S T A T U T O R Y  I N S T R U M E N T S  
2019 No. 269 
EXITING THE EUROPEAN UNION 
TRADE MARKS 
The Trade Marks (Amendment etc.) (EU Exit) Regulati ons 2019 
Made  - - - - 13th February 2019 
Coming into force in accordance with regulation 1  
The Secretary of State in exercise of the powers co nferred by section 8(1) of, and paragraph 1 of 
Schedule 4 and paragraph 21(b) of Schedule 7 to, th e European Union (Withdrawal) Act 2018( a) 
and by section 78 of the Trade Marks Act 1994( b) and with the consent of the Treasury makes the 
following Regulations. 
In accordance with paragraph 12(1) of Schedule 7 to  the European Union (Withdrawal) Act 2018, 
a draft of this instrument has been laid before Par liament and approved by resolution of each 
House of Parliament. 
Citation, commencement and interpretation 
1. —(1) These Regulations may be cited as the Trade Ma rks (Amendment etc.) (EU Exit) 
Regulations 2019 and come into force on exit day. 
(2)  In these Regulations— 
“the 1994 Act” means the Trade Marks Act 1994; 
“the Rules” means the Trade Mark Rules 2008( c). 
Certain trade marks registered as European Union tr ade marks to have effect under the 
1994 Act 
2.  Schedule 1 contains amendments to the 1994 Act to make provision for certain trade marks 
registered as European Union trade marks to be trea ted as registered trade marks from exit day and 
about certain applications for such marks made befo re exit day. 
Fees payable in respect of a comparable trade mark (EU) 
3.  Schedule 2, which makes provision for the payment of fees in respect of a comparable trade 
mark (EU) (as that term is defined for the purposes  of Schedule 2A to the 1994 Act as inserted by 
Schedule 1), has effect. 
                                                                                                                                            
(a) 2018 c. 16. See section 20(1) of that Act for a d efinition of “Minister of the Crown”. 
(b) 1994 c. 26. 
(c) S.I. 2008/1797 amended by S.I. 2009/546, S.I. 200 9/2089, S.I. 2012/1003, S.I. 2013/2235, S.I. 2018/8 25; there are other 
amending instruments but none are relevant.  2Other amendments to the 1994 Act 
4.  Schedule 3, which contains other amendments to the  1994 Act, has effect. 
Amendments to the Rules 
5.  Schedule 4, which contains amendments to the Rules , has effect. 
Consequential amendments etc 
6.  Schedule 5, which contains consequential amendment s, repeals, revocations, transitional and 
saving provisions, has effect. 
 
 Chris Skidmore  
 Minister of State for Universities, Science, Resea rch and Innovation 
13th February 2019 Department for Business, Energy and Industrial Strategy 
 
We consent to the making of these regulations 
 
 Jeremy Quin  
 Rebecca Harris  
 Two of the Lords Commissioners of Her Majesty’s Tr easury 
13th February 2019 
 
 
 SCHEDULE 1 Regulation 2 
Amendments to the 1994 Act to make provision for ce rtain trade marks 
registered as European Union trade marks to be trea ted as registered trade 
marks and about certain applications for such marks  
1.  The 1994 Act is amended as follows. 
2.  After section 52( a) (and before the italic heading before section 53) , insert— 
“Certain trade marks registered as European Union t rade marks to be treated as 
registered trade marks 
52A. Schedule 2A makes provision for European Union trad e marks (including certain 
expired and removed marks) to be treated as registe red trade marks with effect from exit 
day and about certain applications for a European U nion trade mark made before exit day.” 
3.  After Schedule 2, insert— 
                                                                                                                                            
