S T A T U T O R Y  I N S T R U M E N T S  
2019 No. 1335 
EXITING THE EUROPEAN UNION 
DESIGNS 
TRADE MARKS 
The Registered Designs and Trade Marks (Isle of Man ) 
(Amendment) (EU Exit) Order 2019 
Made  - - - - 8th October 2019 
Coming into force in accordance with article 1 
 
At the Court at Buckingham Palace, the 8th day of O ctober 2019 
Present, 
The Queen’s Most Excellent Majesty in Council 
Her Majesty, in exercise of the powers conferred on  Her by sections 37(5) and 47 of the 
Registered Designs Act 1949( a) and section 108(2) of the Trade Marks Act 1994( b), is pleased, by 
and with the advice of Her Privy Council, to make t he following Order: 
Citation and commencement 
1.  This Order may be cited as the Registered Designs and Trade Marks (Isle of Man) 
(Amendment) (EU Exit) Order 2019 and comes into for ce on exit day. 
Amendments to Schedule 1 to the Registered Designs (Isle of Man) Order 2013 
2.  Schedule 1 to the Registered Designs (Isle of Man)  Order 2013( c) is amended in accordance 
with Schedule 1 to this Order. 
Amendments to the Schedule to the Trade Marks (Isle  of Man) Order 2013 
3.  The Schedule to the Trade Marks (Isle of Man) Orde r 2013( d) is amended in accordance with 
Schedule 2 to this Order. 
 
 Ceri King  
 Deputy Clerk of the Privy Council 
                                                                                                                                            
(a) 1949 c.88. 
(b) 1994 c. 26. 
(c) S.I. 2013/2533. 
(d) S.I. 2013/2601, amended by S.I 2018/1157.  2 SCHEDULE 1 Article 2 
Amendments to the Registered Designs (Isle of Man) Order 2013 
1.  Schedule 1 to the Registered Designs (Isle of Man)  Order 2013 is amended as follows. 
2.  In paragraph 5, in the inserted section 1B (requir ement of novelty and individual character), in 
subsection (6)(a), for “the European Economic Area” , substitute “the geographical area 
comprising the United Kingdom and the European Econ omic Area”. 
3.  In paragraph 11, in the inserted section 7A (infri ngements of rights in registered designs), in 
subsection (4), after “market in” insert “the Unite d Kingdom or”. 
4.  In paragraph 16— 
(a)  in the inserted section 11ZA (grounds for invalidit y of registration), in subsection (1A)(b) 
omit subparagraphs (i) and (ii) and insert “by virt ue of registration under this Act or an 
application for such registration.”; 
(b)  in the inserted section 11ZB (applications for decl aration of invalidity), in subsection 
(4)— 
(i)  omit “or the Community Design Regulation”; 
(ii)  omit “, the holder of the registered Community desi gn”. 
5.  After paragraph 18 insert— 
“18A.  Before section 13, insert— 
“Application of the Act to certain registered Commun ity designs 
12A.  Schedule 1A makes provision— 
(a) for registered Community designs (including cer tain designs whose 
registration has expired or which have been removed  from the register) to be 
treated as registered under this Act with effect fr om exit day, and 
(b) about certain applications for registered Commu nity designs made before 
exit day. 
Application of the Act to certain international des igns 
12B.  Schedule 1B makes provision— 
(a) for certain designs which are registered in the  international register 
maintained by the International Bureau of the World  Intellectual Property 
Organization in respect of which the European Union  is designated 
(including certain designs whose registration has e xpired) to be treated as 
registered under this Act with effect from exit day , and 
(b) about certain applications made before exit day  to register in the 
international register maintained by the Internatio nal Bureau of the World 
Intellectual Property Organization a design in resp ect of which the European 
Union is designated.”.”. 
6.  In paragraph 25(2), in the inserted section 20(1B) — 
(a)  omit “or the Community Design Regulation”; 
(b)  omit “, the holder of the registered Community desi gn”. 
7.  In paragraph 28— 
(a)  in the inserted section 24D(5)—  3(i)  in paragraph (b), omit “(including that section as applied in relation to Community 
trade marks by any statutory provision having effec t in the Isle of Man)”; 
(ii)  at the end of paragraph (d) at the end of the parag raph (after the semi-colon in that 
paragraph) insert “or”; 
(iii)  at the end of paragraph (e) omit “or”; 
(iv)  omit paragraph (f); 
(b)  in subsection (5) of the inserted section 24G, for the words from “an enforceable” to the 
end substitute “anything which forms part of retain ed EU law as a result of section 3 or 4 
of the European Union (Withdrawal) Act 2018”. 
8.  After paragraph 29, insert— 
“29A.  After section 25 (certificate of contested validit y of registration), insert— 
“Privilege for communications with those on the spec ial list of professional 
designs representatives 
25A. —(1) This section applies to communications as to a ny matter relating to the 
protection of a design as a registered design. 
(2) Any such communication— 
(a) between a person and a professional designs rep resentative; or 
(b) for the purposes of obtaining, or in response t o a request for, information 
which a person is seeking for the purpose of instru cting a professional 
designs representative, 
is privileged from, or in Scotland protected agains t, disclosure in legal proceedings 
in the same way as a communication between a person  and a solicitor or, as the case 
may be, a communication for the purpose of obtainin g, or in response to a request 
for, information which a person is seeking for the purpose of instructing a solicitor. 
(3) In subsection (2) “professional designs represe ntative” means a person whose 
name appears on the special list of professional re presentatives for design matters 
maintained by the European Union Intellectual Prope rty Office referred to in Article 
78(4) of Council Regulation (EC) 6/2002 of 12th Dec ember 2001 on Community 
designs as it has effect in EU law.”.”. 
9.  After paragraph 35, insert— 
“35A.  In section 35ZA( a) (offence of unauthorised copying etc of design in  course of 
business), omit subsection (7).”. 
10.  In paragraph 40(1)(c), omit the inserted definitio ns of “Community Design Regulation” and 
“registered Community design”. 
11.  After paragraph 43, insert— 
“44.  After Schedule 1, insert— 
                                                                                                                                            
(a) Section 35ZA was inserted by the Intellectual Pro perty Act 2014 (c.18), section 13.  4 “SCHEDULE 1A Section 12A 
EUROPEAN COMMUNITY REGISTERED DESIGNS 
PART 1 
Existing registered Community designs 
Designs registered as Community designs to be treat ed as registered under the 
Act 
1. —(1) A design which, immediately before exit day, i s entered in the RCD 
register and has been published in the Community De signs Bulletin as mentioned in 
Article 73(1) (an “existing registered Community de sign”) is to be treated on and 
after exit day as if an application for its registr ation had been made, and it had been 
registered, under this Act. 
(2) A registered design which comes into being by v irtue of sub-paragraph (1) is 
referred to in this Schedule as a “re-registered de sign”. 
