SCHEDULES

Section 49.

SCHEDULE 1U.K. Collective marks

GeneralU.K.

1U.K.The provisions of this Act apply to collective marks subject to the following provisions.

Signs of which a collective mark may consistU.K.

2U.K.In relation to a collective mark the reference in section 1(1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

Indication of geographical originU.K.

3(1)Notwithstanding section 3(1)(c), a collective mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.U.K.

(2)However, the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).

Mark not to be misleading as to character or significanceU.K.

4(1)A collective mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a collective mark.U.K.

(2)The registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a collective mark.

Notwithstanding section 39(2), an application may be amended so as to comply with any such requirement.

Regulations governing use of collective markU.K.

5(1)An applicant for registration of a collective mark must file with the registrar regulations governing the use of the mark.U.K.

(2)The regulations must specify the persons authorised to use the mark, the conditions of membership of the association and F1... the conditions of use of the mark, including any sanctions against misuse.

[F2(3)Where the regulations govern use of a mark referred to in paragraph 3(1), they must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark, provided that the person fulfils all the other conditions of the regulations.]

[F3(4)] Further requirements with which the regulations have to comply may be imposed by rules.

Approval of regulations by registrarU.K.

6(1)A collective mark shall not be registered unless the regulations governing the use of the mark—U.K.

(a)comply with paragraph 5(2) [F4and (3)] and any further requirements imposed by rules, and

(b)are not contrary to public policy or to accepted principles of morality.

(2)Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant must file the regulations with the registrar and pay the prescribed fee.

If he does not do so, the application shall be deemed to be withdrawn.

7(1)The registrar shall consider whether the requirements mentioned in paragraph 6(1) are met.U.K.

(2)If it appears to the registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to file amended regulations.

(3)If the applicant fails to satisfy the registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse the application.

(4)If it appears to the registrar that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 38 (publication, opposition proceedings and observations).

8U.K.The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1).

This is in addition to any other grounds on which the application may be opposed or observations made.

Regulations to be open to inspectionU.K.

9U.K.The regulations governing the use of a registered collective mark shall be open to public inspection in the same way as the register.

Amendment of regulationsU.K.

10(1)An amendment of the regulations governing the use of a registered collective mark is not effective unless and until the amended regulations are filed with the registrar and accepted by him.U.K.

(2)Before accepting any amended regulations the registrar may in any case where it appears to him expedient to do so cause them to be published.

(3)If he does so, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 6(1).

Infringement: rights of authorised usersU.K.

11U.K.The following provisions apply in relation to an authorised user of a registered collective mark as in relation to a licensee of a trade mark—

(a)section 10(5) (definition of infringement: unauthorised application of mark to certain material);

(b)section 19(2) (order as to disposal of infringing goods, material or articles: adequacy of other remedies);

(c)section 89 (prohibition of importation of infringing goods, material or articles: request to Commissioners of Customs and Excise).

12(1)The following provisions (which correspond to the provisions of section 30 (general provisions as to rights of licensees in case of infringement)) have effect as regards the rights of an authorised user in relation to infringement of a registered collective mark.U.K.

[F5(2)Subject to any agreement to the contrary between the authorised user and the proprietor, an authorised user may only bring proceedings for infringement of a registered collective mark with the consent of the proprietor.]

F6(3). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(4)[F7Where proceedings are brought by an authorised user for infringement of a registered collective mark (with the consent of the proprietor or pursuant to any agreement referred to in sub-paragraph (2))], the authorised user may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant.

This does not affect the granting of interlocutory relief on an application by an authorised user alone.

(5)A proprietor who is added as a defendant as mentioned in sub-paragraph (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.

(6)In infringement proceedings brought by the proprietor of a registered collective mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.

[F8(7)Where the proprietor of a registered collective mark brings infringement proceedings, an authorised user who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.]

Grounds for revocation of registrationU.K.

13U.K.Apart from the grounds of revocation provided for in section 46, the registration of a collective mark may be revoked on the ground—

(a)that the manner in which the mark has been used by the [F9persons authorised to use it] has caused it to become liable to mislead the public in the manner referred to in paragraph 4(1), or

(b)that the proprietor [F10has not taken reasonable steps to prevent the mark being used in a manner that is incompatible with the conditions of use laid down in] the regulations governing the use of the mark [F11(as amended from time to time)], or

(c)that an amendment of the regulations has been made so that the regulations—

(i)no longer comply with paragraph 5(2) [F12and (3)] and any further conditions imposed by rules, or

(ii)are contrary to public policy or to accepted principles of morality.

Grounds for invalidity of registrationU.K.

14U.K.Apart from the grounds of invalidity provided for in section 47, the registration of a collective mark [F13shall] be declared invalid on the ground that the mark was registered in breach of the provisions of [F14section 49(1A) (definition of who may be registered as the proprietor of a certification mark) or] paragraph 4(1) or 6(1) [F15unless the breach was only of paragraph 6(1) and the proprietor of the mark, by amending the regulations governing use, complies with the requirements of paragraph 6(1)].

Section 50.

SCHEDULE 2U.K. Certification marks

GeneralU.K.

1U.K.The provisions of this Act apply to certification marks subject to the following provisions.

Signs of which a certification mark may consistU.K.

2U.K.In relation to a certification mark the reference in section 1(1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services which are certified from those which are not.

Indication of geographical originU.K.

3(1)Notwithstanding section 3(1)(c), a certification mark may be registered which consists of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services.U.K.

(2)However, the proprietor of such a mark is not entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, by a person who is entitled to use a geographical name).

Nature of proprietor’s businessU.K.

4U.K.A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified.

Mark not to be misleading as to character or significanceU.K.

5(1)A certification mark shall not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a certification mark.U.K.

(2)The registrar may accordingly require that a mark in respect of which application is made for registration include some indication that it is a certification mark.

Notwithstanding section 39(2), an application may be amended so as to comply with any such requirement.

Regulations governing use of certification markU.K.

6(1)An applicant for registration of a certification mark must file with the registrar regulations governing the use of the mark.U.K.

(2)The regulations must indicate who is authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes.

Further requirements with which the regulations have to comply may be imposed by rules.

Approval of regulations, &c.U.K.

7(1)A certification mark shall not be registered unless—U.K.

(a)the regulations governing the use of the mark—

(i)comply with paragraph 6(2) and any further requirements imposed by rules, and

(ii)are not contrary to public policy or to accepted principles of morality, and

(b)the applicant is competent to certify the goods or services for which the mark is to be registered.

(2)Before the end of the prescribed period after the date of the application for registration of a certification mark, the applicant must file the regulations with the registrar and pay the prescribed fee.

If he does not do so, the application shall be deemed to be withdrawn.

8(1)The registrar shall consider whether the requirements mentioned in paragraph 7(1) are met.U.K.

(2)If it appears to the registrar that those requirements are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to file amended regulations.

(3)If the applicant fails to satisfy the registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse the application.

(4)If it appears to the registrar that those requirements, and the other requirements for registration, are met, he shall accept the application and shall proceed in accordance with section 38 (publication, opposition proceedings and observations).

9U.K.The regulations shall be published and notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 7(1).

This is in addition to any other grounds on which the application may be opposed or observations made.

Regulations to be open to inspectionU.K.

10U.K.The regulations governing the use of a registered certification mark shall be open to public inspection in the same way as the register.

Amendment of regulationsU.K.

11(1)An amendment of the regulations governing the use of a registered certification mark is not effective unless and until the amended regulations are filed with the registrar and accepted by him.U.K.

(2)Before accepting any amended regulations the registrar may in any case where it appears to him expedient to do so cause them to be published.

(3)If he does so, notice of opposition may be given, and observations may be made, relating to the matters mentioned in paragraph 7(1).

Consent to assignment of registered certification markU.K.

12U.K.The assignment or other transmission of a registered certification mark is not effective without the consent of the registrar.

Infringement: rights of authorised usersU.K.

13U.K.The following provisions apply in relation to an authorised user of a registered certification mark as in relation to a licensee of a trade mark—

(a)section 10(5) (definition of infringement: unauthorised application of mark to certain material);

(b)section 19(2) (order as to disposal of infringing goods, material or articles: adequacy of other remedies);

(c)section 89 (prohibition of importation of infringing goods, material or articles: request to Commissioners of Customs and Excise).

14U.K.In infringement proceedings brought by the proprietor of a registered certification mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.

Grounds for revocation of registrationU.K.

15U.K.Apart from the grounds of revocation provided for in section 46, the registration of a certification mark may be revoked on the ground—

(a)that the proprietor has begun to carry on such a business as is mentioned in paragraph 4,

(b)that the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in paragraph 5(1),

(c)that the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark,

(d)that an amendment of the regulations has been made so that the regulations—

(i)no longer comply with paragraph 6(2) and any further conditions imposed by rules, or

(ii)are contrary to public policy or to accepted principles of morality, or

(e)that the proprietor is no longer competent to certify the goods or services for which the mark is registered.

Grounds for invalidity of registrationU.K.

16U.K.Apart from the grounds of invalidity provided for in section 47, the registration of a certification mark may be declared invalid on the ground that the mark was registered in breach of the provisions of paragraph 4, 5(1) or 7(1).

Section 52A

[F16SCHEDULE 2AU.K.EUROPEAN UNION TRADE MARKS

PART 1U.K.Existing European Union trade marks

A trade mark registered as an existing EUTM to be treated as registered under this ActU.K.

1(1)A trade mark which is registered in the EUTM Register immediately before IP completion day (an “existing EUTM”) is to be treated on and after IP completion day as if an application had been made, and the trade mark had been registered, under this Act in respect of the same goods or services as the existing EUTM is registered in the EUTM Register.

(2)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 (EU).

(3)This Act applies to a comparable trade mark (EU) as it applies to other registered trade marks except as otherwise provided in this Schedule.

