit the performance of acts which infringe or would infringe the right in a continuing unregistered Community design to the same extent as before IP completion day.

Article 84: action or counterclaim for a declaration 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)”;

(i) before “Community”, insert “ continuing unregistered ”;

(ii) for “conditions” to “situated”, substitute “ laws applying 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, substitute “ a continuing unregistered ”;

(ii) omit “Community”, in the second place where it appears;

(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;

(bb) before “Community”, in the second place it appears, insert “ continuing unregistered ”;

(b) in points (a) and (b), for “Community”, in each place where it appears, substitute “ that ”;

Articles 87 and 88: sanctions in actions for infringement

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 protective 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 sentence;

(b) in point 2, before “Community”, insert “ continuing unregistered ”;

(i) omit “Community”;

(ii) omit from “whose” to “(4)”;

(iii) omit from “, which” to “jurisdiction”.

37

Omit Articles 91 and 92.

Article 93: supplementary provisions on the jurisdiction 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 it appears, substitute “ design ”;

(b) after “a”, the second times it appears, substitute “ continuing unregistered Community ”.

Title 10

40

Omit Title 10.

Title 11: supplementary provisions concerning the Office

41

Omit Title 11.

Title 11A: international registration

42

Omit Title 11A.

Articles 107 to 109: implementing regulation, procedure 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 enlargement 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, insert “ continuing unregistered ”;

(iii) omit “or applied for”;

(iv) for “Member States”, the second time it appears, substitute “ specified countries ”;

(v) omit from “in order” to the end of the sentence;

(b) omit point 2;

(i) before “Community”, insert “ continuing unregistered ”;

(ii) for “a new Member State”, substitute “ one or more specified countries ”;

(d) in point 4—

(i) omit “the applicant or”;

(ii) for “a new Member State”, substitute “ one or more specified 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, substitute “ European Union ”;

(iii) for “an”, substitute “ a continuing ”.

Article 111: entry into force

46

Omit paragraphs 2 and 3.

Text after Title 12

47

After Title 12, omit “This Regulation shall be binding it its entirety and directly applicable in all Member States.”.

PART 2 — 2005 Regulations and continuing unregistered Community designs

48

The 2005 Regulations apply to continuing unregistered 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) No 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 (Amendment 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 where 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 ”;

(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 appears;

(iii) before “court”, in the second place where it appears, insert “ design ”;

(b) in paragraph (2), before “court”, in both places where it appears, insert “ design ”;

(d) in paragraph (8), before “court”, insert “ design ”.

Regulation 1C: order for disposal

52

In regulation 1C—

(a) in paragraph (1)—

(i) in the words before paragraph (a), omit “Community”;

(ii) in paragraph (a), before “Community”, insert “ continuing unregistered ”;

(iii) in sub-paragraph (b), before “court”, insert “ design ”;

(b) in paragraph (2)—

(i) before “court, insert “ design ”;

(ii) before “Community”, insert “ continuing unregistered ”;

Regulation 1D: meaning of “infringing article”

53

In regulation 1D—

(a) in paragraph (2), before “Community”, insert “ continuing unregistered ”;

(b) in paragraph (3)(b)—

(i) before “Community”, in the first place where it appears, insert “ continuing unregistered ”;

(ii) omit “Community”, in the second place where it appears;

(d) in paragraph (5), for “an enforceable” to the end of the sentence, insert “ anything which forms part of retained EU law as a result of section 3 or 4 of the European Union (Withdrawal) Act 2018 . ”.

Regulation 2: unjustified threats: threats of infringement proceedings

54

In regulation 2(1), before “Community”, in both places where it appears, insert “ continuing unregistered ”.

Regulation 2B: unjustified threats: permitted communications

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 ”;

(i) omit sub-paragraphs (a)(i) and (ii);

(ii) in sub-paragraph (b), before “Community”, in both places where it appears, insert “ continuing unregistered ”.

Regulation 2C, 2E and 2F: unjustified threats: general

56

(1) In regulation 2C(2), before “Community”, insert “ continuing unregistered ”.

(2) Omit regulation 2E.

(3) In regulation 2F, before “Community”, insert “ continuing unregistered ”.

Regulation 3: false representation

57

Omit regulation 3.

Regulation 4: privileged communications

58

In regulation 4—

(a) in paragraph (1), for “any”, in the second place where it appears, substitute “ a continuing unregistered Community ”;

(b) for paragraph (3), substitute—

(3) In paragraph (2) “professional designs representative” means a person whose name appears on— (a) the special list of professional representatives for design matters maintained by the European Union Intellectual Property Office referred to in Article 78(4) of Council Regulation (EC) 6/2002 of 12th December 2001 on Community designs as it had effect immediately before IP completion day.

Regulation 5 and the Schedule: services of the Crown

59

(1) In regulation 5—

(a) in the heading, before “Community”, insert “ continuing 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, insert “ design ”;

SCHEDULE 3 — Amendments to the 1949 Act to make provision for certain registered Community designs and International designs to be treated as registered under the 1949 Act from IP completion day and about certain applications for registered Community designs made before IP completion day

1

The 1949 Act is amended as follows.

2

Before section 13, insert—

(12A) Schedule 1A makes provision— (a) for registered Community designs (including certain designs whose registration has expired or which have been removed from the register) to be treated as registered under this Act with effect from IP completion day, and (b) about certain applications for registered Community designs made before IP completion day. (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 (including certain designs whose registration has expired) to be treated as registered under this Act with effect from IP completion day, and (b) about certain applications made before IP completion 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 European Union is designated.

3

After Schedule 1, insert—

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