(3) This Act applies to a re-registered design as i t applies to other registered 
designs except as otherwise provided in this Schedu le. 
(4) For the purposes of this Act— 
(a) the date of registration of a re-registered des ign is the date on which the 
existing registered Community design from which the  re-registered design 
derives was treated as registered under the Communi ty Design Regulation, 
and 
(b) the date of the application of a re-registered design is the date treated, under 
Article 38, as the date of filing of the applicatio n for the registration of the 
existing registered Community design from which the  re-registered design 
derives. 
(5) Any fee provided for by regulations under Sched ule 4 to the European Union 
(Withdrawal) Act 2018 in respect of any matter rela ting to a re-registered design 
applies in the Isle of Man in respect of that matte r. 
(6) The following provisions of this Act do not app ly to a re-registered design— 
(a) section 7A(6); 
(b) section 18. 
(7) In this Schedule— 
(a) “the RCD register” means the register of regist ered Community designs 
maintained under Article 72; 
(b) “the Community Design Regulation” means Council  Regulation (EC) No 
6/2002 of 12th December 2001 on Community Designs a s it had effect 
immediately before exit day. 
Entries to be made in the register in relation to d esigns treated as registered 
under this Act 
2. —(1) The registrar must as soon as reasonably pract icable on or after exit day 
enter a re-registered design in the register of des igns. 
(2) The obligation under section 22(1) (inspection of registered designs) applies to 
a reregistered design on and after the day on which  the re-registered design is entered 
in the register (notwithstanding that no certificat e of registration has been granted).  5Opt out 
3. —(1) Subject to sub-paragraph (2), the proprietor o f an existing registered 
Community design may at any time on or after exit d ay serve a notice on the 
registrar that the design is not to be treated as i f it had been registered under this Act. 
(2) A notice under sub-paragraph (1) may not be ser ved where on or after exit 
day— 
(a) the re-registered design which derives from the  existing registered 
Community design (or any interest in it)— 
 (i) has been assigned or otherwise transferred exc ept by an assent by 
personal representatives, or 
 (ii) has had an interest created in it by a mortga ge, licence or other 
instrument; or 
(b) proceedings based on the re-registered design h ave been initiated by the 
proprietor or with the proprietor’s consent. 
(3) A notice served under sub-paragraph (1) must— 
(a) identify the existing registered Community desi gn; and 
(b) include the name and address of any person havi ng an interest in the 
existing registered Community design which had effe ct before exit day in 
the United Kingdom and in respect of which an entry  was recorded in the 
RCD register. 
(4) A notice under sub-paragraph (1) is of no effec t unless the proprietor in that 
notice certifies that any such person— 
(a) has been given not less than three months’ noti ce of the proprietor’s 
intention to serve such a notice; or 
(b) is not affected by, or if affected consents to,  the notice. 
(5) Where a notice has been served under sub-paragr aph (1)— 
(a) the design ceases with effect from exit day to be treated as if it had been 
registered under this Act, 
(b) the obligation imposed on the registrar under p aragraph 2 (entries to be 
made in the register in relation to designs treated  as registered under this 
Act) ceases to have effect, and 
(c) the registrar must make any necessary amendment s to the register. 
Effect of claim of priority 
4. —(1) This paragraph applies where a right of priori ty has been claimed in 
accordance with Article 42 in respect of an existin g registered Community design. 
(2) The proprietor of the re-registered design whic h derives from the existing 
registered Community design is to be treated on and  after exit day as having the 
same claim of priority. 
(3) Accordingly, the relevant date for the purposes  of establishing whether (or to 
what extent) the re-registered design is new or has  individual character is the date of 
filing of the application for registration of a des ign in a convention country which 
formed the basis for the claim of priority. 
Unregistered pre-exit transfers 
5. —(1) This paragraph applies where immediately befor e exit day there is a 
transfer of an existing registered Community design  that has not been entered in the 
RCD register (a “relevant transfer”).  6(2) Section 19 (registration of assignments, etc.) applies in relation to a relevant 
transfer as if it were an assignment of the re-regi stered design which derives from the 
existing registered Community design which has been  transferred. 
Pre-exit licences to continue to have effect in the  United Kingdom 
6. —(1) This paragraph applies where immediately befor e exit day an existing 
registered Community design is the subject of a lic ence which— 
(a) authorises the doing of acts in the United King dom which would otherwise 
infringe an existing registered Community design, a nd 
(b) does not expire on exit day (a “relevant licenc e”). 
(2) Subject to any agreement to the contrary betwee n the licensee and the licensor, 
a relevant licence continues to authorise the doing  of acts which would otherwise 
infringe the right in the re-registered design whic h derives from the existing 
registered Community design. 
(3) Sub-paragraph (2) is subject to the terms on wh ich the relevant licence was 
granted, subject to such modifications as are neces sary for their application in the 
United Kingdom. 
(4) Section 19 (registration of assignments, etc.) applies in relation to a relevant 
licence as if it were a licence of the re-registere d design deriving from the existing 
registered Community design which is subject to the  relevant licence, subject to the 
following modification. 
(5) Where immediately before exit day there is an e ntry in the RCD register 
relating to the relevant licence, section 19(5) doe s not apply to the licence until after 
the expiry of the period of 12 months beginning wit h the day after that on which exit 
day falls. 
Security interests in existing registered Community  designs 
7. —(1) This paragraph applies where immediately befor e exit day an existing 
registered Community design is the subject of an in terest which has been granted as 
security and does not expire on exit day (a “releva nt security interest”). 
(2) References to the existing registered Community  design in any document 
which grants or refers to the relevant security int erest are to be read as including 
references to the re-registered design which derive s from the existing registered 
Community design. 
(3) Section 19 (registration of assignments, etc.) applies in relation to a relevant 
security interest as if it were a security interest  granted in respect of the re-registered 
design deriving from the existing registered Commun ity design which is subject to 
the relevant security interest, subject to the foll owing modification. 
(4) Where immediately before exit day there is an e ntry in the RCD register 
relating to the relevant security interest, section  19(5) does not apply to the document 
granting the interest until after the expiry of the  period of 12 months beginning with 
the day after that on which exit day falls. 
Continuity of rights in relation to an existing reg istered Community design 
8. —(1) References to an existing registered Community  design or the registration 
of an existing registered Community design in any d ocument entered into before exit 
day shall, unless there is evidence that the docume nt was not intended to have effect 
in the United Kingdom, be read on and after exit da y as including references to the 
re-registered design or the registration of the re- registered design which derives from 
the existing registered Community design.  7(2) Subject to any agreement to the contrary, a con sent granted before exit day by 
the proprietor of an existing registered Community design to the doing on or after 
exit day of an act in the United Kingdom which woul d otherwise infringe the right in 
the re-registered design which derives from the exi sting registered Community 
design is to be treated for the purposes of section  7A as a consent to the doing of that 
act granted by the registered proprietor of the re- registered design. 