(4)A comparable trade mark (EU) is deemed for the purposes of this Act to be registered as of the filing date accorded pursuant to Article 32 to the application which resulted in the registration of the corresponding EUTM and that date is deemed for the purposes of this Act to be the date of registration.

(5)Section 40(3) and (4) does not apply to the registration of a comparable trade mark (EU) under this Part.

(6)Section 67(1) applies in relation to the provision of information and the inspection of documents relating to a comparable trade mark (EU) notwithstanding that there will have been no application under this Act for the registration of the trade mark (and so no publication of an application).

(7)Nothing in this Act authorises the imposition of a fee, or the making of provision by rules or regulations which authorises the imposition of a fee, in respect of any matter relating to a comparable trade mark (EU) (see instead provision made by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018).

(8)For the purposes of this Act—

(a)the date of filing of an application for registration of a comparable trade mark (EU) is the filing date accorded pursuant to Article 32 to the application which resulted in the registration of the corresponding EUTM;

(b)references to the date of application for registration of a comparable trade mark (EU) are to the date of filing of the application;

(c)where an earlier trade mark is a comparable trade mark (EU), references to the completion of the registration procedure for the earlier trade mark are to the completion of the registration procedure in respect of the corresponding EUTM.

(9)In this Schedule—

(a)“corresponding EUTM”, in relation to a comparable trade mark (EU), means the existing EUTM from which the comparable trade mark (EU) derives;

(b)“the EUTM Register” means the register of European Union trade marks maintained by the European Union Intellectual Property Office.

Opt outU.K.

2(1)Subject to sub-paragraph (2), the proprietor of an existing EUTM may, at any time on or after IP completion day, serve notice on the registrar that the trade mark is not to be treated as if the trade mark had been registered under this Act (an “opt out notice”).

(2)An opt out notice may not be served where on or after IP completion day—

(a)the comparable trade mark (EU) 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 United Kingdom solely for export purposes);

(b)the comparable trade mark (EU) (or any right in or under it) has been made the subject of an assignment, licence, security interest or any other agreement or document except for an assent by personal representatives in relation to the comparable trade mark (EU); or

(c)proceedings based on the comparable trade mark (EU) have been initiated by the proprietor or with the proprietor's consent.

(3)An opt out notice must—

(a)identify the existing EUTM; and

(b)include the name and address of any person having an interest in the existing EUTM which had effect before IP completion day in the United Kingdom, and in respect of which an entry was recorded in the EUTM Register.

(4)An opt out notice is of no effect unless the proprietor in that notice certifies that any such person—

(a)has been given not less than three months' notice 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 with this paragraph—

(a)the comparable trade mark (EU) which derives from the existing EUTM ceases with effect from IP completion day to be treated as if it had been registered under this Act; and

(b)the registrar must, where particulars of the comparable trade mark (EU) have been entered in the register, remove the comparable trade mark (EU) from the register.

Entries to be made in the register in relation to a comparable trade mark (EU)U.K.

3(1)The registrar must as soon as reasonably practicable after IP completion day enter a comparable trade mark (EU) in the register.

(2)The particulars of the goods or services in respect of which the comparable trade mark (EU) is treated as if it had been registered must be taken from the English language version of the entry for the corresponding EUTM in the EUTM Register.

(3)Where—

(a)the application for registration of the corresponding EUTM was not filed in English; or

(b)the second language indicated by the applicant pursuant to Article 146(3) was a language other than English,

a person having a sufficient interest who considers that the English language version is inaccurate may apply to the registrar for rectification of the register by the substitution of an English translation of the relevant authentic text (as determined in accordance with Article 147(3)) verified to the satisfaction of the registrar as corresponding to the authentic text.

Comparable trade mark (EU) which derives from an EU Collective Mark or EU Certification MarkU.K.

4(1)This paragraph applies where the European Union trade mark from which a comparable trade mark (EU) derives is an EU collective mark or an EU certification mark.

(2)The comparable trade mark (EU) 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 (EU) must, following notice from the registrar, file with the registrar regulations governing the use of the European Union trade mark, submitted pursuant to the European Union Trade Mark Regulation, which had effect immediately before IP completion day.

(4)Where the regulations referred to in sub-paragraph (3) are in a language other than English they must be filed together with a translation into English verified to the satisfaction of the registrar as corresponding to the original text.

(5)Paragraph 9 of Schedule 1 and paragraph 10 of Schedule 2 apply in relation to the translation referred to in sub-paragraph (4) as they apply in relation to the regulations referred to in sub-paragraph (3).

(6)Where the regulations or any translation are not filed in accordance with the above provisions—

(a)the registrar must remove the comparable trade mark (EU) from the register; and

(b)the rights of the proprietor shall be deemed to have ceased as from the date of removal.

Renewal of a comparable trade mark (EU) which expires within six months after IP completion dayU.K.

5(1)This paragraph applies to the renewal of the registration of a comparable trade mark (EU) which expires within the period beginning with IP completion 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 (EU) may be renewed at the request of the proprietor before the expiry of the registration.

(3)Where the registration of the comparable trade mark (EU) 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 registration has expired and of the manner in which the registration may be renewed; and

(b)a request for renewal must be made within the period 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 (EU) is registered, the registration is to be renewed for those goods or services only.

(5)If the registration is not renewed in accordance with the above provisions, the registrar must remove the comparable trade mark (EU) from the register.

(6)Section 43(4) and (6) applies to the registration of a comparable trade mark (EU) which is renewed in accordance with the above provisions.

(7)In paragraph (1), the “relevant period” means the period of six months beginning with the day after that on which IP completion day falls.

Restoration of a comparable trade mark (EU)U.K.

6Where a comparable trade mark (EU) 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 restoration of the comparable trade mark (EU) to the register.

Raising of relative grounds in opposition proceedings in case of non-useU.K.

7(1)Section 6A applies where an earlier trade mark is a comparable trade mark (EU), subject to the modifications set out below.

(2)Where the relevant period referred to in section 6A(3)(a) (the “five-year period”) has expired before IP completion day—

(a)the references in section 6A(3) and (6) to the earlier trade mark are to be treated as references to the corresponding EUTM; and

(b)the references in section 6A(3) and (4) to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion day—

(a)the references in section 6A(3) and (6) to the earlier trade mark are to be treated as references to the corresponding EUTM ; and

(b)the references in section 6A to the United Kingdom include the European Union.

Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (EU)U.K.

8(1)Sections 11A and 46 apply in relation to a comparable trade mark (EU), subject to the modifications set out below.

(2)Where the period of five years referred to in sections 11A(3)(a) and 46(1)(a) or (b) (the “five-year period”) has expired before IP completion 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 EUTM; and

(b)the references in sections 11A and 46 to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion 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 EUTM ; and

(b)the references in sections 11A and 46 to the United Kingdom include the European Union.

Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (EU)U.K.

9(1)Section 47 applies where an earlier trade mark is a comparable trade mark (EU), subject to the modifications set out below.

(2)Where the period of five years referred to in sections 47(2A)(a) and 47(2B) (the “five-year period”) has expired before IP completion day—

(a)the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding EUTM ; and

(b)the references in section 47 to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion day—

(a)the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding EUTM ; and

(b)the references in section 47 to the United Kingdom include the European Union.

Reputation of a comparable trade mark (EU)U.K.

10(1)Sections 5 and 10 apply in relation to a comparable trade mark (EU), subject to the modifications set out below.

(2)Where the reputation of a comparable trade mark (EU) falls to be considered in respect of any time before IP completion 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 EUTM; and

(b)the United Kingdom include the European Union.

Rights conferred by registered trade markU.K.

11Section 9 applies in relation to a comparable trade mark (EU) but as if—

(a)the words in brackets in subsection (3) referring to section 40(3) were replaced with a reference to paragraph 1(4) of this Schedule; and

(b)the proviso in subsection (3) were omitted.

Effect of claim of priorityU.K.

12(1)This paragraph applies where—

(a)the proprietor of an existing EUTM has claimed a right of priority in accordance with Article 35; and

(b)immediately before IP completion day there is an entry in the EUTM Register containing particulars of that claim of priority (a “claim of priority”).

(2)The proprietor of the comparable trade mark (EU) which derives from the existing EUTM is to be treated on and after IP completion 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 (EU), which rights take precedence is the date of filing of the application for a trade mark in a Convention country which formed the basis for the claim of priority.

Effect of seniority claimU.K.

13(1)This paragraph applies where immediately before IP completion day an existing EUTM has a valid claim to seniority of a trade mark which trade mark (the “senior mark”) is a registered trade mark or a protected international trade mark (UK).

(2)The comparable trade mark (EU) which derives from the existing EUTM is to be treated on and after IP completion day as if it had a valid claim to seniority of the senior mark.

(3)Accordingly, where the proprietor of the comparable trade mark (EU) surrenders the senior mark or allows it to lapse (whether wholly or partially), subject to paragraph 14, the proprietor of the comparable trade mark (EU) is deemed 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 registered prior to the surrender or lapse.

(4)An existing EUTM has a valid claim to seniority of a trade mark where—

(a)a claim has been filed in accordance with Article 39 or 40; and

(b)the seniority claimed for the existing EUTM has not lapsed in the circumstances referred to in Article 39.

Determination of invalidity and liability to revocation in relation to claims of seniorityU.K.

14(1)Where pursuant to paragraph 13 a comparable trade mark (EU) is treated as if it had a valid claim to 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 court 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 liable 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 mark 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 date prior to—

(i)the filing date accorded pursuant to Article 32 to the application which resulted in the registration of the existing EUTM from which the comparable trade mark (EU) derives where there has been no claim of priority; or

(ii)the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM from which the comparable trade mark (EU) derives where there has been a claim of priority; or

(b)declared invalid under section 47,

the seniority claimed for the comparable trade mark (EU) is to be treated as if it never had effect.

