S T A T U T O R Y  I N S T R U M E N T S  
2020 No. 1317 
EXITING THE EUROPEAN UNION 
INTELLECTUAL PROPERTY 
The Patents, Trade Marks and Designs (Address for S ervice) 
(Amendment) (EU Exit) Rules 2020 
Made  - - - - 19th November 2020 
Laid before Parliament  23rd November 2020 
Coming into force  - - 1st January 2021 
The Secretary of State makes these Rules in exercis e of the powers conferred by section 8B(1)(a) 
of, and paragraph 21(b) of Schedule 7 to, the Europ ean Union (Withdrawal) Act 2018( a), section 
123 of the Patents Act 1977( b), section 78 of the Trade Marks Act 1994( c), section 250 of the 
Copyright, Designs and Patents Act 1998( d) and section 36 of the Registered Designs Act 
1949( e). 
Citation, commencement and interpretation 
1. —(1) These Rules may be cited as the Patents, Trade  Marks and Designs (Address for 
Service) (Amendment) (EU Exit) Rules 2020 and come into force on 1st January 2021 (the 
“Commencement Date”). 
(2)  In these Rules— 
“address for service rules” means— 
(a)  rule 103 of the Patents Rules; 
(b)  rule 11 of the Trade Marks Rules; 
(c)  rule 42 of the Designs Rules; 
(d)  rule 23(1A) of and Schedule 1 to the Design Right R ules; 
“Designs Rules” means the Registered Designs Rules 2006( f); 
“Design Right Rules” means the Design Right (Procee dings before Comptroller) Rules 
1989( g); 
                                                                                                                                            
(a) 2018 c. 16. Section 8B was inserted by section 18  of the European Union (Withdrawal Agreement) Act 2 020 c. 1. 
(b) 1977 c. 37; Section 123 was amended by the Patent s Act 2004 (c. 16), Schedule 2, paragraphs1 and 26 and Schedule 3 and 
by the Copyright, Patents and Designs Act 1988 (c. 48), Schedule 5. paragraph 29, Schedule 7, paragrap h 22 and Schedule 
8. 
(c) 1994 c. 26. 
(d) 1988 c. 48. 
(e) 1949 c. 88. 
(f) S.I. 2006/1975; relevant amending instruments are  S.I. 2009/546, 2013/444, 2019/638 and 2020/1050. 
(g) S.I. 1989/1130; relevant amending instruments are  S.I 2006/760, 2009/546 and 2019/638.  2“EEA address for service” means an address for serv ice in an EEA state outside the United 
Kingdom; 
“Patents Rules” means the Patents Rules 2007( a); 
“Trade Marks Rules” means the Trade Marks Rules 200 8(b). 
(3)  In the definition of “EEA address for service”, “EE A state” has the meaning it had for the 
purposes of the address for service rules immediate ly prior to IP completion day. 
Amendment to the Patents Rules 
2.  In rule 103(4) of the Patents Rules, for “an EEA s tate” substitute “Gibraltar”. 
Amendment to the Trade Marks Rules 
3.  In rule 11(4) of the Trade Marks Rules, for “an EE A state” substitute “Gibraltar”. 
Amendments to the Designs Rules 
4.  In rule 42 of the Designs Rules— 
(a)  in paragraph (4), for “an EEA state” substitute “Gi braltar”; 
(b)  omit paragraph (6). 
Amendments to the Design Right Rules 
5. —(1) The Design Right Rules are amended as follows.  
(2)  In rule 23(1A), for “an EEA state” substitute “Gibr altar”. 
(3)  In Schedule 1 (Forms), each time it appears, for “a n EEA state” substitute “Gibraltar”. 
Transitional and Saving Provision - pending proceed ings 
6. —(1) This rule applies where— 
(a)  before the Commencement Date, a person has filed an  EEA address for service for the 
purposes of proceedings in accordance with the addr ess for service rules and proceedings 
(“relevant proceedings”) have been instituted by or  against that person, and 
(b)  immediately before the Commencement Date the releva nt proceedings have not been 
finally determined. 
(2)  Where this rule applies— 
(a)  the EEA address for service continues on and after the Commencement Date to be that 
person’s address for service for the purposes of th e relevant proceedings unless and until 
that person substitutes a new address for service, and 
(b)  if that person substitutes a new address for servic e for the purposes of the relevant 
proceedings, the new address for service may be any  address for service permitted by the 
address for service rules as in force immediately b efore the Commencement Date. 
(3)  For the purposes of this rule, proceedings are fina lly determined when— 
(a)  they have been determined, and 
(b)  there is no further possibility of the determinatio n being varied or set aside (disregarding 
any power to grant permission to appeal out of time ). 
                                                                                                                                            