Pending proceedings concerning an existing register ed Community design 
9. —(1) This paragraph applies where on exit day an ex isting registered 
Community design is the subject of proceedings whic h are pending (“pending 
proceedings”) before a court in the United Kingdom designated for the purposes of 
Article 80 (“a Community design court”). 
(2) Subject to sub-paragraphs (3) and (4), the prov isions contained or referred to in 
Title IX of the Community Design Regulation (with t he exception of Articles 86(2), 
(4), (5) and 91) shall continue to apply to the pen ding proceedings as if the United 
Kingdom were still a Member State with effect from exit day. 
(3) Where the pending proceedings involve a claim f or infringement or for 
threatened infringement of an existing registered C ommunity design, without 
prejudice to any other relief by way of damages, ac counts or otherwise available to 
the proprietor of the existing registered Community  design, the Community design 
court may grant an injunction to prohibit unauthori sed use of the re-registered design 
which derives from the existing registered Communit y design. 
(4) Where the pending proceedings involve a counter claim for a declaration of 
invalidity in relation to an existing registered Co mmunity design, the Community 
design court may declare the registration of the re -registered design which derives 
from the existing registered Community design to be  invalid (wholly or in part). 
(5) Where the registration of a re-registered desig n is declared invalid to any 
extent, the registration shall to that extent be tr eated as having been invalid from the 
date of registration or from such other date as the  court may direct. 
(6) For the purposes of this paragraph proceedings are treated as pending on exit 
day if they were instituted but not finally determi ned before exit day. 
Effect of injunction protecting an existing registe red Community design 
10. —(1) This paragraph applies where immediately befor e exit day an injunction 
is in force prohibiting the performance of acts in the United Kingdom which infringe 
or would infringe an existing registered Community design (a “relevant injunction”). 
(2) Subject to any order of the court to the contra ry, a relevant injunction will have 
effect and be enforceable to prohibit the performan ce of acts which infringe or would 
infringe the right in a re-registered design to the  same extent as in relation to the 
existing registered Community design from which the  re-registered design derives as 
if it were an injunction granted by the court. 
PART 2 
Applications for registered Community designs which  are pending at exit 
day 
Applications for registration pending immediately b efore exit day 
11. —(1) In this Part references to an existing EU appl ication are to an application 
for registration of a design under the Community De sign Regulation in respect of 
which the conditions in sub-paragraph (2) are satis fied.  8(2) The conditions referred to in sub-paragraph (1)  are that immediately before exit 
day— 
(a) the application has been accorded a filing date  pursuant to Article 38; and 
(b) the application has been neither granted nor re fused by the European Union 
Intellectual Property Office. 
12. —(1) Where a person who has filed an existing EU ap plication or a successor in 
title of that person applies for registration of th e same design under this Act within a 
period beginning with exit day and ending with the end of the relevant period, the 
relevant date for the purposes of establishing whet her (or to what extent) the design 
which is the subject of the application under this Act is new or has individual 
character is the earliest of— 
(a) the filing date accorded pursuant to Article 38  to the existing EU 
application; 
(b) the date of priority (if any) claimed under Art icle 42 in respect of the 
existing EU application. 
(2) In sub-paragraph (1), the “relevant period” mea ns the period of nine months 
beginning with the day after that on which exit day  falls. 
(3) For the purposes of this Act— 
(a) where an application is made of the type referr ed to in sub-paragraph (1) 
within the period referred to in that sub-paragraph , the date of the 
application is the filing date accorded pursuant to  Article 38 to the existing 
EU application, and 
(b) where the registrar registers a design which is  the subject of an application 
of the type referred to in sub-paragraph (1) which is made within the period 
referred to in that sub-paragraph, the date of regi stration of the design is the 
filing date accorded pursuant to Article 38 to the existing EU application. 
(4) Accordingly section 3C does not apply in relati on to the design. 
PART 3 
Registered Community designs where publication is d eferred at exit day 
Designs registered at the EUIPO immediately before exit day where publication 
is deferred 
13. —(1) In this Part references to a deferred design a re to a design registered under 
the Community Design Regulation in respect of which  the conditions in sub-
paragraph (2) are satisfied. 
(2) The conditions referred to in sub-paragraph (1)  are that immediately before exit 
day— 
(a) the design is entered in the RCD register, and 
(b) publication of the design is deferred under Art icle 50. 
14. —(1) This paragraph applies where the proprietor of  a deferred design or a 
successor in title of that person applies for regis tration of the same design under this 
Act within a period beginning with exit day and end ing with the end of the relevant 
period. 
(2) Sections 3A(4) and 3B do not apply in relation to the application. 
(3) The relevant date for the purposes of establish ing whether (or to what extent) 
the design which is the same as the deferred design  is new or has individual character 
is the earliest of—  9(a) the filing date accorded pursuant to Article 38  to the application for the 
deferred design; 
(b) the date of priority (if any) claimed under Art icle 42 in respect of the 
application for the deferred design. 
(4) If the registrar registers a design which is th e subject of an application of the 
type referred to in sub-paragraph (1) which is made  within the period referred to in 
that sub-paragraph, the date of registration of the  design is the date on which the 
deferred design which is the same as that design wa s treated as registered under the 
Community Design Regulation. 
(5) Accordingly section 3C does not apply in relati on to the design. 
(6) In sub-paragraph (1), the “relevant period” mea ns, the period of nine months 
beginning with the day after that on which exit day  falls. 
PART 4 
Treatment of registered Community designs whose reg istrations expire 
during the period of six months ending on exit day 
Application of Part 
15. —(1) This Part applies to a design in respect of wh ich the conditions in sub-
paragraph (2) are satisfied (an “expired Community design”). 
(2) The conditions referred to in sub-paragraph (1)  are that— 
(a) immediately before the transitional period, the  design was the subject of a 
registration under the Community Design Regulation,  
(b) the registration of the design expired during t he transitional period (such 
that the design did not fall within paragraph 1(1)) , and 
(c) the registration of the design would have been capable of being renewed 
under Article 13 for at least one further period of  five years had a request 
for renewal been made under Article 13 prior to tha t expiry. 
(3) An expired Community design is to be treated as  if it were an existing 
registered Community design. 
(4) The provisions of Part 1 of this Schedule apply  to an expired Community 
design as they apply to an existing Community desig n subject to the provisions of 
this Part of the Schedule. 
(5) Notwithstanding the entry in the register of de signs (under paragraph 2, as 
applied by sub-paragraph (4)) of a re-registered de sign which derives from an 
expired Community design, the right in the re-regis tered design is expired until the 
period for which it subsists is extended in accorda nce with paragraph 16 (or the re-
registered design is removed from the register in a ccordance with paragraph 16(3)). 
(6) In this paragraph, “transitional period” means the period of six months ending 
with exit day. 