(4)Where pursuant to paragraph 13 a comparable trade mark (EU) is treated as if it had a valid claim to seniority of a protected international trade mark (UK) which has been—

(a)removed from the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol; or

(b)surrendered under the Madrid Protocol,

any person may apply to the registrar or to the court 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 mark not been so removed or surrendered the protection of the mark in the United Kingdom would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)the filing date accorded pursuant to Article 32 to the application which resulted in the registration of the existing EUTM from which the comparable trade mark (EU) derives where there has been no claim of priority; or

(ii)the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM from which the comparable trade mark (EU) derives where there has been a claim of priority; or

(b)declared invalid under section 47,

the seniority claimed for the comparable trade mark (EU) is to be treated as if it never had effect.

(7)References in sub-paragraphs (5) and (6) to sections 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.

(8)Where a trade mark has been surrendered or allowed 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 removed from the registration, the registration of the trade mark 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 and sub-paragraphs (3) and (6) shall be construed accordingly.

Procedure for declaration that trade mark would have been liable to be revoked or declared invalidU.K.

15(1)In the case of proceedings on an application under paragraph 14 before the registrar, the rules relating to applications for and proceedings relating to the revocation or invalidation of a trade mark apply, with necessary modifications.

(2)In the case of proceedings on an application under paragraph 14 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 EUTM not registered on IP completion dayU.K.

16(1)This paragraph applies where before IP completion day an existing EUTM (or any right in it) is the subject of an assignment (a “relevant assignment”) which immediately before IP completion day is not recorded in the EUTM Register.

(2)Section 25 applies in relation to a relevant assignment as if it were a registrable transaction affecting a comparable trade mark (EU), 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 (EU) by virtue of a relevant assignment of the corresponding EUTM; or

(b)the proprietor of the comparable trade mark (EU).

Effect of a licence of an existing EUTMU.K.

17(1)This paragraph applies where immediately before IP completion day an existing EUTM is the subject of a licence (a “relevant licence”) which—

(a)authorises the doing of acts in the United Kingdom which would otherwise infringe the European Union trade mark; and

(b)does not expire on IP completion day.

(2)Subject to any agreement to the contrary between the licensee and the licensor, a relevant licence continues to authorise the doing of acts in the United Kingdom which would otherwise infringe the comparable trade mark (EU) which derives from the existing EUTM.

(3)Sub-paragraph (2) is subject to—

(a)the terms on which the relevant licence was granted; 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 licence as if it were a registrable transaction affecting a comparable trade mark (EU), 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 (EU).

(6)Where immediately before IP completion day there is an entry in the EUTM Register relating to a relevant licence—

(a)section 25(3) and (4) does not apply until after the expiry of the relevant period; and

(b)section 25(4)(a) applies after the expiry of the 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 IP completion day.

(7)In paragraph (6)(a), the “relevant period” means the period of twelve months beginning with the day after that on which IP completion day falls.

Effect of a security interest in an existing EUTMU.K.

18(1)This paragraph applies where immediately before IP completion day an existing EUTM (or any right in or under it) is the subject of a security interest (a “relevant security interest”) which does not terminate on IP completion day.

(2)References to the existing EUTM in any document which grants or refers to the relevant security interest are to be read as including references to the comparable trade mark (EU) which derives from the existing EUTM.

(3)Section 25 applies in relation to a relevant security interest as if it were a registrable transaction affecting a comparable trade mark (EU), 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 (EU) by virtue of the relevant security interest; or

(b)the proprietor of the comparable trade mark (EU).

(5)Where immediately before IP completion day there is an entry in the EUTM 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 the 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 IP completion day.

(6)In paragraph (5)(a), the “relevant period” means the period of twelve months beginning with the day after that on which IP completion day falls.

Continuity of rights in relation to a comparable trade mark (EU)U.K.

19(1)References to an existing EUTM or the registration of an existing EUTM in any document made before IP completion day shall, unless there is evidence that the document was not intended to have effect in the United Kingdom, be read on and after IP completion day as including references to the comparable trade mark (EU) or the registration of the comparable trade mark (EU) which derives from the existing EUTM.

(2)Subject to any agreement to the contrary, a consent granted before IP completion day by the proprietor of an existing EUTM to the doing on or after IP completion day of an act in the United Kingdom which would otherwise infringe the comparable trade mark (EU) which derives from the existing EUTM is to be treated for the purposes of section 9 as a consent to the doing of that act.

Existing EUTM: pending proceedingsU.K.

20(1)This paragraph applies where on IP completion day an existing EUTM is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 123 (“EU trade mark court”).

(2)Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Chapter 10 of the European Union Trade Mark Regulation (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 effect from IP completion day.

(3)Where the pending proceedings involve a claim for infringement of an existing EUTM, without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the existing EUTM, the EU trade mark court may grant an injunction to prohibit unauthorised use of the comparable trade mark (EU) which derives from the existing EUTM.

(4)Where the pending proceedings involve a counterclaim for the revocation of, or a declaration of invalidity in relation to, an existing EUTM, the EU trade mark court may revoke the registration of the comparable trade mark (EU) which derives from the existing EUTM or declare the registration of the comparable trade mark (EU) which derives from the existing EUTM 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 EUTM is registered, the revocation or declaration of invalidity in respect of the registration of the comparable trade mark (EU) which derives from the existing EUTM relates to those goods or services only.

(6)Where (by virtue of sub-paragraph (4)) the registration of a comparable trade mark (EU) is revoked to any extent, the rights of the proprietor 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 registration of a comparable trade mark (EU) is declared invalid to any extent, the registration 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 IP completion day if they were instituted but not finally determined before IP completion day.

Existing EUTM: effect of injunctionU.K.

21(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 an existing EUTM (a “relevant injunction”).

(2)Subject to any order of the court to the contrary, a relevant injunction will have effect and be enforceable to prohibit the performance of acts which infringe or would infringe a comparable trade mark (EU) to the same extent as in relation to the European Union trade mark from which the comparable trade mark (EU) derives as if it were an injunction granted by the court.

Existing EUTM: effect of invalidity or revocationU.K.

21A.(1)This paragraph applies where, on IP completion day, an existing EUTM is the subject of proceedings under Article 58 (Grounds for revocation), 59 (Absolute grounds for invalidity) or 60 (Relative grounds for invalidity) which have been instituted but not finally determined before IP completion day (“cancellation proceedings”).

(2)Subject to sub-paragraph (4), where—

(a)the existing EUTM is revoked or declared invalid (whether wholly or partially) pursuant to a decision in the cancellation proceedings which is finally determined, and

(b)the registrar has—

(i)received notice of the situation referred to in paragraph (a) (“a cancellation notice”), or

(ii)otherwise become aware of the situation referred to in paragraph (a),

the registration of the comparable trade mark (EU) which derives from the existing EUTM must be revoked or declared invalid to the same extent as the existing EUTM.

(3)Where (by virtue of sub-paragraph (2)) the registration of a comparable trade mark (EU) is revoked or declared invalid to any extent, the registrar must—

(a)remove the comparable trade mark (EU) from the register (where the revocation or declaration of invalidity relates to all the goods or services for which the existing EUTM was registered); or

(b)amend the entry in the register listing the goods or services for which the comparable trade mark (EU) is registered (where the revocation or declaration of invalidity relates to only some of the goods or services for which the existing EUTM was registered).

(4)The registration of a comparable trade mark (EU) must not be revoked or declared invalid under sub-paragraph (2) where the grounds on which the existing EUTM was revoked or declared invalid (whether wholly or partially) would not apply or would not have been satisfied in relation to the comparable trade mark (EU)—

(a)if the comparable trade mark (EU) had existed as at the date the cancellation proceedings were instituted, and

(b)an application for the revocation or a declaration of invalidity of the comparable trade mark (EU) based on those grounds had been made on that date under section 46 or 47 (as the case may be).

(5)Where a comparable trade mark (EU) is revoked or declared invalid to any extent pursuant to this paragraph—

(a)the rights of the proprietor are deemed to have ceased to that extent as from the date on which the rights of the proprietor of the existing EUTM are deemed to have ceased under the EUTM Regulation;

(b)subject to any claim for compensation for damage caused by negligence or lack of good faith on the part of the proprietor or a claim for restitution based upon the unjust enrichment of the proprietor, the revocation or invalidity of the comparable trade mark (EU) does not affect—

(i)a decision arising from infringement proceedings which has been finally determined and which has been enforced prior to the date on which the entry in the register of the comparable trade mark (EU) has been removed or amended pursuant to sub-paragraph (3) (“the decision date”);

(ii)any contract entered into prior to the decision date to the extent that it has been performed prior to the decision date, subject to the right of a party to the contract to claim the repayment of any consideration paid under the contract where, having regard to the circumstances, it is fair and equitable for such repayment to be made.

(6)A cancellation notice may be submitted to the registrar by any person.

(7)For the purposes of this paragraph—

(a)proceedings are instituted if an application or counterclaim for revocation or for a declaration of invalidity—

(i)has been filed (and not subsequently withdrawn) with the European Union Intellectual Property Office or a court designated for the purposes of Article 123, and

(ii)meets the requirements for being accorded a filing date under the European Union Trade Mark Regulation and Commission Delegated Regulation (EU) 2018/625 of 5th March 2018;

(b)a decision is finally determined when—

(i)it has been determined, and

(ii)there is no further possibility of the determination being varied or set aside (disregarding any power to grant permission to appeal out of time).

PART 2U.K.Treatment of European Union trade marks which expire during the period of six months ending on IP completion day

Registration of certain expired European Union trade marksU.K.

22(1)This Part applies to a trade mark which was registered in the EUTM Register immediately before the transitional period but which, as a result of the expiry of the registration of the European Union trade mark during the transitional period, does not fall within paragraph 1(1) (an “expired EUTM”).

(2)An expired EUTM is to be treated as if it were an existing EUTM.

(3)The provisions of Part 1 of this Schedule apply to an expired EUTM as they apply to an existing EUTM subject to the provisions of this Part of the Schedule.