(a) Section 52 was amended by the Legal Services Act 2007 (c. 29), paragraph 110 of Schedule 21, S.I. 20 16/299, regulations 2 
and 5, the Intellectual Property (Unjustified Threa ts) Act 2017 (c. 14), section 2(3) and S.I. 2018/82 5, regulation 27.  3 “SCHEDULE 2A Section 52A 
EUROPEAN UNION TRADE MARKS 
PART 1 
Existing European Union trade marks 
A trade mark registered as an existing EUTM to be t reated as registered under this 
Act 
1. —(1) A trade mark which is registered in the EUTM R egister immediately before exit 
day (an “existing EUTM”) is to be treated on and af ter exit 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 registere d 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 Sc hedule. 
(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 dat e 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 reg istration of a comparable trade mark 
(EU) under this Part. 
(6) Section 67(1) applies in relation to the provis ion 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 registra tion of the trade mark (and so no 
publication of an application). 
(7) Nothing in this Act authorises the imposition o f a fee, or the making of provision by 
rules or regulations which authorises the impositio n of a fee, in respect of any matter 
relating to a comparable trade mark (EU) (see inste ad provision made by regulations under 
Schedule 4 to the European Union (Withdrawal) Act 2 018). 
(8) For the purposes of this Act— 
(a) the date of filing of an application for regist ration 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 regis tration of a comparable trade mark 
(EU) are to the date of filing of the application; 
(c) where an earlier trade mark is a comparable tra de mark (EU), references to the 
completion of the registration procedure for the ea rlier 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 comparab le trade mark (EU), means the 
existing EUTM from which the comparable trade mark (EU) derives; 
(b) “the EUTM Register” means the register of Europ ean Union trade marks 
maintained by the European Union Intellectual Prope rty Office.  4Opt out 
2. —(1) Subject to sub-paragraph (2), the proprietor o f an existing EUTM may, at any 
time on or after exit day, serve notice on the regi strar 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 exit 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 U nited 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 interes t or any other agreement or 
document except for an assent by personal represent atives 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 havi ng an interest in the existing 
EUTM which had effect before exit 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 pr oprietor in that notice certifies that any 
such person— 
(a) has been given not less than three months’ noti ce of the proprietor’s intention to 
serve an opt out notice; or 
(b) is not affected or if affected, consents to the  opt out. 
(5) Where a notice has been served in accordance wi th this paragraph— 
(a) the comparable trade mark (EU) which derives fr om the existing EUTM ceases 
with effect from exit day to be treated as if it ha d been registered under this Act; 
and 
(b) the registrar must, where particulars of the co mparable trade mark (EU) have been 
entered in the register, remove the comparable trad e mark (EU) from the register. 
Entries to be made in the register in relation to a  comparable trade mark (EU) 
3. —(1) The registrar must as soon as reasonably pract icable after exit day enter a 
comparable trade mark (EU) in the register. 
(2) The particulars of the goods or services in res pect of which the comparable trade mark 
(EU) is treated as if it had been registered must b e 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 corresp onding 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 rectifica tion 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 registr ar as corresponding to the authentic text.  5Comparable trade mark (EU) which derives from an EU  Collective Mark or EU 
Certification Mark 
4. —(1) This paragraph applies where the European Unio n trade mark from which a 
comparable trade mark (EU) derives is an EU collect ive 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 gove rning the use of the European Union trade 
mark, submitted pursuant to the European Union Trad e Mark Regulation, which had effect 
immediately before exit day. 
(4) Where the regulations referred to in sub-paragr aph (3) are in a language other than 
English they must be filed together with a translat ion into English verified to the 
satisfaction of the registrar as corresponding to t he original text. 
(5) Paragraph 9 of Schedule 1 and paragraph 10 of S chedule 2 apply in relation to the 
translation referred to in sub-paragraph (4) as the y apply in relation to the regulations 
referred to in sub-paragraph (3). 
(6) Where the regulations or any translation are no t filed in accordance with the above 
provisions— 
(a) the registrar must remove the comparable trade mark (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 expir es within six months after exit 
day 
5. —(1) This paragraph applies to the renewal of the r egistration of a comparable trade 
mark (EU) which expires within the period beginning  with exit day and ending with the end 
of the relevant period (and accordingly section 43( 1) to (3A) does not apply). 
(2) The registration of the comparable trade mark ( EU) may be renewed at the request of 
the proprietor before the expiry of the registratio n. 
(3) Where the registration of the comparable trade mark (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 regis tration has expired and of the 
manner in which the registration may be renewed; an d 
(b) a request for renewal must be made within the p eriod of six months beginning with 
the date of the notice. 
(4) If a request for renewal is made in respect of only some of the goods or services for 
which the comparable trade mark (EU) is registered,  the registration is to be renewed for 
those goods or services only. 
(5) If the registration is not renewed in accordanc e with the above provisions, the registrar 
must remove the comparable trade mark (EU) from the  register. 
(6) Section 43(4) and (6) applies to the registrati on of a comparable trade mark (EU) 
which is renewed in accordance with the above provi sions. 
(7) In paragraph (1), the “relevant period” means t he period of six months beginning with 
the day after that on which exit day falls. 
Restoration of a comparable trade mark (EU) 
6.  Where 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  6to in section 43(5)) apply in relation to the resto ration of the comparable trade mark (EU) to 
the register. 
Raising of relative grounds in opposition proceedin gs in case of non-use 
7. —(1) Section 6A applies where an earlier trade mark  is a comparable trade mark (EU), 
subject to the modifications set out below. 
(2) Where the relevant period referred to in sectio n 6A(3)(a) (the “five-year period”) has 
expired before exit day— 
(a) the references in section 6A(3) and (6) to the earlier trade mark are to be treated as 
references to the corresponding EUTM; and 
(b) the references in section 6A(3) and (4) to the United Kingdom include the 
European Union. 
(3) Where exit day falls within the five-year perio d, in respect of that part of the five-year 
period which falls before exit day— 
(a) the references in section 6A(3) and (6) to the earlier trade mark are to be treated as 
references to the corresponding EUTM ; and 
(b) the references in section 6A to the United King dom include the European Union. 
Non-use as defence in infringement proceedings and revocation of registration of a 
comparable trade mark (EU) 
8. —(1) Sections 11A and 46 apply in relation to a com parable trade mark (EU), subject to 
the modifications set out below. 
(2) Where the period of five years referred to in s ections 11A(3)(a) and 46(1)(a) or (b) 
(the “five-year period”) has expired before exit da y— 
(a) the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 
46 to a trade mark are to be treated as references to the corresponding EUTM; and 
(b) the references in sections 11A and 46 to the Un ited Kingdom include the European 
Union. 
(3) Where exit day falls within the five-year perio d, in respect of that part of the five-year 
period which falls before exit day— 
(a) the references in sections 11A(3) and (insofar as they relate to use of a trade mark) 
46 to a trade mark, are to be treated as references  to the corresponding EUTM ; 
and 
(b) the references in sections 11A and 46 to the Un ited Kingdom include the European 
Union. 
Grounds for invalidity of registration of a trade m ark based upon an earlier 
comparable trade mark (EU) 
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 s ections 47(2A)(a) and 47(2B) (the “five-
year period”) has expired before exit day— 
(a) the references in section 47(2B) and (2E) to th e earlier trade mark are to be treated 
as references to the corresponding EUTM ; and 
(b) the references in section 47 to the United King dom include the European Union. 
(3) Where exit day falls within the five-year perio d, in respect of that part of the five-year 
period which falls before exit day— 
(a) the references in section 47(2B) and (2E) to th e earlier trade mark are to be treated 
as references to the corresponding EUTM ; and  7(b) the references in section 47 to the United King dom include the European Union. 
Reputation of a comparable trade mark (EU) 
10. —(1) Sections 5 and 10 apply in relation to a compa rable 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 exit day, references in sections 5(3) and 10(3) to— 
(a) the reputation of the mark are to be treated as  references to the reputation of the 
corresponding EUTM; and 
(b) the United Kingdom include the European Union. 
Rights conferred by registered trade mark 
11.  Section 9 applies in relation to a comparable trad e mark (EU) but as if— 
(a) the words in brackets in subsection (3) referri ng to section 40(3) were replaced 
with a reference to paragraph 1(4) of this Schedule ; and 
(b) the proviso in subsection (3) were omitted. 
Effect of claim of priority 
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 exit day there is an entry i n 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 exit day as havi ng 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 prece dence is the date of filing of the 
application for a trade mark in a Convention countr y which formed the basis for the claim 
of priority. 
Effect of seniority claim 
13. —(1) This paragraph applies where immediately befor e exit day an existing EUTM 
has a valid claim to seniority of a trade mark whic h trade mark (the “senior mark”) is a 
registered trade mark or a protected international trade mark (UK). 
(2) The comparable trade mark (EU) which derives fr om the existing EUTM is to be 
treated on and after exit day as if it had a valid claim to seniority of the senior mark. 
(3) Accordingly, where the proprietor of the compar able trade mark (EU) surrenders the 
senior mark or allows it to lapse (whether wholly o r partially), subject to paragraph 14, the 
proprietor of the comparable trade mark (EU) is dee med to continue to have the same rights 
as the proprietor would have had if the senior mark  had continued to be registered in respect 
of all the goods or services for which it was regis tered prior to the surrender or lapse. 
(4) An existing EUTM has a valid claim to seniority  of a trade mark where— 
(a) a claim has been filed in accordance with Artic le 39 or 40; and 
(b) the seniority claimed for the existing EUTM has  not lapsed in the circumstances 
referred to in Article 39.  8Determination of invalidity and liability to revoca tion in relation to claims of seniority 
14. —(1) Where pursuant to paragraph 13 a comparable tr ade mark (EU) is treated as if it 
had a valid claim to seniority of a registered trad e mark which has been— 
(a) removed from the register under section 43; or 
(b) surrendered under section 45, 
any person may apply to the registrar or to the cou rt for the declaration set out in sub-
paragraph (2). 
(2) The declaration is that if the trade mark had n ot been so removed or surrendered, the 
registration of the trade mark would have been liab le to be revoked under section 46 with 
effect from a date specified in the declaration or declared invalid under section 47. 
(3) Where the declaration is that had the trade mar k not been so removed or surrendered 
the registration of it would have been liable to be — 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) the filing date accorded pursuant to Article 3 2 to the application which 
resulted in the registration of the existing EUTM f rom which the comparable 
trade mark (EU) derives where there has been no cla im 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 E UTM 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 tra de mark (EU) is treated as if it had a 
valid claim to seniority of a protected internation al trade mark (UK) which has been— 
(a) removed from the register of trade marks mainta ined 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 cou rt for the declaration set out in sub-
paragraph (5). 
(5) The declaration is that, if the trade mark had not been so removed or surrendered, the 
protection of the mark in the United Kingdom would have been liable to be revoked under 
section 46 with effect from a date specified in the  declaration or declared invalid under 
section 47. 
(6) Where the declaration is that had the trade mar k not been so removed or surrendered 
the protection of the mark in the United Kingdom wo uld have been liable to be— 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) the filing date accorded pursuant to Article 3 2 to the application which 
resulted in the registration of the existing EUTM f rom which the comparable 
trade mark (EU) derives where there has been no cla im 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 E UTM 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.  9(7) References in sub-paragraphs (5) and (6) to sec tions 46 and 47 are to those sections as 
they apply to a protected international trade mark (UK) under an order made pursuant to 
section 54. 
(8) Where a trade mark has been surrendered or allo wed to lapse in respect of some only 
of the goods or services for which it is registered , the declaration in sub-paragraphs (2) and 
(5) is that if the goods or services had not been r emoved from the registration, the 
registration of the trade mark would have been liab le to be revoked under section 46 with 
effect from a date specified in the declaration or declared invalid under section 47 and sub-
paragraphs (3) and (6) shall be construed according ly. 
Procedure for declaration that trade mark would hav e been liable to be revoked or 
declared invalid 
15. —(1) In the case of proceedings on an application u nder paragraph 14 before the 
registrar, the rules relating to applications for a nd proceedings relating to the revocation or 
invalidation of a trade mark apply, with necessary modifications. 
(2) In the case of proceedings on an application un der paragraph 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 ex it day 
16. —(1) This paragraph applies where before exit day a n existing EUTM (or any right in 
it) is the subject of an assignment (a “relevant as signment”) which immediately before exit 
day is not recorded in the EUTM Register. 
(2) Section 25 applies in relation to a relevant as signment 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 corr esponding EUTM; or 
(b) the proprietor of the comparable trade mark (EU ). 
Effect of a licence of an existing EUTM 
17. —(1) This paragraph applies where immediately befor e exit day an existing EUTM is 
the subject of a licence (a “relevant licence”) whi ch— 
(a) authorises the doing of acts in the United King dom which would otherwise 
infringe the European Union trade mark; and 
(b) does not expire on exit day. 
(2) Subject to any agreement to the contrary betwee n the licensee and the licensor, a 
relevant licence continues to authorise the doing o f acts in the United Kingdom which 
would otherwise infringe the comparable trade mark (EU) which derives from the existing 
EUTM. 
(3) Sub-paragraph (2) is subject to— 
(a) the terms on which the relevant licence was gra nted; and 
(b) such modifications to the terms referred to in paragraph (a) as are necessary for 
their application in the United Kingdom. 
(4) Section 25 applies in relation to a relevant li cence as if it were a registrable 
transaction affecting a comparable trade mark (EU),  subject to the modifications set out 
below. 
(5) An application under section 25(1) may only be made by—  10 (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 exit day there is an e ntry in the EUTM Register relating to 
a relevant licence— 
(a) section 25(3) and (4) does not apply until afte r the expiry of the relevant period; 
and 
(b) section 25(4)(a) applies after the expiry of th e relevant period but as if the 
reference to six months beginning with the date of the transaction were a reference 
to eighteen months beginning with exit day. 
(7) In paragraph (6)(a), the “relevant period” mean s the period of twelve months 
beginning with the day after that on which exit day  falls. 
Effect of a security interest in an existing EUTM 
18. —(1) This paragraph applies where immediately befor e exit day an existing EUTM (or 
any right in or under it) is the subject of a secur ity interest (a “relevant security interest”) 
which does not terminate on exit day. 
(2) References to the existing EUTM in any document  which grants or refers to the 
relevant security interest are to be read as includ ing references to the comparable trade 
mark (EU) which derives from the existing EUTM. 
(3) Section 25 applies in relation to a relevant se curity 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; o r 
(b) the proprietor of the comparable trade mark (EU ). 
(5) Where immediately before exit day there is an e ntry 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 th e relevant period but as if the 
reference to six months beginning with the date of the transaction were a reference 
to eighteen months beginning with exit day. 
(6) In paragraph (5)(a), the “relevant period” mean s the period of twelve months 
beginning with the day after that on which exit day  falls. 
Continuity of rights in relation to a comparable tr ade mark (EU) 
19. —(1) References to an existing EUTM or the registra tion of an existing EUTM in any 
document made before exit day shall, unless there i s evidence that the document was not 
intended to have effect in the United Kingdom, be r ead on and after exit 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 con sent granted before exit day by the 
proprietor of an existing EUTM to the doing on or a fter exit day of an act in the United 
Kingdom which would otherwise infringe the comparab le trade mark (EU) which derives 
from the existing EUTM is to be treated for the pur poses of section 9 as a consent to the 
doing of that act.  11 Existing EUTM: pending proceedings 
20. —(1) This paragraph applies where on exit day an ex isting 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 prov isions contained or referred to in 
Chapter 10 of the European Union Trade Mark Regulat ion (with the exception of Articles 
128(2), (4), (6) and (7) and 132) continue to apply  to the pending proceedings as if the 
United Kingdom were still a Member State with effec t from exit day. 
(3) Where the pending proceedings involve a claim f or infringement of an existing 
EUTM, without prejudice to any other relief by way of damages, accounts or otherwise 
available to the proprietor of the existing EUTM, t he EU trade mark court may grant an 
injunction to prohibit unauthorised use of the comp arable trade mark (EU) which derives 
from the existing EUTM. 
(4) Where the pending proceedings involve a counter claim for the revocation of, or a 
declaration of invalidity in relation to, an existi ng EUTM, the EU trade mark court may 
revoke the registration of the comparable trade mar k (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 re gistered, 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 se rvices only. 
(6) Where (by virtue of sub-paragraph (4)) the regi stration of a comparable trade mark 
(EU) is revoked to any extent, the rights of the pr oprietor are deemed to have ceased to that 
extent as from— 
(a) the date of the counterclaim for revocation, or  
(b) if the court is satisfied that the grounds for revocation existed at an earlier date, 
that date. 
(7) Where (by virtue of sub-paragraph (4)) the regi stration of a comparable trade mark 
(EU) is declared invalid to any extent, the registr ation is to that extent to be deemed never 
to have been made, provided that this does not affe ct transactions past and closed. 
(8) For the purposes of this paragraph proceedings are treated as pending on exit day if 
they were instituted but not finally determined bef ore exit day. 
Existing EUTM: effect of injunction 
21. —(1) This paragraph applies where immediately befor e exit day an injunction is in 
force prohibiting the performance of acts in the Un ited Kingdom which infringe or would 
infringe an existing EUTM (a “relevant injunction”) . 
(2) Subject to any order of the court to the contra ry, a relevant injunction will have effect 
and be enforceable to prohibit the performance of a cts which infringe or would infringe 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) deri ves as if it were an injunction 
granted by the court.  12 PART 2 
Treatment of European Union trade marks which expir e during the period of six 
months ending on exit day 
Registration of certain expired European Union trad e marks 
22. —(1) This Part applies to a trade mark which was re gistered in the EUTM Register 
immediately before the transitional period but whic h, as a result of the expiry of the 
registration of the European Union trade mark durin g 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 (unde r paragraph 3, as applied by sub-
paragraph (3)) of a comparable trade mark (EU) whic h derives from an expired EUTM, the 
registration of the comparable trade mark (EU) is e xpired 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 
exit day. 
Renewal of an expired EUTM 
23.—(1) Where the registration of an expired EUTM is r enewed in accordance with 
Article 53 of the Continuing EUTM Regulation the re gistrar must, as soon as reasonably 
practicable after the date of such renewal, renew t he registration of the comparable trade 
mark (EU) which derives from the expired EUTM. 
(2) A comparable trade mark (EU) which is renewed u nder sub-paragraph (1) shall be 
renewed for a period of ten years from the expiry o f the registration of the expired EUTM. 
(3) If the registration of an expired EUTM is renew ed in respect of only some of the 
goods or services in respect of which the expired E UTM was registered before its 
registration expired, the registration of the compa rable trade mark (EU) under sub-
paragraph (1) is to be renewed for those goods or s ervices only. 
(4) If the registration of an expired EUTM is not r enewed within the time period 
permitted by Article 53 of the Continuing EUTM Regu lation— 
(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 effe ct from exit day to be treated as if 
it had been registered under this Act. 
(5) In this Schedule, the “Continuing EUTM Regulati on” means Regulation (EU) 
2017/1001 of the European Parliament and of the Cou ncil of 14 June 2017 on the European 
Union Trade Mark( a) as it has effect in EU law. 
                                                                                                                                            