Renewal of registration of an expired Community des ign 
16. —(1) Where the registration of an expired Community  design is renewed in 
accordance with Article 13(3) of the Continuing Com munity Design Regulation the 
registrar must, as soon as reasonably practicable a fter the date of such renewal, 
record in the register of designs the extension of the period for which subsists the 
right in the reregistered design which derives from  the expired Community design.  10 (2) Where the period for which the right in a re-re gistered design subsists is 
extended under sub-paragraph (1), the right is to b e treated as if it had never expired, 
with the result that— 
(a) anything done under or in relation to the right  in the period beginning with 
exit day and ending with the extension under sub-pa ragraph (1) is to be 
treated as valid, 
(b) an act which would have constituted an infringe ment of the right if it had 
not expired is to be treated as an infringement, an d 
(c) an act which would have constituted use of the design for the services of the 
Crown if the right had not expired is to be treated  as such use. 
(3) If the registration of an expired Community des ign is not renewed within the 
time period permitted by Article 13(3) of the Conti nuing Community Design 
Regulation— 
(a) the registrar must remove from the register of designs the re-registered 
design which derives from the expired Community des ign; and 
(b) the re-registered design ceases with effect fro m exit day to be treated as if it 
had been registered under this Act. 
(4) In this Schedule “the Continuing Community Desi gn Regulation” means the 
Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs 
as it has effect in EU law. 
PART 5 
Restoration of registered Community design registra tions and applications 
Restoration of registered Community design to the R CD register 
17. —(1) This paragraph applies where— 
(a) before exit day a registered Community design i s removed from the RCD 
register pursuant to the Community Design Regulatio n, and 
(b) on or after exit day the registration of the sa id design is restored pursuant to 
Article 67 of the Continuing Community Design Regul ation. 
(2) Where the proprietor of the design files a requ est with the registrar within the 
period of six months beginning with the date of suc h restoration— 
(a) the design will be treated as if it were an exi sting registered Community 
design on exit day; 
(b) the provisions of Part 1 apply to the re-regist ered design which derives from 
the existing registered Community design. 
Restoration of application for registered Community  design 
18. —(1) This paragraph applies where— 
(a) before exit day an application for a registered  Community design is refused 
pursuant to the Community Design Regulation; and 
(b) on or after exit day the application is restore d pursuant to Article 67 of the 
Continuing Community Design Regulation (a “relevant  application”). 
(2) Where a person who has filed a relevant applica tion or a successor in title of 
that person applies for registration of the same de sign under this Act within a period 
beginning with exit day and ending with the end of the relevant period, the relevant 
date for the purposes of establishing whether the d esign which is the subject of the 
application under this Act is new or has individual  character is the earliest of—  11 (a) the filing date accorded pursuant to Article 38  to the relevant application; 
(b) the date of priority (if any) claimed under Art icle 42 in respect of the 
relevant application. 
(3) In sub-paragraph (2), the “relevant period” mea ns the period of nine months 
beginning with the day on which the application is restored as referred to in sub-
paragraph (1)(b). 
PART 6 
Interpretation 
Interpretation 
19.  In this Schedule— 
“the Community Design Regulation” has the meaning g iven by paragraph 1(7); 
“the Continuing Community Design Regulation” has th e meaning given by 
paragraph 16(4); 
“existing registered Community design” has the mean ing given by paragraph 
1(1); 
“expired Community design” has the meaning given by  paragraph 15(1); 
“RCD register” has the meaning given by paragraph 1 (7); 
“re-registered design” has the meaning given by par agraph 1(2). 
20.  References in this Schedule to an “Article” are to  an Article of the Community 
Design Regulation. 
 SCHEDULE 1B Section 12B  
INTERNATIONAL DESIGNS 
PART 1 
Existing international designs 
International designs in respect of which the Europ ean Union is designated to 
be treated as registered under the Act 
1. —(1) A design which, immediately before exit day, m eets the requirements of 
subparagraph (2) (a “protected international regist ered design (EU))” is to be treated 
on and after exit day as if an application for its registration had been made, and it had 
been registered, under this Act. 
(2) The requirements referred to in sub-paragraph ( 1) are— 
(a) the design is the subject of an international r egistration which designates the 
European Union; 
(b) the international registration has been publish ed by the International Bureau 
pursuant to Article 10(3) of the Geneva Act; 
(c) the European Union Intellectual Property Office  has sent to the International 
Bureau a statement under Rule 18 bis  of the Common Regulations under the 
1999 Act and the 1960 Act of the Hague Agreement to  the effect that 
protection is granted in relation to the design, or  the period under Article 
106e(1) of the Community Design Regulation for comm unicating to the  12 International Bureau a notification of refusal in r espect of the international 
registration has expired; and 
(d) the effects of the international registration s o far as they relate to the design 
have neither been— 
 (i) refused by the European Union Intellectual Pro perty Office pursuant to 
Article 106e(1) of the Community Design Regulation;  nor 
 (ii) declared wholly invalid pursuant to Article 1 06f of the Community 
Design Regulation. 
(3) Where prior to exit day the effects of the inte rnational registration to which a 
protected international registered design (EU) is s ubject are declared partly invalid so 
far as relating to that design pursuant to Article 106f of the Community Design 
Regulation, the re-registered international design which derives from the protected 
international registered design (EU) has effect und er this Act to the extent that the 
effects of the international registration so far as  relating to the design have not been 
declared invalid. 
(4) A registered design which comes into being by v irtue of sub-paragraph (1) is 
referred to in this Schedule as a “re-registered in ternational design”. 
(5) This Act applies to a re-registered internation al design as it applies to other 
registered designs except as otherwise provided in this Schedule. 
(6) For the purposes of this Act— 
(a) the date of registration of a re-registered int ernational design is the date on 
which the protected international registered design  (EU) from which the re-
registered international design derives was treated  as registered under the 
Geneva Act, and 
(b) the date of the application of a re-registered international design is the date 
treated, under Article 9 of the Geneva Act, as the filing date of the 
application for the registration of the protected i nternational registered 
design (EU) from which the re-registered internatio nal design derives. 
(7) Any fee provided for by regulations under Sched ule 4 to the European Union 
(Withdrawal) Act 2018 in respect of any matter rela ting to a re-registered 
international design applies in the Isle of Man in respect of that matter. 
(8) The following provisions of this Act do not app ly to a re-registered 
international design— 
(a) section 7A(6); 
(b) section 18. 
(9) In this Schedule— 
(a) “the Community Design Regulation” means Council  Regulation (EC) No 
6/2002 of 12th December 2001 on Community Designs a s it had effect 
immediately before exit day; 
(b) “the Geneva Act” means the Geneva Act of the Ha gue Agreement 
Concerning the International Registration of Indust rial Designs adopted by 
the Diplomatic Conference on 2 July 1999; 
(c) “the International Bureau” means the Internatio nal Bureau of the World 
Intellectual Property Organization; and 
(d) “international registration” means the internat ional registration of an 
industrial design effected according to the Geneva Act.  13 Entries to be made in the register in relation to d esigns treated as registered 
under this Act 
2. —(1) The registrar must as soon as reasonably pract icable on or after exit day 
enter a re-registered international design in the r egister of designs. 