(a) S.I. 2007/3291; relevant amending instruments are  S.I. 2009/546, 2011/2052 and 2019/801. 
(b) S.I. 2008/1797; relevant amending instruments are  S.I. 2009/546, 2019/269 and 2020/1050.  3Transitional and Saving Provision – pending applica tions 
7. —(1) This rule applies where— 
(a)  before the Commencement Date, a person (“an applica nt”) has filed an application for the 
grant of a patent or the registration of a trade ma rk or a registered design (“an 
application”), 
(b)  the applicant has filed an EEA address for service in accordance with the address for 
service rules, and 
(c)  as at the time immediately before the Commencement Date, the application has been 
neither granted or registered nor finally refused. 
(2)  Where this rule applies— 
(a)  in relation to an application for the grant of a pa tent or the registration of a registered 
design— 
(i)  the EEA address for service continues on and after the Commencement Date to be 
the applicant’s address for service pending the gra nt of the patent or registration of 
the registered design or final refusal of the appli cation unless and until the applicant 
substitutes a new address for service, and 
(ii)  if the applicant substitutes a new address for serv ice, the new address for service may 
be any address for service permitted by the address  for service rules as in force 
immediately before the Commencement Date; 
(b)  in relation to an application for the registration of a trade mark— 
(i)  subject to sub-paragraph (ii) below, paragraph (2)( a) applies in relation to the 
application as it applies in relation to an applica tion for registration of a registered 
design; 
(ii)  where opposition proceedings are initiated in respe ct of the application on or after 
the Commencement Date, the applicant must provide a  new address for service 
which complies with the address for service rules i n force on the Commencement 
Date. 
(3)  For the purposes of this rule, an application is fi nally refused when— 
(a)  it has been determined, and 
(b)  there is no further possibility of the determinatio n being varied or set aside (disregarding 
any power to grant permission to appeal out of time ). 
Transitional and Saving Provision – comparable righ ts 
8. —(1) This rule applies to the proprietor of a compa rable trade mark (EU) or a re-registered 
design (a “relevant proprietor”). 
(2)  During the relevant period, the address for service  rules as in force immediately before the 
Commencement Date apply to a relevant proprietor in  relation to a comparable trade mark (EU) or 
a re-registered design of which they are the propri etor.  
(3)  Where during the relevant period a comparable trade  mark (EU) or a re-registered design is 
the subject of or forms the basis for any proceedin gs to which the address for service rules relate, 
which have been commenced but not finally determine d before the end of the relevant period, the 
address for service rules as in force immediately b efore the Commencement Date apply to the 
relevant proprietor until the proceedings are final ly determined. 
(4)  Paragraph (3) applies notwithstanding the removal d uring the proceedings of any 
comparable trade mark (EU) or re-registered design from the claim which formed the basis for the 
proceedings. 
(5)  For the purposes of this rule— 
(a)  proceedings are commenced where a claim, petition o r other application has been filed 
with the Patent Office or the court, and  4(b)  proceedings are finally determined in the circumsta nces referred to in rule 6(3). 
(6)  In this rule, “relevant period” means the period of  three years beginning with the 
Commencement Date.  
 
 
 
 
 Amanda Solloway  
 Parliamentary Under-Secretary of State for Science , Research and Innovation 
19th November 2020 Department for Business, Energy and Industrial Strategy 
 
 
 
 
 
 
 
 
 
EXPLANATORY NOTE 
(This note is not part of the Rules) 
These Rules amend the address for service rules con tained in; 
(a)  Rule 103 of the Patents Rules 2007 (S.I. 2007/3291) , 
(b)  Rule 11 of the Trade Marks Rules 2008 (S.I. 2008/17 97), 
(c)  Rule 42 of the Registered Designs Rules 2006 (S.I. 2006/1975), and 
(d)  Rule 23(1A) of and Schedule 1 to the Design Right ( Proceedings before Comptroller) 
Rules 1989 (S.I. 1989/1130). 
The amendments in rules 2 to 5 remove references to  “an EEA State” in the above rules and insert 
a reference to Gibraltar so that with effect from 1 st January 2021 (“the Commencement Date”) an 
address for service for the purposes of any proceed ings to which the above rules relate, must be an 
address in the United Kingdom, Gibraltar or the Cha nnel Islands. 
Rule 6 provides a transitional and saving provision  in relation to cases where proceedings are 
pending as at the Commencement Date. 
Rule 7 provides a transitional and saving provision  in relation to applications for the grant of a 
patent or the registration of a trade mark or regis tered design which are pending as at the 
Commencement Date. 
Rule 8 provides a transitional and saving provision  for proprietors of comparable trade marks 
(EU) and re-registered designs. Such proprietors ma y retain an address for service in an EEA State 
in respect of those rights for a period of 3 years from the Commencement Date (or longer if, at the 
expiry of that period, they are engaged in proceedi ngs at that date). 
A de minimis impact assessment of the effect that t his instrument will have on the costs of 
business, the voluntary sector and the public secto r has been produced.   
A copy of this instrument, the impact assessment an d the Explanatory Memorandum is available 
from the Intellectual Property Office, Concept Hous e, Cardiff Road, Newport, NP20 8QQ. The 
Explanatory Memorandum and impact assessment are al so available alongside the instrument on 
the Legislation UK website www.legislation.gov.uk ( copies have also been placed in the libraries 
of both Houses of Parliament.  5  
  
© Crown copyright 2020 
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UK202011191019   11/2020   19585 
http://www.legislation.gov.uk/id/uksi/2020/1317  