(a) OJ No. L 154/1, 16.6.2017, p.1.  13 PART 3 
Applications for European Union trade marks which a re pending on exit day 
Application of Part 
24.—(1) This Part applies to an application for regist ration 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 exit day, the  application has been neither granted 
nor refused by the European Union Intellectual Prop erty Office. 
Application for registration under this Act based u pon an existing EUTM application 
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 goo ds or services. 
(2) Where an application for registration referred to in sub-paragraph (1) is made within a 
period beginning with exit day and ending with the end of the relevant period— 
(a) the relevant date for the purposes of establish ing which rights take precedence is 
the earliest of— 
 (i) the filing date accorded pursuant to Article 3 2 to the existing EUTM 
application; 
 (ii) the date of priority (if any) accorded pursua nt to a right of priority claimed 
pursuant to Article 35 in respect of the existing E UTM 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 be tween the date referred to 
in paragraph (a) and the date of the application un der this Act. 
(3) In paragraph (2), the “relevant period” means t he period of nine months beginning 
with the day after that on which exit day falls. 
Right to claim seniority where seniority has been c laimed by an existing EUTM 
application 
26.—(1) Where an existing EUTM application claims seni ority of a trade mark which 
trade mark (“the senior mark”) is a registered trad e 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”) pu rsuant to this Part. 
(2) The effect of a seniority claim made pursuant t o sub-paragraph (1) is that where 
following the registration of the relevant mark the  proprietor of that mark surrenders the 
senior mark or allows it to lapse (wholly or partia lly), subject to paragraph 27, the 
proprietor of the relevant mark is deemed to contin ue to have the same rights as the 
proprietor would have had if the senior mark had co ntinued to be registered in respect of all 
the goods or services for which it was registered p rior to the surrender or lapse. 
(3) Provision may be made by rules as to the manner  of claiming seniority pursuant to 
this paragraph. 
Determination of invalidity and liability to revoca tion in relation to claim of seniority 
under paragraph 26 
27.—(1) Where a relevant mark has claimed seniority of  a registered trade mark which 
has been—  14 (a) removed from the register under section 43; or 
(b) surrendered under section 45, 
any person may apply to the registrar or to the cou rt for the declaration set out in sub-
paragraph (2). 
(2) The declaration is that, if the trade mark had not been so removed or surrendered, the 
registration of the trade mark would have been liab le to be revoked under section 46 with 
effect from a date specified in the declaration or declared invalid under section 47. 
(3) Where the declaration is that had the trade mar k not been so removed or surrendered, 
the registration of it would have been liable to be — 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) the filing date accorded pursuant to Article 3 2 to the existing EUTM 
application on which the application for registrati on 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 E UTM 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 b e treated as if it never had effect. 
(4) Where a relevant mark has claimed seniority of a protected international trade mark 
(UK) which has been— 
(a) removed from the register of trade marks mainta ined 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 cou rt for the declaration set out in sub-
paragraph (5). 
(5) The declaration is that, if the trade mark had not been so removed or surrendered, the 
protection of the trade mark in the United Kingdom would have been liable to be revoked 
under section 46 with effect from a date specified in the declaration or declared invalid 
under section 47. 
(6) Where the declaration is that had the trade mar k not been so removed or surrendered, 
the registration of it would have been liable to be — 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) the filing date accorded pursuant to Article 3 2 to the existing EUTM 
application on which the application for registrati on 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 E UTM 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 b e treated as if it never had effect. 
(7) References in sub-paragraphs (5) and (6) to sec tions 46 and 47 are to those sections as 
they apply to a protected international trade mark (UK) under an order made pursuant to 
section 54. 
(8) Where a trade mark has been surrendered or allo wed to lapse in respect of only some 
of the goods or services for which it is registered , the declaration in sub-paragraphs (2) and 
(5) is that if the goods or services had not been r emoved from the registration, the 
registration of the trade mark would have been liab le to be revoked under section 46 with  15 effect from a date specified in the declaration or declared invalid under section 47 and sub-
paragraphs (3) and (6) shall be construed according ly. 
(9) The provisions of paragraph 15 apply in relatio n to an application under this 
paragraph as they apply to an application under par agraph 14. 
PART 4 
Restoration of European Union trade mark registrati ons and applications 
Restoration of a European Union trade mark to the E UTM Register 
28.—(1) This paragraph applies where— 
(a) before exit day a trade mark is removed from th e EUTM Register pursuant to the 
European Union Trade Mark Regulation; and 
(b) on or after exit 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 th e 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 exit day; and 
(b) the provisions of Part 1 apply to the comparabl e trade mark (EU) which derives 
from the existing EUTM. 
Restoration of an application for a European Union trade mark 
29.—(1) This paragraph applies where— 
(a) before exit day an application for a European U nion trade mark is refused pursuant 
to the European Union Trade Mark Regulation; and 
(b) on or after exit day the application (a “releva nt application”) is restored pursuant to 
the Continuing EUTM Regulation. 
(2) Where a person who has filed a relevant applica tion or a successor in title of that 
person applies for registration of the same trade m ark under this Act for some or all of the 
same goods or services, the provisions of paragraph s 25, 26 and 27 apply to the relevant 
application as if it were an existing EUTM applicat ion but as if the “relevant period” in 
paragraph 25(2) meant the period of nine months beg inning with the date on which the 
relevant application is restored as referred to in sub-paragraph (1)(b). 
PART 5 
Interpretation 
Interpretation 
30.—(1) In this Schedule— 
“comparable trade mark (EU)” has the meaning given by paragraph 1(2); 
“the Continuing EUTM Regulation” has the meaning gi ven by paragraph 23(5); 
“corresponding EUTM” has the meaning given by parag raph 1(9)(a); 
“the EUTM Register” has the meaning given by paragr aph 1(9)(b); 
“existing EUTM” has the meaning given by paragraph 1(1); 
“existing EUTM application” has the meaning given b y paragraph 24(1);  16 “expired EUTM” has the meaning given by paragraph 2 2(1); 
“the previous EUTM Regulations” means Council Regul ation (EC) No 207/2009 of 
26th February 2009 on the European Union trade mark ( a) and Council Regulation (EC) 
No 40/94 of 20 th  December 1993 on the Community trade mark( b); 
“protected international trade mark (UK)” has the s ame meaning as in the Trade Marks 
(International Registration) Order 2008( c). 
(2) References in this Schedule to— 
(a) an “Article” are to an Article of the European Union Trade Mark Regulation and 
include references to any equivalent Article contai ned in the previous EUTM 
Regulations; 
(b) the European Union Trade Mark Regulation includ e 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.”. 
                                                                                                                                            