(2) The obligation under section 22(1) (inspection of registered designs) applies to 
a reregistered international design on and after th e day on which the re-registered 
international design is entered in the register (no twithstanding that no certificate of 
registration has been granted). 
Opt out 
3. —(1) Subject to sub-paragraph (2), the holder of th e international registration to 
which a protected international registered design ( EU) is subject (“the proprietor”) 
may at any time on or after exit day serve a notice  on the registrar that the design is 
not to be treated as if it had been registered unde r this Act. 
(2) A notice under sub-paragraph (1) may not be ser ved where on or after exit 
day— 
(a) the re-registered international design which de rives from the protected 
international registered design (EU) (or any intere st in it)— 
 (i) has been assigned or otherwise transferred exc ept by an assent by 
personal representatives, or 
 (ii) has had an interest created in it by a mortga ge, licence or other 
instrument; or 
(b) proceedings based on the re-registered internat ional design have been 
initiated by the proprietor or with the proprietor’ s consent. 
(3) A notice served under sub-paragraph (1) must: 
(a) identify the protected international registered  design (EU); and 
(b) include the name and address of any person who,  to the best of the 
proprietor’s knowledge, has an interest in the prot ected international 
registered design (EU). 
(4) A notice under sub-paragraph (1) is of no effec t unless the proprietor in that 
notice certifies that any such person— 
(a) has been given not less than three months’ noti ce of the proprietor’s 
intention to serve such a notice; or 
(b) is not affected by, or if affected consents to,  the notice. 
(5) Where a notice has been served under sub-paragr aph (1)— 
(a) the design ceases with effect from exit day to be treated as if it had been 
registered under this Act, 
(b) the obligation imposed on the registrar under p aragraph 2 (entries to be 
made in the register in relation to designs treated  as registered under this 
Act) ceases to have effect, and 
(c) the registrar must make any necessary amendment s to the register. 
Effect of claim of priority 
4. —(1) This paragraph applies where a right of priori ty has been claimed in 
accordance with Article 6 of the Geneva Act in resp ect of the international 
registration to which a protected international reg istered design (EU) is subject. 
(2) The proprietor of the re-registered internation al design which derives from the 
protected international registered design (EU) is t o be treated on and after exit day as 
having the same claim of priority.  14 (3) Accordingly, the relevant date for the purposes  of establishing whether (or to 
what extent) the re-registered international design  is new or has individual character 
is the date of filing of the application for regist ration of a design in a convention 
country or a member of the World Trade Organization  which formed the basis for 
the claim of priority. 
Unregistered pre-exit transfers 
5. —(1) This paragraph applies where immediately befor e exit day— 
(a) there is a change in ownership of the internati onal registration to which a 
protected international registered design (EU) is s ubject, 
(b) the change in ownership has effect in respect o f the European Union and the 
protected international registered design (EU), and  
(c) the change in ownership has not been entered in  the international register (a 
“relevant transfer”). 
(2) Section 19 (registration of assignments, etc.) applies in relation to a relevant 
transfer as if it were an assignment of the re-regi stered international design which 
derives from the protected international registered  design (EU) which has been 
transferred. 
Pre-exit licences to continue to have effect in the  United Kingdom 
6. —(1) This paragraph applies where immediately befor e exit day a protected 
international registered design (EU) is the subject  of a licence which— 
(a) authorises the doing of acts in the United King dom which would otherwise 
infringe the protected international registered des ign (EU), and 
(b) does not expire on exit day (a “relevant licenc e”). 
(2) Subject to any agreement to the contrary betwee n the licensee and the licensor, 
a relevant licence continues to authorise the doing  of acts which would otherwise 
infringe the re-registered international design whi ch derives from the protected 
international registered design (EU). 
(3) Sub-paragraph (2) is subject to the terms on wh ich the relevant licence was 
granted, subject to such modifications as are neces sary for their application in the 
United Kingdom. 
(4) Section 19 (registration of assignments, etc.) applies in relation to a relevant 
licence as if it were a licence of the re-registere d international design deriving from 
the protected international registered design (EU) which is subject to the relevant 
licence, subject to the following modification. 
(5) Section 19(5) does not apply to the licence unt il after the expiry of the period 
of 12 months beginning with the day after that on w hich exit day falls. 
Security interests in protected international regis tered designs (EU) 
7. —(1) This paragraph applies where immediately befor e exit day a protected 
international registered design (EU) is the subject  of an interest which has been 
granted as security and does not expire on exit day  (a “relevant security interest”). 
(2) References to the protected international regis tered design (EU), or the 
international registration to which the protected i nternational registered design (EU) 
is subject, in any document which grants or refers to the relevant security interest are 
to be read as including references to the re-regist ered international design which 
derives from the protected international registered  design (EU). 
(3) Section 19 (registration of assignments, etc.) applies in relation to a relevant 
security interest as if it were a security interest  granted in respect of the re-registered  15 design deriving from the protected international re gistered design (EU) which is 
subject to the relevant security interest, subject to the following modification. 
(4) Section 19(5) does not apply to the interest un til after the expiry of 12 months 
beginning with the day after that on which exit day  falls. 
Continuity of rights in relation to a protected int ernational registered design 
(EU) 
8. —(1) References to a protected international regist ered design (EU), or the 
international registration to which a protected int ernational registered design (EU) is 
subject, in any document entered into before exit d ay shall, unless there is evidence 
that the document was not intended to have effect i n the United Kingdom, be read on 
and after exit day as including references to the r e-registered international design or 
the registration of the reregistered international design which derives from the 
protected international registered design (EU). 
(2) Subject to any agreement to the contrary, a con sent granted before exit day by 
the holder of the international registration to whi ch a protected international 
registered design (EU) is subject to the doing on o r after exit day of an act in the 
United Kingdom which would otherwise infringe the r e-registered international 
design which derives from the protected internation al registered design (EU) is to be 
treated for the purposes of section 7A as a consent  to the doing of that act granted by 
the registered proprietor of the re-registered inte rnational design. 
Pending proceedings concerning a protected internat ional registered design 
(EU) 
9. —(1) This paragraph applies where on exit day a pro tected international 
registered design (EU) is the subject of proceeding s which are pending (“pending 
proceedings”) before a court in the United Kingdom designated for the purposes of 
Article 80 (“a Community design court”). 
(2) Subject to sub-paragraphs (3) and (4), the prov isions contained or referred to in 
Title IX of the Community Design Regulation (with t he exceptions of Articles 86(2), 
(4), (5) and 91) shall continue to apply to the pen ding proceedings as if the United 
Kingdom were still a Member State with effect from exit day. 