(4)Notwithstanding the entry in the register (under paragraph 3, as applied by sub-paragraph (3)) of a comparable trade mark (EU) which derives from an expired EUTM, the registration of the comparable trade mark (EU) is expired until it is renewed in accordance with paragraph 23 (or the comparable trade mark (EU) is removed from the register in accordance with paragraph 23(4)).

(5)In this paragraph, “transitional period” means the period of six months ending with IP completion day.

Renewal of an expired EUTMU.K.

23(1)Where the registration of an expired EUTM is renewed in accordance with Article 53 of the Continuing EUTM Regulation the registrar must, as soon as reasonably practicable after the date of such renewal, renew the registration of the comparable trade mark (EU) which derives from the expired EUTM.

(2)A comparable trade mark (EU) which is renewed under sub-paragraph (1) shall be renewed for a period of ten years from the expiry of the registration of the expired EUTM.

(3)If the registration of an expired EUTM is renewed in respect of only some of the goods or services in respect of which the expired EUTM was registered before its registration expired, the registration of the comparable trade mark (EU) under sub-paragraph (1) is to be renewed for those goods or services only.

(4)If the registration of an expired EUTM is not renewed within the time period permitted by Article 53 of the Continuing EUTM Regulation—

(a)the registrar must remove from the register the comparable trade mark (EU) which derives from the expired EUTM; and

(b)the comparable trade mark (EU) ceases with effect from IP completion day to be treated as if it had been registered under this Act.

(5)In this Schedule, the “Continuing EUTM Regulation” means Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark as it has effect in EU law.

PART 3U.K.Applications for European Union trade marks which are pending on IP completion day

Application of PartU.K.

24(1)This Part applies to an application for registration of a trade mark under the EUTM Regulation in respect of which the conditions in sub-paragraph (2) are satisfied (an “existing EUTM application”).

(2)The conditions referred to in sub-paragraph (1) are—

(a)the application has been accorded a filing date pursuant to Article 32; and

(b)as at the time immediately before IP completion day, the application has been neither granted nor refused by the European Union Intellectual Property Office.

Application for registration under this Act based upon an existing EUTM applicationU.K.

25(1)This paragraph applies where a person who has filed an existing EUTM application or a successor in 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.

(2)Where an application for registration referred to in sub-paragraph (1) is made within a period beginning with IP completion day and ending with the end of the relevant period—

(a)the relevant date for the purposes of establishing which rights take precedence is the earliest of—

(i)the filing date accorded pursuant to Article 32 to the existing EUTM application;

(ii)the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM application; and

(b)the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in paragraph (a) and the date of the application under this Act.

(3)In paragraph (2), the “relevant period” means the period of nine months beginning with the day after that on which IP completion day falls.

Right to claim seniority where seniority has been claimed by an existing EUTM applicationU.K.

26(1)Where an existing EUTM application 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 to 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 partially), subject to paragraph 27, the proprietor of the relevant mark is deemed 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 registered prior to the surrender or lapse.

(3)Provision may be made by rules as to the manner of claiming seniority pursuant to this paragraph.

Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 26U.K.

27(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 court 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 liable 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 mark 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 date prior to—

(i)the filing date accorded pursuant to Article 32 to the existing EUTM application on which the application for registration of a relevant mark is based where there has been no claim of priority; or

(ii)the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM application on which the registration of a relevant mark is based where there has been a claim of priority; or

(b)declared invalid under section 47,

the seniority claimed for the relevant mark is to be 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 register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol; or

(b)surrendered under the Madrid Protocol,

any person may apply to the registrar or to the court 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 mark 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 date prior to—

(i)the filing date accorded pursuant to Article 32 to the existing EUTM application on which the application for registration of a relevant mark is based where there has been no claim of priority; or

(ii)the priority date (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM application on which the registration of a relevant mark is based where there has been a claim of priority; or

(b)declared invalid under section 47,

the seniority claimed for the relevant mark is to be treated as if it never had effect.

(7)References in sub-paragraphs (5) and (6) to sections 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.

(8)Where a trade mark has been surrendered or allowed 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 removed from the registration, the registration of the trade mark 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 and sub-paragraphs (3) and (6) shall be construed accordingly.

(9)The provisions of paragraph 15 apply in relation to an application under this paragraph as they apply to an application under paragraph 14.

PART 4U.K.Restoration of European Union trade mark registrations and applications

Restoration of a European Union trade mark to the EUTM RegisterU.K.

28(1)This paragraph applies where—

(a)before IP completion day a trade mark is removed from the EUTM Register pursuant to the European Union Trade Mark Regulation; and

(b)on or after IP completion day the trade mark is restored to the EUTM Register pursuant to the Continuing EUTM Regulation.

(2)Where the proprietor of a European Union trade mark referred to in sub-paragraph (1)(b) files a request with the registrar within the period of six months beginning with the date of such restoration—

(a)the trade mark will be treated as if it was an existing EUTM on IP completion day; and

(b)the provisions of Part 1 apply to the comparable trade mark (EU) which derives from the existing EUTM.

Restoration of an application for a European Union trade markU.K.

29(1)This paragraph applies where—

(a)before IP completion day an application for a European Union trade mark is refused pursuant to the European Union Trade Mark Regulation; and

(b)on or after IP completion day the application (a “relevant application”) is restored pursuant to the Continuing EUTM Regulation.

(2)Where a person who has filed a relevant application or a successor in 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, the provisions of paragraphs 25, 26 and 27 apply to the relevant application as if it were an existing EUTM application but as if the “relevant period” in paragraph 25(2) meant the period of nine months beginning with the date on which the relevant application is restored as referred to in sub-paragraph (1)(b).

PART 5U.K.Interpretation

InterpretationU.K.

30(1)In this Schedule—

• “comparable trade mark (EU)” has the meaning given by paragraph 1(2);

• “the Continuing EUTM Regulation” has the meaning given by paragraph 23(5);

• “corresponding EUTM” has the meaning given by paragraph 1(9)(a);

• “the EUTM Register” has the meaning given by paragraph 1(9)(b);

• “existing EUTM” has the meaning given by paragraph 1(1);

• “existing EUTM application” has the meaning given by paragraph 24(1);

• “expired EUTM” has the meaning given by paragraph 22(1);

• “the previous EUTM Regulations” means Council Regulation (EC) No 207/2009 of 26th February 2009 on the European Union trade mark and Council Regulation (EC) No 40/94 of 20^th December 1993 on the Community trade mark;

• “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008.

(2)References in this Schedule to—

(a)an “Article” are to an Article of the European Union Trade Mark Regulation and include references to any equivalent Article contained in the previous EUTM Regulations;

(b)the European Union Trade Mark Regulation include references to the previous EUTM Regulations;

(c)a European Union trade mark include references to an EU collective mark and an EU certification mark as defined in Articles 74 and 83.]

Section 54A

[F17SCHEDULE 2BU.K.INTERNATIONAL TRADE MARKS PROTECTED IN THE EUROPEAN UNION

PART 1U.K.Existing international trade marks protected in the European Union

An international trade mark protected in the European Union to be treated as registered under this ActU.K.

1(1)A trade mark which, immediately before IP completion day, is an international trade mark which is protected in the European Union in accordance with Article 189(2) of the European Union Trade Mark Regulation (an “existing IR(EU)”) is to be treated on and after IP completion day as if an application had been made, and the trade mark had been registered, under this Act in respect of the same goods or services in respect of which the international trade mark is protected in the European Union.

(2)Where the international registration to which an 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 3ter there is to be deemed for the purposes of sub-paragraph (1) to be a separate trade mark in respect of the goods or services covered by each sub-division of the registration.

(3)Where the international registration to which an 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 registration that the requests for territorial extension were made before the separate international 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 the existing IR(EU) from which the comparable trade mark (IR) derives resulted from a request for territorial extension under Article 3ter(1) (request mentioned in original application), the date of registration of the existing IR(EU) accorded pursuant to Article 3(4); or

(b)where the protection in the European Union of the 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 request was recorded in the International Register,

and that date is deemed for the purposes of this Act to be the date of registration.

(7)Section 40(3) and (4) does not apply to the registration of a comparable trade mark (IR) under this Part.

(8)Section 67(1) applies in relation to the provision 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 registration of the trade mark (and so no publication of an application).

(9)Nothing in this Act authorises the imposition of a fee, or the making of provision by rules or regulations which authorises the imposition of a fee, in respect of any matter relating to a comparable trade mark (IR) (see instead provision made by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018).

(10)For the purposes of this Act—

(a)the date of filing of an application for registration 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 registration of a comparable trade mark (IR) are to the date of filing of the application;

(c)where an earlier trade mark is a comparable trade mark (IR), references to the completion of the registration procedure for the earlier trade mark are to publication by the European Union Intellectual Property 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 comparable 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 registration made in the International Register in accordance with the Madrid Protocol;

(c)“international trade mark” means a trade mark which is the subject of an international registration.

Opt outU.K.

2(1)Subject to sub-paragraphs (2) and (6), the proprietor of an existing IR(EU) may, at any time on or after IP completion day, serve notice on the registrar that the trade mark is not to be treated as if the trade mark had been registered under this Act (an “opt out notice”).

(2)An opt out notice may not be served where on or after IP completion 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 United 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 interest or any other agreement or document except for an assent by personal representatives 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 registration to which the existing IR(EU) to which the notice relates is subject; and

(b)include the name and address of any person having an interest in the existing IR(EU) which had effect before IP completion day in the United Kingdom, and in respect of which an entry was recorded in the International Register.

(4)An opt out notice is of no effect unless the proprietor in that notice certifies that any such person—

(a)has been given not less than three months' notice 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 with this paragraph—

(a)the comparable trade mark (IR) which derives from the existing IR(EU) ceases with effect from IP completion day to be treated as if it had been registered under this Act; and

(b)the registrar must, where particulars of the comparable trade mark (IR) have been entered in the register, remove the comparable trade mark (IR) from the register.