(a) OJ No. L 78, 24.3.2009, p.1. 
(b) OJ No. L 11, 14.1.1994, p.1. 
(c) S.I. 2008/2206.  17  SCHEDULE 2 Regulation 3 
Fees payable in respect of a comparable trade mark (EU) 
1.  The renewal of the registration of a comparable tr ade mark (EU) under section 43 of the 1994 
Act is subject to the payment of a renewal fee and,  in the circumstances referred to in section 
43(3) of the 1994 Act, payment of an additional ren ewal fee. 
2.  The renewal of the registration of a comparable tr ade mark (EU) under paragraph 5 of 
Schedule 2A to the 1994 Act is subject to the payme nt of a renewal fee as if the renewal had been 
requested under section 43(1) of the 1994 Act befor e the expiry of the registration. 
3.  If a renewal fee is paid in respect of only some o f the goods or services for which a 
comparable trade mark (EU) is registered, the regis tration is to be renewed for those goods or 
services only.  
4.  A request for information or inspection of documen ts relating to a comparable trade mark 
(EU) made under section 67 of the 1994 Act is subje ct to payment of the appropriate fee (if any). 
5.  The Trade Marks (Fees) Rules 2008( a) apply to comparable trade marks (EU) as they appl y 
to other registered trade marks. 
6.  The Commissioners for Her Majesty’s Revenue and Cu stoms may by regulations made by 
statutory instrument require the proprietor or a li censee of a comparable trade mark (EU) who is 
giving notice under section 89 of the 1994 Act to p ay such fees in respect of the notice as may be 
specified by the regulations. 
7.  Regulations under paragraph 6 may make different p rovision as respects different classes of 
case to which they apply and may include such incid ental and supplementary provisions as the 
Commissioners consider expedient.  
8.  A statutory instrument containing regulations unde r paragraph 6 is subject to annulment in 
pursuance of a resolution of either House of Parlia ment. 
9.  The Trade Marks (Customs) Regulations 1994, to the  extent that they make provision which 
could be made under paragraph 6, are to be treated as if they had been made under paragraph 5 as 
well as under section 90 of the 1994 Act. 
 SCHEDULE 3 Regulation 4 
Other amendments to the 1994 Act 
Further amendments to the 1994 Act 
1.  The 1994 Act is further amended as follows. 
Absolute grounds for refusal of registration 
2. —(1) Section 3( b) is amended as follows. 
(2)  In subsection (4), omit “or by any provision of EU law”. 
(3)  In subsection (4A)— 
                                                                                                                                            