(3) Where the pending proceedings involve a claim f or infringement or for 
threatened infringement of a protected internationa l registered design (EU), without 
prejudice to any other relief by way of damages, ac counts or otherwise available to 
the holder of the international registration to whi ch the protected international 
registered design (EU) is subject, the Community de sign court may grant an 
injunction to prohibit unauthorised use of the re-r egistered international design 
which derives from the protected international regi stered design (EU). 
(4) Where the pending proceedings involve a counter claim for a declaration of 
invalidity in relation to a protected international  registered design (EU), the 
Community design court may declare the registration  of the re-registered 
international design which derives from the protect ed international registered design 
(EU) to be invalid (wholly or in part). 
(5) Where the registration of a re-registered inter national design is declared invalid 
to any extent, the registration shall to that exten t be treated as having been invalid 
from the date of registration or from such other da te as the court may direct. 
(6) For the purposes of this paragraph proceedings are treated as pending on exit 
day if they were instituted but not finally determi ned before exit day.  16 Effect of injunction protecting a protected interna tional registered design (EU) 
10. —(1) This paragraph applies where immediately befor e exit day an injunction 
is in force prohibiting the performance of acts in the United Kingdom which infringe 
or would infringe a protected international registe red design (EU) (a “relevant 
injunction”). 
(2) Subject to any order of the court to the contra ry, a relevant injunction will have 
effect and be enforceable to prohibit the performan ce of acts which infringe or would 
infringe the right in a re-registered international  design to the same extent as in 
relation to the protected international registered design (EU) from which the re-
registered international design derives as if it we re an injunction granted by the 
court. 
PART 2 
International registrations in respect of which the  period for refusal has 
not expired before exit day etc. 
11. —(1) In this Part references to a “pending internat ional design (EU)” are to a 
design which, immediately before exit day, meets th e requirements of sub-paragraph 
(2). 
(2) The requirements referred to in sub-paragraph ( 1) are— 
(a) the design is the subject of an international r egistration which designates the 
European Union; 
(b) the design is not the subject of— 
 (i) a refusal by the European Union Intellectual P roperty Office pursuant 
to Article 106e(1) of the Community Design Regulati on; or 
 (ii) a statement by the European Union Intellectua l Property Office under 
Rule 18 bis  of the Common Regulations under the 1999 Act and t he 
1960 Act of the Hague Agreement to the effect that protection is 
granted in relation to it; 
(c) the international registration to which the des ign is subject— 
 (i) has not been published by the International Bu reau pursuant to Article 
10(3) of the Geneva Act; or 
 (ii) has been published by the International Burea u but the period under 
Article 106e(1) of the Community Design Regulation for 
communicating to the International Bureau a notific ation of refusal in 
respect of the international registration has not e xpired. 
12. —(1) Where the holder of the international registra tion to which a pending 
international design (EU) is subject, or a successo r in title of that person, makes an 
application for registration of the same design und er this Act within a period 
beginning with exit day and ending with the end of the relevant period, the relevant 
date for the purposes of establishing whether (or t o what extent) the design which is 
the subject of the application under this Act is ne w or has individual character is the 
earliest of— 
(a) the date on which the international registratio n was treated as registered 
pursuant to Article 10(2) of the Geneva Act; 
(b) the date of priority (if any) claimed under Art icle 41 of the Community 
Design Regulation as applied by Article 106a of tha t Regulation in respect 
of the pending international design (EU). 
(2) In sub-paragraph (1), the “relevant period” mea ns the period of nine months 
beginning with the day after that on which exit day  falls.  17 (3) For the purposes of this Act— 
(a) where an application is made of the type referr ed to in sub-paragraph (1) 
within the period referred to in that sub-paragraph , the date of the 
application is the date on which the international registration to which the 
pending international design (EU) is subject was tr eated as registered 
pursuant to Article 10(2) of the Geneva Act, and 
(b) where the registrar registers a design which is  the subject of an application 
of the type referred to in sub-paragraph (1) which is made within the period 
referred to in that sub-paragraph, the date of regi stration of the design is the 
date on which the international registration to whi ch the pending 
international design (EU) is subject was treated as  registered pursuant to 
Article 10(2) of the Geneva Act. 
(4) Accordingly section 3C does not apply in relati on to the design. 
PART 3 
Treatment of international registered designs whose  registrations expire 
during the period of six months ending on exit day 
Application of Part 
13. —(1) This Part applies to a design which met the re quirements set out in 
paragraph 1(2)(b) to (d) in respect of which the co nditions in sub-paragraph (2) are 
satisfied (an “expired international design”). 
(2) The conditions referred to in sub-paragraph (1)  are that— 
(a) immediately before the transitional period, the  design was the subject of an 
international registration which designated the Eur opean Union, 
(b) the international registration expired during t he transitional period (such that 
the design did not fall within paragraph 1(1)), and  
(c) the renewal of the international registration w ould have been capable of 
being effected for the European Union in accordance  with Article 17 of the 
Geneva Act for at least one further period of five years had a request for 
renewal been made in accordance with Article 17(2) prior to that expiry. 
(3) An expired international design is to be treate d as if it were a protected 
international registered design (EU). 
(4) The provisions of Part 1 of this Schedule apply  to an expired international 
design as they apply to a protected international r egistered design (EU) subject to the 
provisions of this Part of the Schedule. 
(5) Notwithstanding the entry in the register of de signs (under paragraph 2, as 
applied by sub-paragraph (4)) of a re-registered in ternational design which derives 
from an expired international design, the right in the re-registered international 
design is expired until it is extended in accordanc e with paragraph 14 (or the re- 
registered design is removed from the register in a ccordance with paragraph 14(3)). 
(6) In this paragraph, “transitional period” means the period of six months ending 
with exit day. 
Renewal of registration of an expired international  design 
14. —(1) Where within the period beginning with exit da y and ending with the end 
of the relevant period— 
(a) the international registration to which an expi red international design was 
subject is renewed in accordance with Article 17(2)  of the Geneva Act,  18 (b) the renewal has effect in respect of the Europe an Union and the expired 
international design, and 
(c) the holder of that international registration n otifies the registrar of such 
renewal, 
the registrar must, as soon as reasonably practicab le after the date of notification, 
record in the register of designs the extension of the period for which subsists the 
right in the re-registered international design whi ch derives from the expired 
international design. 
(2) Where the period for which the right in a re-re gistered international design 
subsists is extended under sub-paragraph (1), the r ight is to be treated as if it had 
never expired, with the result that— 
(a) anything done under or in relation to the right  in the period beginning with 
exit day and ending with the extension under sub-pa ragraph (1) is to be 
treated as valid, 
(b) an act which would have constituted an infringe ment of the right if it had 
not expired is to be treated as an infringement, an d 
(c) an act which would have constituted use of the design for the services of the 
Crown if the right had not expired is to be treated  as such use. 