(6)Where an international trade mark which is protected in the European Union is treated as being more than one trade mark by virtue of paragraph 1(2)—

(a)an opt out notice must relate to all of the existing 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 comparable trade mark (IR) are to be read as references to any of the comparable trade marks (IR) which derive from the existing IR(EU)s to which the opt out notice relates; and

(c)the references in sub-paragraph (5) to the comparable trade mark (IR) are to be read as references to all of the comparable trade marks (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)U.K.

3(1)The registrar must as soon as reasonably practicable after IP completion day enter a comparable trade mark (IR) in the register.

(2)The particulars of the goods or services in respect of which the comparable trade mark (IR) is treated as if it had been registered must be taken from the English language version of the entry in the International Register for the corresponding (IR).

(3)Where on or after IP completion day the entry in the International Register containing the particulars referred to in sub-paragraph (2) is modified 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 language 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 comparable trade mark (IR) derives.

Comparable trade mark (IR) which derives from a mark treated as an EU Collective Mark or EU Certification MarkU.K.

4(1)This paragraph applies where the existing IR(EU) 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 certification 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 governing the use of the international trade mark, submitted pursuant to the European Union Trade Mark Regulation, which had effect immediately before IP completion day.

(4)Where the regulations referred to in sub-paragraph (3) are in a language other than English they must be filed together with a translation into English verified to the satisfaction of the registrar as corresponding to the original text.

(5)Paragraph 9 of Schedule 1 and paragraph 10 of Schedule 2 apply in relation to the translation referred to in sub-paragraph (4) as they apply in relation to the regulations referred to in sub-paragraph (3).

(6)Where the regulations or any translation are not filed in accordance with the above provisions—

(a)the registrar must remove the comparable trade mark (IR) from the register; and

(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 expires within six months after IP completion dayU.K.

5(1)This paragraph applies to the renewal of the registration of a comparable trade mark (IR) which expires within the period beginning with IP completion 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 registration.

(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 registration has expired and of the manner in which the registration may be renewed; and

(b)a request for renewal must be made within the period 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 accordance 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 registration of a comparable trade mark (IR) which is renewed in accordance with the above provisions.

(7)In sub-paragraph (1), the “relevant period” means the period of six months beginning with the day after that on which IP completion day falls.

Restoration of a comparable trade mark (IR)U.K.

6Where 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 restoration of the comparable trade mark (IR) to the register.

Raising of relative grounds in opposition proceedings in case of non-useU.K.

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 section 6A(3)(a) (the “five-year period”) has expired before IP completion 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 IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion 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 Kingdom include the European Union.

Non-use as defence in infringement proceedings and revocation of registration of a comparable trade mark (IR)U.K.

8(1)Sections 11A and 46 apply in relation to a comparable trade mark (IR), subject to the modifications set out below.

(2)Where the period of five years referred to in sections 11A(3)(a) and 46(1)(a) or (b) (the “five-year period”) has expired before IP completion 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 United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion 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 United Kingdom include the European Union.

Grounds for invalidity of registration of a trade mark based upon an earlier comparable trade mark (IR)U.K.

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 sections 47(2A)(a) and 47(2B) (the “five-year period”) has expired before IP completion day—

(a)the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding (IR); and

(b)the references in section 47 to the United Kingdom include the European Union.

(3)Where IP completion day falls within the five-year period, in respect of that part of the five-year period which falls before IP completion day—

(a)the references in section 47(2B) and (2E) to the earlier trade mark are to be treated as references to the corresponding (IR); and

(b)the references in section 47 to the United Kingdom include the European Union.

Reputation of a comparable trade mark (IR)U.K.

10(1)Sections 5 and 10 apply in relation to a comparable 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 IP completion 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 markU.K.

11Section 9 applies in relation to a comparable trade mark (IR) but as if—

(a)the words in brackets in subsection (3) referring 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.

Effect of disclaimerU.K.

12Where, immediately before IP completion 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) which derives from the existing IR(EU) is to be treated on and after IP completion 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 priorityU.K.

13(1)This paragraph applies where—

(a)a right of priority was claimed in respect of an international application for protection of a trade mark in accordance with Rule 9(4)(iv);

(b)immediately before IP completion day there is an entry in the International Register in respect of that trade mark containing particulars of 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 on and after IP completion 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 precedence is the date of filing of the application for a trade mark in a Convention country which formed the basis for the claim of priority.

(4)Where the protection in the European Union of the existing IR(EU) resulted from a request for territorial extension under Article 3ter(2), the proprietor of the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated on and after IP completion day as having the same claim of priority only where the request for territorial extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application referred to in sub-paragraph (1)(a).

Effect of seniority claimU.K.

14(1)This paragraph applies where immediately before IP completion day an existing IR(EU) has a valid claim to seniority of a trade mark which 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 from the existing IR(EU) is to be treated on and after IP completion day as if it had a valid claim to seniority of the senior mark.

(3)Accordingly, where the proprietor of the comparable trade mark (IR) surrenders the senior mark or allows it to lapse (whether wholly or partially), subject to paragraph 15, the proprietor of the comparable trade mark (IR) is deemed 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 registered prior to the surrender or lapse.

(4)An existing IR(EU) has a valid claim to seniority of a trade mark where—

(a)a claim has been filed in accordance with Article 191 or 192 of the European Union Trade Mark Regulation in respect of the international 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 international registrations under Article 182 of that Regulation).

Determination of invalidity and liability to revocation in relation to claims of seniorityU.K.

15(1)Where pursuant to paragraph 14 a comparable trade mark (IR) is treated as if it had a valid claim to 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 court 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 liable 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 mark 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 date prior to—

(i)where there has been no claim of priority pursuant 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) derives, 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) from 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 trade mark (IR) is treated as if it had a valid claim to 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 court 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 mark not been so removed or surrendered the protection of the mark in the United Kingdom would have been liable to be—

(a)revoked under section 46 with effect from a date prior to—

(i)where there has been no claim of priority pursuant 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) derives, 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) from 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.

(7)Where the protection in the European Union of an existing IR(EU) resulted from a request for territorial extension under Article 3ter(2), a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the existing IR(EU) is to be disregarded for the purposes of sub-paragraphs (3)(a)(ii) and (6)(a)(ii) unless the request for territorial extension was recorded in the International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application 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 sections 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 allowed 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 removed from the registration, the registration of the trade mark 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 and sub-paragraphs (3) and (6) shall be construed accordingly.

Procedure for declaration that trade mark would have been liable to be revoked or declared invalidU.K.

16(1)In the case of proceedings on an application under paragraph 15 before the registrar, the rules relating to applications for and proceedings relating to the revocation or invalidation of a trade mark apply, with necessary modifications.

(2)In the case of proceedings on an application under 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 IP completion dayU.K.

17(1)This paragraph applies where before IP completion day an existing IR(EU) (or any right in it) is the subject of an assignment (a “relevant assignment”) which immediately before IP completion day is not recorded in the International Register.

(2)Section 25 applies in relation to a relevant assignment 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 corresponding (IR); or

(b)the proprietor of the comparable trade mark (IR).

Effect of a licence of an existing IR(EU)U.K.

18(1)This paragraph applies where immediately before IP completion day an existing IR(EU) is the subject of a licence (a “relevant licence”) which—

(a)authorises the doing of acts in the United Kingdom which would otherwise infringe the international trade mark; and

(b)does not expire on IP completion day.

(2)Subject to any agreement to the contrary between the licensee and the licensor, a relevant licence continues to authorise the doing of acts in the United Kingdom which would otherwise infringe the comparable trade mark (IR) which derives from the existing IR(EU).

(3)Sub-paragraph (2) is subject to—

(a)the terms on which the relevant licence was granted; 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 licence 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 IP completion day there is an entry in the International Register relating to a relevant licence—

(a)section 25(3) and (4) does not apply until after the expiry of the relevant period; and

(b)section 25(4)(a) applies after the expiry of the 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 IP completion day.

(7)In sub-paragraph (6)(a), the “relevant period” means the period of twelve months beginning with the day after that on which IP completion day falls.

Effect of a security interest in an existing IR(EU)U.K.

19(1)This paragraph applies where immediately before IP completion day an existing IR(EU) (or any right in or under it) is the subject of a security 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 IP completion day.

(2)References to the existing IR(EU), or the international registration to which the existing IR(EU) is subject, in any document which grants 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 security 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; or

(b)the proprietor of the comparable trade mark (IR).

(5)Where immediately before IP completion day there is an entry 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 the 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 IP completion day.

(6)In sub-paragraph (5)(a), the “relevant period” means the period of twelve months beginning with the day after that on which IP completion day falls.

Continuity of rights in relation to a comparable trade mark (IR)U.K.

20(1)References to an existing IR(EU), or the international registration to which an existing IR(EU) is subject, in any document made before IP completion day shall, unless there is evidence that the document was not intended to have effect in the United Kingdom, be read on and after IP completion day as including references to the comparable trade mark (IR) or the registration of the comparable trade mark (IR) which derives from the existing IR(EU).

(2)Subject to any agreement to the contrary, a consent granted before IP completion day by the proprietor of an existing IR(EU) to the doing on or after IP completion day of an act in the United Kingdom which would otherwise infringe the comparable trade mark (IR) which derives from the existing IR(EU) is to be treated for the purposes of section 9 as a consent to the doing of that act.

Existing IR(EU): pending proceedingsU.K.

21(1)This paragraph applies where on IP completion day an existing 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 provisions contained or referred to in Chapter 10 of the European Union Trade Mark Regulation (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 effect from IP completion day.

(3)Where the pending proceedings involve a claim for infringement of an existing IR(EU), without prejudice to any other relief by way 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 comparable trade mark (IR) which derives from the existing IR(EU).