(a) S.I. 2008/1958 as amended by S.I. 2009/2089, rule s 15 to 19, S.I. 2010/33, rules 13 to 14, S.I. 2012 /1003, rule 3(2), S.I. 
2013/2236, rules 2(1) to (c). 
(b) Section 3 was amended by S.I. 2011/1043, article 6(2)(a) and S.I. 2018/825, regulation 4.  18 (a)  at the end of paragraph (a) insert “or”; 
(b)  omit paragraph (b) (together with the final “or”); 
(c)  in paragraph (c), omit “or the EU”. 
(4)  Omit subsection (4B). 
(5)  In subsection (4D)— 
(a)  at the end of paragraph (a) insert “or”; 
(b)  omit paragraph (b) (together with the final “or”); 
(c)  in paragraph (c), omit “or the EU”. 
Relative grounds for refusal of registration 
3. —(1) Section 5( a) is amended as follows. 
(2)  In subsection (3) omit “(or, in the case of a Europ ean Union trade mark or international trade 
mark (EC), in the European Union)”. 
(3)  In subsection (4)(aa), omit “any provision of EU la w, or”. 
Meaning of “earlier trade mark” 
4. —(1) Section 6( b) is amended as follows. 
(2)  In subsection (1)(a)— 
(a)  after “registered trade mark” omit “,” and insert “ or”; 
(b)  omit “European Union trade mark or international tr ade mark (EC)”. 
(3)  After subsection (1)(a) insert— 
“(aa) a comparable trade mark (EU) or a trade mark registered pursuant to an 
application made under paragraph 25 of Schedule 2A which has a valid claim to 
seniority of an earlier registered trade mark or pr otected international trade mark 
(UK) even where the earlier trade mark has been sur rendered or its registration has 
expired;”. 
(4)  Omit subsection (1)(b). 
(5)  In subsection (1)(ba)(i)— 
(a)  before “has been converted” insert “prior to exit d ay”; and 
(b)  for “within paragraph (b) from an earlier trade mar k” substitute “of an earlier registered 
trade mark or protected international trade mark (U K) even where the earlier trade mark 
has been surrendered or its registration has expire d”. 
(6)  After subsection (1) insert— 
“(1A) In subsection (1), “protected international t rade mark (UK)” has the same meaning 
as in the Trade Marks (International Registration) Order 2008.” 
(7)  In subsection (2) omit “or (b)”. 
(8)  After subsection (2) insert— 
“(2A) References in this Act to an earlier trade ma rk include a trade mark in respect of 
which an application for registration has been made  pursuant to paragraph 25 of Schedule 
2A and which if registered would be an earlier trad e mark by virtue of subsection (1)(aa), 
subject to its being so registered.” 
                                                                                                                                            