(3) If within the period referred to in sub-paragra ph (1) the holder fails to notify 
the registrar in accordance with sub-paragraph (1)( c)— 
(a) the registrar must remove from the register of designs the re-registered 
international design which derives from the expired  international design, 
and 
(b) the re-registered international design ceases w ith effect from exit day to be 
treated as if it had been registered under this Act . 
(4) In sub-paragraph (1), the “relevant period” mea ns the period of nine months 
beginning with the day after that on which exit day  falls. 
PART 4 
Interpretation 
Interpretation 
15. —(1) In this Schedule— 
“the Community Design Regulation” has the meaning g iven by paragraph 1(9); 
“expired international design” has the meaning give n by paragraph 13(1); 
“the Geneva Act” has the meaning given by paragraph  1(9); 
“the International Bureau” has the meaning given by  paragraph 1(9); 
“international registration” has the meaning given by paragraph 1(9); 
“protected international registered design (EU)” ha s the meaning given by 
paragraph 1(1); 
“re-registered international design” has the meanin g given by paragraph 1(4). 
(2) For the purposes of paragraphs 1(2)(b) and 11(2 )(c), where the international 
registration to which a design is subject has not b een published in its entirety but the 
design itself has been by virtue of a request made under Article 11(4)(a) of the 
Geneva Act, the international registration is to be  treated as having been 
published. ” .”.  19  SCHEDULE 2 Article 3 
Amendments to the Trade Marks (Isle of Man) Order 2 013 
1.  The Schedule to the Trade Marks (Isle of Man) Orde r 2013 is amended as follows. 
2.  In paragraph 2( a)— 
(a)  for sub-paragraph (3) substitute— 
“(3) In subsection (4), for “or by any provision of  Community law” substitute “other than 
law relating to trade marks”;”; 
(b)  in sub-paragraph (4)— 
(i)  in the inserted subsection (4A)— 
(aa)  at the end of paragraph (a) insert “or”; 
(bb)  omit paragraph (b) (together with the final “or”); 
(cc)  in paragraph (c), omit “or the EU”; 
(ii)  omit the inserted subsection (4B); 
(iii)  in the inserted subsection (4D)— 
(aa)  at the end of paragraph (a) insert “or”; 
(bb)  omit paragraph (b) (together with the final “or”); 
(cc)  in paragraph (c), omit “or the EU”. 
3.  In paragraph 3( b)— 
(a)  for sub-paragraph (2)(b) and (c) substitute— 
“(b) omit “(or, in the case of a Community trade ma rk, in the European 
Community)”. ” ; 
(b)  in sub-paragraph (5), in the inserted subsection 5( 4)(aa), omit “any provision of EU law 
or”. 
4.  In paragraph 4( c)— 
(a)  for sub-paragraph (2)(a) substitute— 
“(a) in paragraph (a)— 
 (i) after “registered trade mark” omit “,” and ins ert “or”; 
 (ii) omit “or Community trade mark;”; 
(b)  after sub-paragraph (2)(a) insert— 
“(aa) after paragraph (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 m ark or protected 
international trade mark (UK) even where the earlie r trade mark has been 
surrendered or its registration has expired; 
(ab) a comparable trade mark (IR) or a trade mark r egistered pursuant to an 
application made under paragraph 28, 29 or 33 of Sc hedule 2B which has a 
valid claim to seniority of an earlier registered t rade mark or protected 
                                                                                                                                            
(a) Paragraph 2 was substituted by S.I. 2018/1157. 
(b) Paragraph 3 was substituted by S.I. 2018/1157. 
(c) Paragraph 4 was substituted by S.I. 2018/1157.  20 international trade mark (UK) even where the earlie r trade mark has been 
surrendered or its registration has expired;”.”. 
(c)  in sub-paragraph (2)(b)— 
(i)  omit the substituted paragraph (b); and 
(ii)  in the substituted paragraph (ba)— 
(aa)  before “has been converted” insert “prior to exit d ay”; and 
(bb)  for “within paragraph (b) from an earlier trade mar k” substitute “of an earlier 
registered trade mark or protected international tr ade mark (UK) even where 
the earlier trade mark has been surrendered or its registration has expired”; 
(d)  after sub-paragraph (2) insert— 
“(2A) After subsection (1) insert— 
“(1A) In subsection (1), “protected international t rade mark (UK)” has the same 
meaning as in the Trade Marks (International Regist ration) Order 2008.”. 
(2B) In subsection (2)— 
(a) omit “or (b)”; 
(b) at the end, insert “(taking account of subsecti on (2C))”. 
(2C) 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 ha s been made pursuant to paragraph 
25 of Schedule 2A and which if registered would be an earlier trade mark by virtue 
of subsection (1)(aa), subject to its being so regi stered. 
(2B) References in this Act to an earlier trade mar k include a trade mark in respect 
of which an application for registration has been m ade pursuant to paragraph 28, 29 
or 33 of Schedule 2B and which if registered would be an earlier trade mark by 
virtue of subsection (1)(ab), subject to its being so registered. 
(2C) Where an application for registration of a tra de mark has been made pursuant 
to paragraph 25 of Schedule 2A or paragraph 28, 29 or 33 of Schedule 2B, 
subsection (l)(a) is to apply as if the date of app lication for registration of the trade 
mark were— 
(a) in the case of an application made pursuant to paragraph 25 of Schedule 2A, 
the relevant date referred to in paragraph 25(2) in  respect of that application; 
(b) in the case of an application made pursuant to paragraph 28 of Schedule 2B, 
the relevant date referred to in paragraph 28(2) in  respect of that application 
(taking account of paragraph 28(5)); 
(c) in the case of an application made pursuant to paragraph 29 of Schedule 2B, 
the relevant date referred to in paragraph 29(2) in  respect of that application 
(taking account of paragraph 29(4)); 
(d) in the case of an application made pursuant to paragraph 33 of Schedule 2B, 
the relevant date referred to in paragraph 33(2) or  (3) (as the case may be) in 
respect of that application (taking account of para graph 33(4)).”.”. 
5.  In paragraph 5( a)— 
(a)  before sub-paragraph (2)(a) insert— 
“(za) in subsection (1)(b) for “(b)” substitute “(a a)”.”; 
(b)  for sub-paragraph (2)(e) and (f) substitute— 
“(e) omit subsection (5).”. 
                                                                                                                                            
(a) Paragraph 5 was amended by S.I. 2018/1157.  21 6.  In paragraph 6A( a), in the inserted section 10A— 
(a)  in subsection (1)(a) for “EU” substitute “United Ki ngdom”; 
(b)  in subsection (5), after “intellectual property rig hts” insert “as amended from time to 
time”. 
7.  In paragraph 6B(3)( b)— 
(a)  omit the inserted section 11(1A); 
(b)  in the inserted section 11(1B), omit “or (1A)”. 
8.  After paragraph 6C( c), insert— 
“6D.  In section 12 (exhaustion of rights conferred by a  registered trade mark), in 
subsection (1), after “market in” insert “the Unite d Kingdom or”.”. 