(4)Where the pending proceedings involve a counterclaim for the revocation of, or a declaration of invalidity in relation to, an existing IR(EU), the EU trade mark court may revoke the registration of the comparable trade mark (IR) which derives from the existing IR(EU) or declare the registration of the comparable 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 registration of a comparable trade mark (IR) is revoked to any extent, the rights of the proprietor 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 registration of a comparable trade mark (IR) is declared invalid to any extent, the registration 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 IP completion day if they were instituted but not finally determined before IP completion day.

Existing IR(EU): effect of injunctionU.K.

22(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 an existing IR(EU) (a “relevant injunction”).

(2)Subject to any order of the court to the contrary, a relevant injunction will have effect and be enforceable to prohibit the performance of acts 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 2U.K.Treatment of international trade marks protected in the European Union which expire during the period of six months ending on IP completion day

Registration of certain expired international trade marksU.K.

23(1)This Part applies to an international trade mark 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 which, 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 an 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 mark 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 were 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 this Part of the Schedule.

(5)Notwithstanding the entry in the register (under paragraph 3, as applied by sub-paragraph (4)) of a comparable trade mark (IR) which derives from an expired IR(EU), the registration of the comparable trade mark (IR) is expired 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 paragraph 24(2)).

(6)In this paragraph, “transitional period” means the period of six months ending with IP completion day.

Renewal of an expired IR(EU)U.K.

24(1)Where within the period beginning with IP completion day and ending with the end of the relevant period—

(a)the international registration to which an expired IR(EU) is subject is renewed in accordance with Article 7; and

(b)the proprietor of the expired IR(EU) notifies the registrar of such renewal (a “renewal notice”),

paragraphs 25 and 26 apply to the renewal of the registration of the comparable trade mark (IR) which derives from the expired IR(EU).

(2)If within the period referred to in sub-paragraph (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 effect from IP completion day to be treated as if it had been registered under this Act.

(3)In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which IP completion day falls.

Renewal of an expired IR(EU): territorial extension under Article 3ter(1)U.K.

25(1)Where the protection in the European Union of an expired IR(EU) resulted from a request for territorial extension under Article 3ter(1), the registrar must, as soon as reasonably practicable following receipt of the renewal notice, renew the registration of the comparable trade mark (IR) which derives from the expired IR(EU).

(2)A comparable trade mark (IR) which is renewed under sub-paragraph (1) shall be renewed for a period of ten years from the expiry of 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 3ter(2)U.K.

26(1)This paragraph applies where the protection in the European Union of an expired IR(EU) resulted from a request for territorial extension under Article 3ter(2).

(2)The relevant date for the purposes of determining the date of renewal of the registration of the comparable trade mark (IR) which derives from the expired IR(EU) (the “relevant renewal date”) shall be—

(a)the date of expiry of the period of ten years from the date on which the request for territorial extension was recorded in the International Register; or

(b)where the international registration to which the expired IR(EU) is subject has been renewed since the date referred to in paragraph (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 notice (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 reasonably practicable following receipt of a renewal notice, renew the registration of the comparable 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 the notice date, sub-paragraphs (5) and (6) apply (and accordingly section 43(1) to (3A) does 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 registration of the comparable trade mark (IR) has expired and of the manner in which registration may be renewed; and

(b)a request for renewal must be made within a period 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 under sub-paragraph (3) or pursuant to a request for renewal in accordance with sub-paragraph (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 renewal 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 comparable trade mark (IR) from the register.

(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 restoration 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 comparable trade mark (IR) falls on or after the expiry of the period of six months beginning with the 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 3U.K.Applications for the extension of protection of international registrations to the European Union which are pending on IP completion day

InterpretationU.K.

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 protection resulting from an international registration to the European Union under Article 3ter(1) in respect of which the conditions in sub-paragraph (2) are satisfied;

(b)references to an “existing request for EU extension” are to a request for extension to the European Union of the protection resulting from an international registration made subsequent to the international registration pursuant to Article 3ter(2) in respect of which the conditions in sub-paragraph (3) are satisfied;

(c)references to an “international application” are to an application to the International Bureau under Article 2(2) for the registration 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 IP completion day with the Office of origin in accordance with Article 2(2); and

(b)as at the time immediately before IP completion day, the request for extension of protection to the European Union mentioned in the international application has been neither granted nor refused by the European Union Intellectual 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 IP completion 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 IP completion 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 European Union Trade Mark Regulation.

(4)In sub-paragraphs (2)(b) and (3)(b) —

(a)the reference to the request for extension of protection to the European Union being “granted” means the European Union Intellectual 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 with Rule 18ter; and

(b)the reference to the request for extension of protection to the European Union being “refused” means the European Union Intellectual Property Office having 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 upon an existing ITM application or an existing request for EU extension recorded in the International Register prior to IP completion dayU.K.

28(1)This paragraph applies where—

(a)either—

(i)an existing ITM application has been filed with the International Bureau in respect of a trade mark and the date accorded to the international registration of the trade mark pursuant to Article 3(4) is a date prior to IP completion day; or

(ii)an existing request for EU extension in respect 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 3ter(2) is a date prior to IP completion day;

(b)the person who filed the existing ITM application or (as the case may be) the existing request for EU extension, or a successor in 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 IP completion day and ending with the end of the period referred to in sub-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 mark the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(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 respect of the existing ITM application or the existing request for EU extension (as the case may be).

(3)The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(b) and made within the period mentioned in sub-paragraph (1)(c) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to 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 IP completion 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 disregarded 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 with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the existing request for EU extension was filed.

Application for registration under this Act based upon an existing ITM application or an existing request for EU extension recorded in the International Register on or after IP completion dayU.K.

29(1)This paragraph applies where—

(a)either—

(i)an existing ITM application has been filed with the International Bureau in respect of a trade mark and the date accorded to the international registration of the trade mark pursuant to Article 3(4) is a date on or after IP completion day; or

(ii)an existing request for EU extension in respect 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 3ter(2) is a date on or after IP completion day;

(b)the person who filed the existing ITM application or (as the case may be) the existing request for EU extension, or a successor in 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 the period of nine months beginning with the date referred to in sub-paragraph (a)(i) or (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 mark the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(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 respect of the existing ITM application or the existing request for EU extension (as the case may be).

(3)The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(b) and made within the period mentioned in sub-paragraph (1)(c) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to 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 disregarded 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 with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the existing request for EU extension was filed.

Right to claim seniority where seniority has been claimed by an existing ITM application or an existing request for EU extensionU.K.

30(1)Where an existing ITM application or an existing 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 to 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 partially), subject to paragraph 31, the proprietor of the relevant mark is deemed 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 registered prior 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 registration of a trade mark “pursuant to this Part” means an application that is of the type mentioned in paragraph 28(1)(b) or 29(1)(b) and that is made within the period mentioned in paragraph 28(1)(c) or 29(1)(c) (as the case may be).

Determination of invalidity and liability to revocation in relation to claim of seniority under paragraph 30U.K.

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 court 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 liable 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 mark 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 date prior to—

(i)where the application for registration of the relevant mark was based on an existing ITM application and there has been no claim of priority, the date of registration accorded pursuant to Article 3(4) to the 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 been no claim of priority, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);

(iii)where the application for registration of the 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 accorded 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 be 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 court 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 mark 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 date prior to—

(i)where the application for registration of the relevant mark was based on an existing ITM application and there has been no claim of priority, the date of registration accorded pursuant to Article 3(4) to the 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 been no claim of priority, the date on which the request was recorded in the International Register pursuant to Article 3ter(2);

(iii)where the application for registration of the 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 accorded 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 be treated as if it never had effect.

(7)Where the application for registration of the relevant mark was based on an existing request for EU extension a right of priority claimed pursuant to Article 35 of the European Union Trade Mark Regulation in respect of the request 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 International Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the request for EU extension was filed.

(8)References in sub-paragraphs (5) and (6) to sections 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 allowed 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 removed from the registration, the registration of the trade mark 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 and sub-paragraphs (3) and (6) shall be construed accordingly.

(10)The provisions of paragraph 16 apply in relation to an application under this paragraph as they apply to an application under paragraph 15.

PART 4U.K.Transformation applications which are pending on IP completion day

Transformation applicationsU.K.

32(1)In this Part, references to a “transformation application” are to an application for transformation of an international registration which has been cancelled (a “cancelled international registration”) into an application for 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 satisfied.

(2)The conditions referred to in sub-paragraph (1) are—

(a)the transformation application was filed before IP completion day with the European Union Intellectual Property Office;

(b)as at the time immediately before IP completion day the transformation application has neither been granted nor refused by the European Union Intellectual Property Office under the European Union Trade Mark Regulation; and

(c)the international registration was not cancelled at the request of the Patent Office as Office of origin for the international registration 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 European Union Trade Mark Regulation pursuant to the transformation application; and

(b)the reference to the transformation application being “refused” means the transformation application being subject to the provisions in Article 204(5) of the European Union Trade Mark Regulation.

Application for registration based upon a cancelled international registrationU.K.

33(1)This paragraph applies where—

(a)a person who has filed a transformation application 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 is the same as the trade mark which was the subject of the cancelled international 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 IP completion day and ending with the end of the relevant period; and

(c)on or before the date of the transformation application 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 accordance with Article 189(2) of the European Union Trade Mark Regulation; or

(ii)was the subject of an existing ITM application 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 references to “granted” and “refused” having the same meaning as given by paragraph 27(4)).

(2)Where this paragraph applies by virtue of sub-paragraph (1)(c)(i), the relevant date for the purposes of establishing which rights take precedence is the earliest of—

(a)where—

(i)the protection in the European Union of the trade mark that was the subject of the cancelled international registration resulted from a request for territorial extension under Article 3ter(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 trade mark that was the subject of the cancelled international registration resulted from a request for territorial extension under Article 3ter(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 respect of the request referred to in paragraph (a)(i) or (ii).