(a) Section 5 amended by S.I. 2004/946, regulations 3  and 7(1), S.I. 2004/2332, regulations 2 and 3, S.I . 2011/1043, article 
4(1), S.I. 2016/299, the Schedule, paragraph 1 and S.I. 2018/825, regulation 5. 
(b) Section 6 was amended by S.I. 1999/1899, regulati on 13(1), S.I. 2004/2332, regulations 2 and 4, S.I.  2016/299, the 
Schedule, paragraph 1 and S.I. 2018/825, regulation s 7.  19 Raising of relative grounds in opposition proceedin gs in case of non-use 
5. —(1) Section 6A( a) is amended as follows. 
(2)  In subsection (1)(b) for “(b)” substitute “(aa)”. 
(3)  Omit subsections (5) and (5A). 
Right to prevent goods entering the UK without bein g released for free circulation 
6. —(1) Section 10A is amended as follows. 
(2)  In subsection (1)(a) for “EU” substitute “United Ki ngdom”. 
(3)  In subsection (5), after “intellectual property rig hts” insert “as amended from time to time”. 
Limits on effect of registered trade mark 
7. —(1) Section 11( b) is amended as follows. 
(2)  Omit subsection (1A). 
(3)  In subsection (1B), omit “or (1A)”. 
Order as to disposal of infringing goods, material or articles 
8.  In section 19(6)(a)( c) omit “(including that section as applied by regul ation 4 of the 
Community Trade Mark Regulations 2006 (SI 2006/1027 ))”. 
Grounds for invalidity of registration 
9.  In section 47( d) omit subsections (2D) and (2DA). 
Meaning of “European Union trade mark” 
10.  In section 51( e), in the definition of “the European Union Trade M ark Regulation” at the end 
insert “(as it had effect immediately before exit d ay)”. 
Power to make provision in connection with European  Union Trade Mark Regulation 
11.  Omit section 52. 
Privilege for communications with registered trade mark agents 
12. —(1) Section 87(3) is amended as follows. 
(2)  At the end of paragraph (c) insert “or”. 
(3)  After paragraph (c) insert— 
“(d) a person whose name appears on the list of pro fessional representatives for trade 
mark matters maintained by the European Union Intel lectual Property Office 
referred to in Article 120 of the European Union Tr ade Mark Regulation.” 
(4)  After subsection (3) insert— 
                                                                                                                                            
(a) Section 6A was inserted by S.I. 2004/946, regulat ions 3 and 4 and amended by S.I. 2008/1067 regulati ons 3 and 4, S.I. 
2011/1043, article 4(1), S.I. 2016/299, the Schedul e, paragraph 1 and S.I. 2018/825, regulation 8. 
(b) Section 11 was amended by S.I. 2018/825, regulati on 12. 
(c) Section 19 was amended by S.I. 2006/1028, Schedul e 2, paragraph 6. 
(d) Section 47 was amended by S.I. 2004/946, regulati ons 3 and 6, S.I. 2008/1067, regulations 3 and 5, S .I. 2011/1043 article 
4(1), S.I. 2016/299, the Schedule, paragraph 1 and S.I. 2018/825, regulation 23. 
(e) Section 51 was amended by S.I. 2016/299, regulati ons 2 and 4 and S.I. 2018/825, regulation 26.  20 “(4) Where a trade mark attorney is a person fallin g within subsection (3)(d), subsection 
(2) applies as if the reference to a matter mention ed in subsection (1) were a reference to a 
matter relating to the protection of a trade mark.”  
Minor definitions 
13.  In section 103( a), omit subsection (3). 
 Index of defined expressions 
14. —(1) Section 104 is amended as follows. 
(2)  After the entry in the table for “commencement (of this Act)” insert— 
 
“comparable trade mark (EU) Schedule 2A, paragraph 
1(2)” 
(3)  After the entry in the table for “date of applicati on” insert— 
 
“date of application (comparable trade mark (EU)) S chedule 2A, paragraph 
1(8)(b)” 
(4)  After the entry in the table for “date of filing” i nsert— 
 
“date of filing (comparable trade mark (EU)) Schedu le 2A, paragraph 
1(8)(a)” 
(5)  After the entry in the table for “date of registrat ion” insert— 
 
“date of registration (comparable trade mark (EU)) Schedule 2A, paragraph 
1(4)” 
 
 SCHEDULE 4 Regulation 5 
Amendments to the Rules 
Amendments to the Rules 
1.  The Rules are amended in accordance with paragraph s 2 to 11. 
2. —(1) Rule 2 is amended as follows. 
(2)  In the definition of “fast track opposition”, sub-p aragraph (b), for “or in the EU, or is 
protected in one or another of those territories as  an international trade mark (UK) or (EU)” 
substitute “or is protected in the UK as an interna tional trade mark (UK)”. 
(3)  In paragraph (2) after “in the Act” insert “, a ref erence to a schedule is a reference to that 
schedule to the Act”. 
3.  After rule 2 insert— 
“2A Comparable trade mark (EU) 
These Rules apply to a comparable trade mark (EU) a s they apply to other registered trade 
marks.” 
                                                                                                                                            
(a) Section 103 was amended by S.I. 2011/1043, articl e 6(1)(d).  21 4. —(1) Rule 4 is amended as follows. 
(2)  In sub-paragraph (1) omit “by rules under section 7 9 (fees)”. 
(3)  In sub-paragraph (2) omit “by those rules”. 
(4)  After sub-paragraph (2) insert— 
“(3) In this rule, “prescribed” means— 
(a) in relation to a registered trade mark other th an a comparable trade mark (EU), 
prescribed by rules under section 79 (fees); 
(b) in relation to a comparable trade mark (EU), pr escribed by virtue of regulations 
under Schedule 4 to the European Union (Withdrawal)  Act 2018.” 
5.  After rule 5 insert— 
“5A Application for registration based upon an exist ing EUTM application; Schedule 
2A paragraph 25 
(1) Where an application for registration is made i n accordance with paragraph 25 of 
Schedule 2A, the application for registration under  rule 5 must specify— 
(a) the number accorded to the existing EUTM applic ation; 
(b) the filing date accorded to the existing EUTM a pplication; and 
(c) the date of priority (if any) accorded pursuant  to a right of priority claimed in 
respect of the existing EUTM application. 
(2) Where— 
(a) a right of priority has been claimed (“a priori ty claim”) in respect of the existing 
EUTM application; or 
(b) the seniority of a registered trade mark or a p rotected international trade mark 
(UK) has been claimed (“a seniority claim”) under p aragraph 26 of Schedule 2A, 
the application for registration under rule 5 must,  in addition, specify the information 
provided in paragraph (3). 
(3) The information is— 
(a) in relation to a priority claim, the informatio n specified in rule 6(1)(a) to (c); and 
(b) in relation to a seniority claim, the number of  the registered trade mark or 
protected international trade mark (UK) from which the trade mark the subject of 
the application claims seniority and the seniority date. 
(4) The registrar may, in any particular case, by n otice require the applicant to file, within 
such period of not less than one month as the notic e may specify, such documentary 
evidence as the registrar may require certifying, o r verifying to the satisfaction of the 
registrar— 
(a) the filing date accorded to the existing EUTM a pplication, the representation of the 
mark and the goods or services covered by the exist ing EUTM application; and 
(b) in relation to a priority claim, the date of fi ling of the overseas application, the 
country or registering or competent authority, the representation of the mark and 
the goods or services covered by the overseas appli cation.” 
 
6.  In rule 11(4) for “another EEA state” substitute “ an EEA state”. 
7.  In rule 14(3) for “section 6(1)(a) or (b)” substit ute “section 6(1)(a) or (aa)”. 
8.  In rule 17A(6)(d), omit “or (EU)”. 
9.  After rule 29 insert—  22 “29A Filing of regulations for EU collective and cer tification marks; Schedule 2A, 
paragraph 4 
Regulations governing the use of a comparable trade  mark (EU) which is a collective mark 
or a certification mark and any translation require d to be filed under paragraph 4 of 
Schedule 2A must be filed within a period of three months following the date of notice 
from the registrar.” 
10.  After rule 37 insert— 
“37A Restoration of a European Union trade mark; Sch edule 2A, paragraph 28 
A request for the registration of a comparable trad e mark (EU) following the restoration of 
a European Union trade mark under paragraph 28 of S chedule 2A must include— 
(a) a representation of the European Union trade ma rk; 
(b) the registration number of that mark; 
(c) the name and address of the proprietor; 
(d) the goods or services in respect of which that mark is registered; 
(e) the priority date (if any) accorded pursuant to  a claim of priority filed in respect of 
that mark pursuant to the European Union Trade Mark  Regulation and the 
information specified in rule 6(1)(a) to (c) in res pect of that priority claim; 
(f) the number of the registered trade mark or inte rnational trade mark (UK) from 
which that mark claimed seniority (if any) and the seniority date.”. 
11. —(1) Rule 47 is amended as follows. 
(2)  At the end of paragraph (a) insert “or, in the case  of a comparable trade mark (EU), as 
determined in accordance with paragraph 1 of Schedu le 2A”. 
(3)  At the end of paragraph (b) insert “(which in the c ase of a comparable trade mark (EU) is the 
date of registration of the corresponding EUTM in t he EUTM Register)”. 
(4)  After paragraph (c) insert— 
“(ca) in the case of a comparable trade mark (EU)— 
 (i) the priority date (if any) accorded pursuant t o a claim of priority filed in 
respect of the corresponding EUTM pursuant to the E uropean Union Trade 
Mark Regulation; and 
 (ii) the number of the registered trade mark or in ternational trade mark (UK) from 
which the corresponding EUTM claimed seniority (if any) and the seniority 
date; 
(cb) where the mark is registered pursuant to an ap plication referred to in paragraph 26 
of Schedule 2A— 
 (i) the priority date (if any) accorded pursuant t o a claim to a right to priority 
made under paragraph 25(2)(a)(ii) of Schedule 2A; a nd 
 (ii) the number of the registered trade mark or in ternational trade mark (UK) from 
which the application claims seniority (if any) and  the seniority date;”. 
(5)  Omit paragraph (l). 
(6)  After paragraph (m)( a) insert— 
“(n) in the case of a comparable trade mark (EU) an  indication that it is derived from an 
existing EUTM, including the number of the correspo nding EUTM.”. 
                                                                                                                                            
(a) Paragraph (m) was inserted by S.I. 2018/825, regu lation 43.   23  SCHEDULE 5 Regulation 6 
Consequential amendments, repeals, revocations, tra nsitional and saving 
provisions 
Consequential amendments 
1.  In section 24D(5)(b) of the Registered Designs Act  1949( a) omit “(including that section as 
applied by regulation 4 of the Community Trade Mark  Regulations 2006 (SI 2006/1027))”. 
2.  In sections 114(6)(c), 204(6)(c) and 231(6)(c) of the Copyright, Designs and Patents Act 
1988( b) omit “(including that section as applied by regul ation 4 of the Community Trade Mark 
Regulations 2006 (SI 2006/1027))”. 
3.  In regulation 5(7)(b) of the Olympics Association Right (Infringement Proceedings) 
Regulations 1995( c) omit “(including that section as applied by regul ation 4 of the Community 
Trade Marks Regulations 2006)”. 
4.  In regulation 1C(5)(d) of the Community Design Reg ulations 2005( d) omit “(including that 
section as applied by regulation 4 of the Community  Trade Mark Regulations 2006 (SI 
2006/1027))”. 
5.  In regulation 4(8)(b) of the Olympics, Paralympics  and London Olympics Association Rights 
(Infringement Proceedings) Regulations 2010( e) omit “(including that section as applied by 
regulation 4 of the Community Trade Marks Regulatio ns 2006)”. 
Repeals and revocations 
6.  The enactments listed in column 1 of the Table are  repealed or revoked to the extent specified 
in column 2. 
 