(3)Where this paragraph applies by virtue of sub-paragraph (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 the subject of the existing ITM application pursuant to Article 3(4) or, in the case of an existing request for EU extension, the date on which the request was recorded in the International Register pursuant to Article 3ter(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 respect 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 Register within a period of six months beginning with the day after the priority date recorded in the International Register in respect of the international application for protection of the trade mark which is the same as the one in respect of which the request for extension was filed.

(5)The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1)(a) and made within the period mentioned in sub-paragraph (1)(b) shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in sub-paragraph (2) or (3) (as the case may be) and the date of the application for registration of the trade mark under this Act.

(6)Paragraphs 30 and 31 apply in relation to an application for a trade mark under this Act of the type mentioned in sub-paragraph (1)(a) and 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 or an existing request for EU extension and an existing ITM application and an existing request for EU extension had the same meaning as they have in this paragraph; and

(b)the references to an existing ITM application included references to a “protected EU designation”.

(7)In this paragraph—

(a)an “existing ITM application” means an international application which contains a request for extension of the protection resulting from an international registration to the European Union under Article 3ter(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 pursuant to Article 3ter(2) which has been filed with the Office of origin or the International 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 IP completion day falls;

(d)a “protected EU designation” means an international 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 5U.K.Interpretation

InterpretationU.K.

34(1)In this Schedule—

• “comparable trade mark (IR)” has the meaning given by paragraph 1(4);

• “the Common Regulations” means the Common Regulations under the Madrid Agreement concerning the international registration of marks and the Madrid Protocol in force on 1^st November 2017;

• “corresponding (IR)” has the meaning given by paragraph 3(4);

• “existing IR(EU)” has the meaning given by paragraph 1(1);

• “expired IR(EU)” has the meaning given by paragraph 23(1);

• “international application” has the meaning given by 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);

• “the previous EUTM Regulations” means Council Regulation (EC) No 207/2009 of 26th February 2009 on the European Union trade mark and Council Regulation (EC) No 40/94 of 20^th December 1993 on the Community trade mark;

• “protected international trade mark (UK)” has the same meaning as in the Trade Marks (International Registration) Order 2008;

(2)References in this Schedule to—

(a)an “Article” are to an Article of the Madrid Protocol;

(b)an Article of the European Union Trade mark Regulation include references to any equivalent Article contained in the previous EUTM Regulations;

(c)the European Union Trade Mark Regulation include 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 Union Trade Mark Regulation as an EU collective mark or an EU certification mark;

(e)a “Rule” are to a Rule of the Common Regulations.

(3)In this Schedule, references to a request for territorial 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.]

Section 105.

SCHEDULE 3U.K. Transitional provisions

IntroductoryU.K.

1(1)In this Schedule—U.K.

• “existing registered mark” means a trade mark, certification trade mark or service mark registered under the 1938 Act immediately before the commencement of this Act;

• “the 1938 Act” means the M1Trade Marks Act 1938; and

• “the old law” means that Act and any other enactment or rule of law applying to existing registered marks immediately before the commencement of this Act.

(2)For the purposes of this Schedule—

(a)an application shall be treated as pending on the commencement of this Act if it was made but not finally determined before commencement, and

(b)the date on which it was made shall be taken to be the date of filing under the 1938 Act.

Existing registered marksU.K.

2(1)Existing registered marks (whether registered in Part A or B of the register kept under the 1938 Act) shall be transferred on the commencement of this Act to the register kept under this Act and have effect, subject to the provisions of this Schedule, as if registered under this Act.U.K.

(2)Existing registered marks registered as a series under section 21(2) of the 1938 Act shall be similarly registered in the new register.

Provision may be made by rules for putting such entries in the same form as is required for entries under this Act.

(3)In any other case notes indicating that existing registered marks are associated with other marks shall cease to have effect on the commencement of this Act.

Effects of registration: infringementU.K.

4(1)Sections 9 to 12 of this Act (effects of registration) apply in relation to an existing registered mark as from the commencement of this Act and section 14 of this Act (action for infringement) applies in relation to infringement of an existing registered mark committed after the commencement of this Act, subject to sub-paragraph (2) below.U.K.

The old law continues to apply in relation to infringements committed before commencement.

(2)It is not an infringement of—

(a)an existing registered mark, or

(b)a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,

to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.

Infringing goods, material or articlesU.K.

5U.K.Section 16 of this Act (order for delivery up of infringing goods, material or articles) applies to infringing goods, material or articles whether made before or after the commencement of this Act.

Rights and remedies of licensee or authorised userU.K.

6(1)Section 30 (general provisions as to rights of licensees in case of infringement) of this Act applies to licences granted before the commencement of this Act, but only in relation to infringements committed after commencement.U.K.

(2)Paragraph 14 of Schedule 2 of this Act (court to take into account loss suffered by authorised users, &c.) applies only in relation to infringements committed after commencement.

Co-ownership of registered markU.K.

7U.K.The provisions of section 23 of this Act (co-ownership of registered mark) apply as from the commencement of this Act to an existing registered mark of which two or more persons were immediately before commencement registered as joint proprietors.

But so long as the relations between the joint proprietors remain such as are described in section 63 of the 1938 Act (joint ownership) there shall be taken to be an agreement to exclude the operation of subsections (1) and (3) of section 23 of this Act (ownership in undivided shares and right of co-proprietor to make separate use of the mark).

Assignment, &c. of registered markU.K.

8(1)Section 24 of this Act (assignment or other transmission of registered mark) applies to transactions and events occurring after the commencement of this Act in relation to an existing registered mark; and the old law continues to apply in relation to transactions and events occurring before commencement.U.K.

(2)Existing entries under section 25 of the 1938 Act (registration of assignments and transmissions) shall be transferred on the commencement of this Act to the register kept under this Act and have effect as if made under section 25 of this Act.

Provision may be made by rules for putting such entries in the same form as is required for entries made under this Act.

(3)An application for registration under section 25 of the 1938 Act which is pending before the registrar on the commencement of this Act shall be treated as an application for registration under section 25 of this Act and shall proceed accordingly.

The registrar may require the applicant to amend his application so as to conform with the requirements of this Act.

(4)An application for registration under section 25 of the 1938 Act which has been determined by the registrar but not finally determined before the commencement of this Act shall be dealt with under the old law; and sub-paragraph (2) above shall apply in relation to any resulting entry in the register.

(5)Where before the commencement of this Act a person has become entitled by assignment or transmission to an existing registered mark but has not registered his title, any application for registration after commencement shall be made under section 25 of this Act.

(6)In cases to which sub-paragraph (3) or (5) applies section 25(3) of the 1938 Act continues to apply (and section 25(3) and (4) of this Act do not apply) as regards the consequences of failing to register.

Licensing of registered markU.K.

9(1)Sections 28 and 29(2) of this Act (licensing of registered trade mark; rights of exclusive licensee against grantor’s successor in title) apply only in relation to licences granted after the commencement of this Act; and the old law continues to apply in relation to licences granted before commencement.U.K.

(2)Existing entries under section 28 of the 1938 Act (registered users) shall be transferred on the commencement of this Act to the register kept under this Act and have effect as if made under section 25 of this Act.

Provision may be made by rules for putting such entries in the same form as is required for entries made under this Act.

(3)An application for registration as a registered user which is pending before the registrar on the commencement of this Act shall be treated as an application for registration of a licence under section 25(1) of this Act and shall proceed accordingly.

The registrar may require the applicant to amend his application so as to conform with the requirements of this Act.

(4)An application for registration as a registered user which has been determined by the registrar but not finally determined before the commencement of this Act shall be dealt with under the old law; and sub-paragraph (2) above shall apply in relation to any resulting entry in the register.

(5)Any proceedings pending on the commencement of this Act under section 28(8) or (10) of the 1938 Act (variation or cancellation of registration of registered user) shall be dealt with under the old law and any necessary alteration made to the new register.

Pending applications for registrationU.K.

10(1)An application for registration of a mark under the 1938 Act which is pending on the commencement of this Act shall be dealt with under the old law, subject as mentioned below, and if registered the mark shall be treated for the purposes of this Schedule as an existing registered mark.U.K.

(2)The power of the Secretary of State under section 78 of this Act to make rules regulating practice and procedure, and as to the matters mentioned in subsection (2) of that section, is exercisable in relation to such an application; and different provision may be made for such applications from that made for other applications.

(3)Section 23 of the 1938 Act (provisions as to associated trade marks) shall be disregarded in dealing after the commencement of this Act with an application for registration.

Conversion of pending applicationU.K.

11(1)In the case of a pending application for registration which has not been advertised under section 18 of the 1938 Act before the commencement of this Act, the applicant may give notice to the registrar claiming to have the registrability of the mark determined in accordance with the provisions of this Act.U.K.

(2)The notice must be in the prescribed form, be accompanied by the appropriate fee and be given no later than six months after the commencement of this Act.

(3)Notice duly given is irrevocable and has the effect that the application shall be treated as if made immediately after the commencement of this Act.

Trade marks registered according to old classificationU.K.

12U.K.The registrar may exercise the powers conferred by rules under section 65 of this Act (adaptation of entries to new classification) to secure that any existing registered marks which do not conform to the system of classification prescribed under section 34 of this Act are brought into conformity with that system.

This applies, in particular, to existing registered marks classified according to the pre-1938 classification set out in Schedule 3 to the M2Trade Marks Rules 1986.

Claim to priority from overseas applicationU.K.

13U.K.Section 35 of this Act (claim to priority of Convention application) applies to an application for registration under this Act made after the commencement of this Act notwithstanding that the Convention application was made before commencement.

14(1)Where before the commencement of this Act a person has duly filed an application for protection of a trade mark in a relevant country within the meaning of section 39A of the 1938 Act which is not a Convention country (a “relevant overseas application”), he, or his successor in title, has a right to priority, for the purposes of registering the same trade mark under this Act for some or all of the same goods or services, for a period of six months from the date of filing of the relevant overseas application.U.K.

(2)If the application for registration under this Act is made within that six-month period—

(a)the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the relevant overseas application, and

(b)the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom in the period between that date and the date of the application under this Act.

(3)Any filing which in a relevant country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority.

A “regular national filing” means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application.

(4)A subsequent application concerning the same subject as the relevant overseas application, filed in the same country, shall be considered the relevant overseas application (of which the filing date is the starting date of the period of priority), if at the time of the subsequent application—

(a)the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding, and

(b)it has not yet served as a basis for claiming a right of priority.

The previous application may not thereafter serve as a basis for claiming a right of priority.

(5)Provision may be made by rules as to the manner of claiming a right to priority on the basis of a relevant overseas application.

(6)A right to priority arising as a result of a relevant overseas application may be assigned or otherwise transmitted, either with the application or independently.

The reference in sub-paragraph (1) to the applicant’s “successor in title” shall be construed accordingly.

(7)Nothing in this paragraph affects proceedings on an application for registration under the 1938 Act made before the commencement of this Act (see paragraph 10 above).

Duration and renewal of registrationU.K.

15(1)Section 42(1) of this Act (duration of original period of registration) applies in relation to the registration of a mark in pursuance of an application made after the commencement of this Act; and the old law applies in any other case.U.K.

(2)Sections 42(2) and 43 of this Act (renewal) apply where the renewal falls due on or after the commencement of this Act; and the old law continues to apply in any other case.

(3)In either case it is immaterial when the fee is paid.

Pending application for alteration of registered markU.K.

Revocation for non-useU.K.

17(1)An application under section 26 of the 1938 Act (removal from register or imposition of limitation on ground of non-use) which is pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.U.K.

(2)An application under section 46(1)(a) or (b) of this Act (revocation for non-use) may be made in relation to an existing registered mark at any time after the commencement of this Act.

Application for rectification, &c.U.K.

18(1)An application under section 32 or 34 of the 1938 Act (rectification or correction of the register) which is pending on the commencement of this Act shall be dealt with under the old law and any necessary alteration made to the new register.U.K.

(2)For the purposes of proceedings under section 47 of this Act (grounds for invalidity of registration) as it applies in relation to an existing registered mark, the provisions of this Act shall be deemed to have been in force at all material times.

Regulations as to use of certification markU.K.

19(1)Regulations governing the use of an existing registered certification mark deposited at the Patent Office in pursuance of section 37 of the 1938 Act shall be treated after the commencement of this Act as if filed under paragraph 6 of Schedule 2 to this Act.U.K.

(2)Any request for amendment of the regulations which was pending on the commencement of this Act shall be dealt with under the old law.

Sheffield marksU.K.

20(1)For the purposes of this Schedule the Sheffield register kept under Schedule 2 to the 1938 Act shall be treated as part of the register of trade marks kept under that Act.U.K.

(2)Applications made to the Cutlers’ Company in accordance with that Schedule which are pending on the commencement of this Act shall proceed after commencement as if they had been made to the registrar.

Certificate of validity of contested registrationU.K.

21U.K.A certificate given before the commencement of this Act under section 47 of the 1938 Act (certificate of validity of contested registration) shall have effect as if given under section 73(1) of this Act.

Trade mark agentsU.K.

22(1)Rules in force immediately before the commencement of this Act under section 282 or 283 of the M3Copyright, Designs and Patents Act 1988 (register of trade mark agents; persons entitled to described themselves as registered) shall continue in force and have effect as if made under section 83 or 85 of this Act.U.K.

(2)Rules in force immediately before the commencement of this Act under section 40 of the 1938 Act as to the persons whom the registrar may refuse to recognise as agents for the purposes of business under that Act shall continue in force and have effect as if made under section 88 of this Act.

(3)Rules continued in force under this paragraph may be varied or revoked by further rules made under the relevant provisions of this Act.

Section 106(1).

SCHEDULE 4U.K. Consequential amendments

General adaptation of existing referencesU.K.

1(1)References in statutory provisions passed or made before the commencement of this Act to trade marks or registered trade marks within the meaning of the M4Trade Marks Act 1938 shall, unless the context otherwise requires, be construed after the commencement of this Act as references to trade marks or registered trade marks within the meaning of this Act.U.K.

(2)Sub-paragraph (1) applies, in particular, to the references in the following provisions—

Patents and Designs Act 1907 (c.29)U.K.

2(1)The Patents and Designs Act 1907 is amended as follows.U.K.

(2)In section 62 (the Patent Office)—

(a)in subsection (1) for “this Act and the Trade Marks Act 1905” substitute “ the Patents Act 1977, the Registered Designs Act 1949 and the Trade Marks Act 1994 ”; and

(b)in subsections (2) and (3) for “the Board of Trade” substitute “ the Secretary of State ”.

(3)In section 63 (officers and clerks of the Patent Office)—

(a)for “the Board of Trade” in each place where it occurs substitute “ the Secretary of State ”; and

(b)in subsection (2) omit the words from “and those salaries” to the end.

(4)The repeal by the M21Patents Act 1949 and the M22Registered Designs Act 1949 of the whole of the 1907 Act, except certain provisions, shall be deemed not to have extended to the long title, date of enactment or enacting words or to so much of section 99 as provides the Act with its short title.

Patents, Designs, Copyright and Trade Marks (Emergency) Act 1939(c.107)U.K.

3(1)The Patents, Designs, Copyright and Trade Marks (Emergency) Act 1939 is amended as follows.U.K.

(2)For section 3 (power of comptroller to suspend rights of enemy or enemy subject) substitute—

“3 Power of comptroller to suspend trade mark rights of enemy or enemy subject.

(1)Where on application made by a person proposing to supply goods or services of any description it is made to appear to the comptroller—

(a)that it is difficult or impracticable to describe or refer to the goods or services without the use of a registered trade mark, and

(b)that the proprietor of the registered trade mark (whether alone or jointly with another) is an enemy or an enemy subject,

the comptroller may make an order suspending the rights given by the registered trade mark.

(2)An order under this section shall suspend those rights as regards the use of the trade mark—

(a)by the applicant, and

(b)by any person authorised by the applicant to do, for the purposes of or in connection with the supply by the applicant of the goods or services, things which would otherwise infringe the registered trade mark,

to such extent and for such period as the comptroller considers necessary to enable the applicant to render well-known and established some other means of describing or referring to the goods or services in question which does not involve the use of the trade mark.

(3)Where an order has been made under this section, no action for passing off lies on the part of any person interested in the registered trade mark in respect of any use of it which by virtue of the order is not an infringement of the right conferred by it.

(4)An order under this section may be varied or revoked by a subsequent order made by the comptroller.”.

(3)In each of the following provisions—

(a)section 4(1)(c) (effect of war on registration of trade marks),

(b)section 6(1) (power of comptroller to extend time limits),

(c)section 7(1)(a) (evidence as to nationality, &c.), and

(d)the definition of “the comptroller” in section 10(1) (interpretation),

for “the Trade Marks Act 1938” substitute “ the Trade Marks Act 1994 ”.

Trade Descriptions Act 1968 (c.29)U.K.

4U.K.In the Trade Descriptions Act 1968, in section 34 (exemption of trade description contained in pre-1968 trade mark)—

(a)in the opening words, omit “within the meaning of the Trade Marks Act 1938”; and

(b)in paragraph (c), for “a person registered under section 28 of the Trade Marks Act 1938 as a registered user of the trade mark” substitute “ , in the case of a registered trade mark, a person licensed to use it ”.

Solicitors Act 1974 (c.47)U.K.

F245U.K.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

House of Commons Disqualification Act 1975 (c.24)U.K.

Restrictive Trade Practices Act 1976 (c.34)U.K.

7U.K.In Schedule 3 to the Restrictive Trade Practices Act 1976 (excepted agreements), for paragraph 4 (agreements relating to trade marks) substitute—

“4(1)This Act does not apply to an agreement authorising the use of a registered trade mark (other than a collective mark or certification mark) if no such restrictions as are described in section 6(1) or 11(2) above are accepted, and no such information provisions as are described in section 7(1) or 12(2) above are made, except in respect of—

(a)the descriptions of goods bearing the mark which are to be produced or supplied, or the processes of manufacture to be applied to such goods or to goods to which the mark is to be applied, or

(b)the kinds of services in relation to which the mark is to be used which are to be made available or supplied, or the form or manner in which such services are to be made available or supplied, or

(c)the descriptions of goods which are to be produced or supplied in connection with the supply of services in relation to which the mark is to be used, or the process of manufacture to be applied to such goods.

(2)This Act does not apply to an agreement authorising the use of a registered collective mark or certification mark if—

(a)the agreement is made in accordance with regulations approved by the registrar under Schedule 1 or 2 to the Trade Marks Act 1994, and

(b)no such restrictions as are described in section 6(1) or 11(2) above are accepted, and no such information provisions as are described in section 7(1) or 12(2) above are made, except as permitted by those regulations.”.

Copyright, Designs and Patents Act 1988 (c.48)U.K.

8(1)The Copyright, Designs and Patents Act 1988 is amended as follows.U.K.

(2)In sections 114(6), 204(6) and 231(6) (persons regarded as having an interest in infringing copies, &c.), for “section 58C of the Trade Marks Act 1938” substitute “ section 19 of the Trade Marks Act 1994 ”.

(3)In section 280(1) (privilege for communications with patent agents), for “trade mark or service mark” substitute “ or trade mark ”.

Tribunals and Inquiries Act 1992 (c.53)U.K.

9U.K.In Part I of Schedule 1 to the Tribunals and Inquiries Act 1992 (tribunals under direct supervision of Council on Tribunals), for “Patents, designs, trade marks and service marks” substitute “ Patents, designs and trade marks ”.

Section 106(2).

SCHEDULE 5U.K. Repeals and revocations