Enactment Extent of repeal or revocation 
The Legal Services Act 2007( f) Schedule 12, paragraph 110 
The Intellectual Property (Unjustified 
Threats) Act 2017( g) Section 3 
Community Trade Mark (Amendment) 
Regulations 2008( h) In its entirety 
The European Union Trade Mark 
Regulations 2016( i) Regulations 6 to 12 
The Trade Marks Regulations 2018( j) Regulations 7(2), 8(6), 23(7) and 27 
Regulation (EU) 2017/1001 of the European 
Parliament and of the Council of 14th June 
2017 on the European Union trade mark( k) In its entirety 
Commission Implementing Regulation (EU) 
2018/626 of 5th March 2018( l) In its entirety 
Commission Delegated Regulation (EU) In its entiret y 
                                                                                                                                            
(a) 1949 c. 88 as amended by S.I. 2006/1028, schedule  1, paragraph 3. 
(b) 1988 c. 48. 
(c) S.I. 1995/3325 as amended by S.I. 2010/2477, regu lation 6. 
(d) S.I. 2005/2339 as amended by S.I. 2006/1028, sche dule 3, paragraph 9. 
(e) S.I. 2010/2477. 
(f) 2007 c. 29. 
(g) 2017 c. 14. 
(h) S.I. 2008/1959. 
(i) S.I. 2016/299. 
(j) S.I. 2018/825. 
(k) O.J. No. L 154/1, 16.6.2017, p.1. 
(l) O.J. No. L 104/1, 24.4.2018, p.37.  24 2018/625 of 5th March 2018( a) 
Transitional and Saving Provisions 
7. —(1) Any application or proceeding under the 1994 A ct which was made or commenced 
before the coming into force of these Regulations s hall be dealt with under the 1994 Act as it had 
effect before regulation 4 came into force. 
(2)  The repeal of section 52 of the 1994 Act (Power to make provision in connection with 
European Union Trade Mark Regulation) does not affe ct any proceedings which are pending on 
the coming into force of these Regulations before t he EU trade mark courts designated by 
regulation 12 of the Community Trade Mark Regulatio ns 2006( b) insofar as such proceedings 
relate to the application and enforcement of a Euro pean Union trade mark in the United Kingdom. 
 
EXPLANATORY NOTE 
(This note is not part of the Regulations) 
These Regulations are made in exercise of the power s conferred by section 8(1) of the European 
Union (Withdrawal) Act 2018 (c.16) (“the EUWA”) in order to address failures of retained EU 
law to operate effectively and other deficiencies ( in particular under paragraphs (c), (d) and (g) of 
section 8(2) of the EUWA) and paragraph 1 of Schedu le 4 of the EUWA (in relation to the 
charging of fees or other charges by the registrar under the Trade Marks Act 1994 (c.26) (“the 
1994 Act”) in connection with the exercise of funct ions conferred on the registrar by virtue of 
provision made under section 8(1)). 
Schedule 1 to these Regulations inserts new Schedul e 2A into the 1994 Act. 
Part 1 of Schedule 2A provides that a trade mark wh ich is registered immediately before exit day 
as a European Union trade mark under Regulation (EU ) 2017/1001 of the European Parliament 
and of the Council of 14 June 2017 on the European Union trade mark (OJ No. L 154, 16.6.2017, 
p.1) (“the EUTM Regulation”) is to be treated on an d after exit day as if it had been applied for 
and registered as a trade mark under the 1994 Act ( unless the proprietor opts not to receive such a 
mark) and the provisions of the 1994 Act are expres sed to apply to such marks as they apply to 
other marks registered under the 1994 Act, except a s provided to the contrary. 
Part 1 contains provisions which adapt the applicat ion of various provisions (for example the 
raising of relative grounds in opposition proceedin gs in case of non-use under section 6A of the 
1994 Act) which rely upon the applicant or defendan t being able to demonstrate that the trade 
mark has been put to genuine use in the UK, by prov iding that in considering whether such 
conditions have been met, there will be included ge nuine use of the trade mark in the European 
Union prior to exit day. It also contains provision s setting out the effect on a trade mark derived 
from a European Union trade mark of transactions (s uch as the grant of a licence or a security 
interest) entered into prior to exit day in relatio n to that European Union trade mark and also the 
conduct of proceedings which are pending on exit da y before the courts in the United Kingdom 
which have been designated as EU trade marks courts  for the purposes of the EUTM Regulation. 
Part 2 of Schedule 2A makes provision for European Union trade marks which have expired 
during the period of 6 months ending on exit day (a nd which accordingly are not covered by the 
provisions in Part 1). Subject to their renewal in accordance with the EUTM Regulation, such 
marks will be treated on and after exit day as if t hey had been applied for and registered under the 
1994 Act and the provisions of Part 1 apply to such  marks. 
Part 3 provides that where an application for a Eur opean Union trade mark is pending on exit day, 
the applicant may file an application for registrat ion of the same mark under the 1994 Act and 
such application may claim the filing date, the pri ority date (if any) and seniority of another 
                                                                                                                                            
(a) O.J. No. L 104/1, 24.4.2018, p.1. 
(b) S.I. 2006/1027 as amended by, S.I. 2008/1959, 201 1/1043, 2016/299 and by the Intellectual Property ( Unjustified Threats) 
Act 2017 (c.14), section 3.  25 national mark (if any) of the application for the E uropean Union trade mark on which it is based. 
Such an application must be made within 9 months of  exit day. 
Part 4 provides that where a European Union trade m ark is removed from the register prior to exit 
day and is restored to the register after exit day pursuant to the EUTM Regulation, the proprietor 
may within a period of 6 months following the resto ration request that the trade mark be treated as 
if it were subject to Part 1. Similar provision app lies in relation to an application for a European 
Union trade mark which is refused and subsequently restored. 
Schedule 2 to the Regulations (made pursuant to par agraph 1 of Schedule 4 to the EUWA) makes 
provision for the payment of fees in relation to tr ade marks which derive from European Union 
trade marks pursuant to the provisions in Schedule 1 and provides that the Trade Marks (Fees) 
Rules 2008 (S.I. 2008/1958) apply to such marks as they apply to other registered trade marks 
under the 1994 Act. 
Schedule 3 contains other amendments to the 1994 Ac t by removing EU references which are no 
longer appropriate. 
Schedule 4 contains amendments to the Trade Marks R ules 2008 (S.I. 2008/ 1797) which are 
made under section 78 of the 1994 Act and reflect c hanges to procedural matters arising out of the 
amendments to the 1994 Act made under these Regulat ions. 
Schedule 5 contains various consequential amendment s, repeals, revocations, transitional and 
saving provisions arising out of the provisions con tained in Schedules 1 to 4 of the Regulations. In 
particular it revokes the EUTM Regulation and the r elated Commission Implementing Regulation 
(EU) 2018/626 of 5th  March 2018 and Commission Delegated Regulation (EU ) 2018/625 of 5th  
March 2018. 
A full impact assessment has not been produced for this instrument as no significant impact on the 
private, voluntary sector or public sector is fores een. A copy of this instrument and the 
Explanatory Memorandum is available from the Intell ectual Property Office, Concept House, 
Cardiff Road, Newport, NP20 8QQ. The explanatory me morandum is also available alongside the 
instrument on the Legislation UK website www.legisl ation.gov.uk (copies have also been placed 
in the libraries of both Houses of Parliament). 
  
  
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http://www.legislation.gov.uk/id/uksi/2019/269  