9.  For paragraph 8 substitute— 
“8.  In section 17 (meaning of infringing goods), in su bsection (3), for “an enforceable 
Community right” substitute “anything which forms p art of retained EU law as a result of 
section 3 or 4 of the European Union (Withdrawal) A ct 2018.”. 
10.  In paragraph 10, in the substituted paragraph (a) of section 19(6), omit “(including that 
section as applied to Community trade marks by any statutory provision having effect in the Isle 
of Man)”. 
11.  In paragraph 13(3)( d), omit the inserted subsections (2D) and (2DA) of section 47. 
12.  In paragraph 13D( e), in the substituted section 51, in the definition  of “the European Union 
Trade Mark Regulation” at the end insert “(as it ha d effect immediately before exit day)”. 
13.  After paragraph 14, insert— 
“14A.  Before the italic heading before section 53, inser t— 
“Certain trade marks registered as European Union tr ade marks to be treated 
as registered trade marks 
52A.  Schedule 2A makes provision for European Union tra de marks (including 
certain expired and removed marks) to be treated as  registered trade marks with 
effect from exit day and about certain applications  for a European Union trade mark 
made before exit day.”.”. 
14.  Omit paragraph 15. 
15.  Before paragraph 16, insert— 
“15A.  After section 54 (and before the italic heading be fore section 55), insert— 
“Certain international trade marks protected in the European Union to be 
treated as registered trade marks 
54A.  Schedule 2B makes provision for international trad e marks protected in the 
European Union (including certain expired marks) to  be treated as registered trade 
marks with effect from exit day and about certain a pplications for the protection of 
                                                                                                                                            
(a) Paragraph 6A was inserted by S.I. 2018/1157. 
(b) Paragraph 6B was inserted by S.I. 2018/1157. 
(c) Paragraph 6C was inserted by S.I. 2018/1157. 
(d) Paragraph 13 was substituted by S.I. 2018/1157. 
(e) Paragraph 13D was inserted by S.I. 2018/1157.  22 an international trade mark in the European Union a nd transformation applications 
made before exit day.”.”. 
16.  For paragraph 25 substitute— 
“25.  In section 87 (privilege for communications)— 
(a) in subsection (2), for “solicitor” substitute “ advocate”; 
(b) in subsection (3)— 
 (i) at the of paragraph (c) insert “or”; 
 (ii) 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  Intellectual Property 
Office referred to in Article 120 of the European U nion Trade Mark 
Regulation.”; 
(c) after subsection (3) insert— 
“(4) Where a trade mark attorney is a person fallin g within subsection (3)(d), 
subsection (2) applies as if the reference to a mat ter mentioned in subsection (1) 
were a reference to a matter relating to the protec tion of a trade mark.”.”. 
17.  For paragraph 35 substitute— 
“35.  In section 103 (minor definitions), omit subsectio n (3).”. 
18.  In paragraph 36( a), after sub-paragraph (2) insert— 
“(2A) After the entry in the table for “commencemen t (of this Act)” insert— 
“comparable trade mark (EU) Schedule 2A, paragraph 1(2) 
comparable trade mark (IR) Schedule 2B, paragraph 1 (4)” 
(2C) After the entry in the table for “date of appl ication” insert— 
“date of application (comparable trade mark (EU)) S chedule 2A, paragraph 
1(8)(b) 
date of application (comparable trade mark (IR)) Sc hedule 2B, paragraph 
1(10)(b)” 
(2C) After the entry in the table for “date of fili ng” insert— 
“date of filing (comparable trade mark (EU)) Schedu le 2A, paragraph 
1(8)(a) 
date of filing (comparable trade mark (IR)) Schedul e 2B, paragraph 
1(10)(a)” 
(2D) After the entry in the table for “date of regi stration” insert— 
“date of registration (comparable trade mark (EU)) Schedule 2A, paragraph 1(4) 
date of registration (comparable trade mark (IR)) S chedule 2B, paragraph 1(6)” 
(2E) Before the entry in the table for “United King dom (references include Isle of Man)” 
insert— 
“the Treasury section 89(4)” ”. 
19.  After paragraph 39, insert— 
“40.  After Schedule 2, insert— 
                                                                                                                                            
(a) Paragraph 36 was substituted by S.I. 2018/1157.  23  “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 treat ed on and after exit day as if an 
application had been made, and the trade mark had b een registered, under this Act in 
respect of the same goods or services as the existi ng 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 ma rk (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 correspon ding 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 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 tr ade 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) Any fee provided for by regulations under Sched ule 4 to the European Union 
(Withdrawal) Act 2018 in respect of any matter rela ting to a comparable trade mark 
(EU) in the Isle of Man in respect of that matter. 
(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 A rticle 32 to the 
application which resulted in the registration of t he 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 applicat ion; 
(c) where an earlier trade mark is a comparable tra de mark (EU), references to 
the completion of the registration procedure for th e earlier trade mark are to 
the completion of the registration procedure in res pect 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 t rade 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.  24 Opt 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 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 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 packagin g 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 int erest or any other 
agreement or document except for an assent by perso nal 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 havi ng an interest in the 
existing EUTM which had effect before exit day in t he United Kingdom, 
and in respect of which an entry was recorded in th e 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 i f it had 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 compa rable trade 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 regist ered 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 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 rectif ication of the register by the 
substitution of an English translation of the relev ant authentic text (as determined in 
accordance with Article 147(3)) verified to the sat isfaction of the registrar as 
corresponding to the authentic text.  25 Comparable 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 colle ctive 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 Europea n Union Trade Mark 
Regulation, which had effect immediately before exi t 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 tra nslation 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  they 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 beg inning with exit day and ending 
with the end of the relevant period (and accordingl y 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 r egistration has expired and 
of the manner in which the registration may be rene wed; and 
(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) i s 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 provisions. 
(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.  26 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 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 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; an d 
(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 ; a nd 
(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 exi t 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 refer ences 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 refe rences 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 ; a nd  27 (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; an d 
(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 da y 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 p recedence is the date of filing of 
the application for a trade mark in a Convention co untry 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  which trade mark (the “senior 
mark”) is a registered trade mark or a protected in ternational 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 val id 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 (w hether wholly or partially), subject 
to paragraph 14, the proprietor of the comparable t rade mark (EU) is deemed to 
continue to have the same rights as the proprietor would have had if the senior mark  28 had continued to be registered in respect of all th e 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 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. 
Determination 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 regist ered trade mark which has been— 
(a) removed from the register under section 43; or 
(b) surrendered under section 45, 
any person may apply to the registrar or to the cou rt for the declaration set out in 
subparagraph (2). 
(2) The declaration is that if the trade mark had n ot been so removed or 
surrendered, the registration of the trade mark wou ld 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 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 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 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 inter national 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 
subparagraph (5). 
(5) The declaration is that, if the trade mark had not been so removed or 
surrendered, the protection of the mark in the Unit ed Kingdom would have been 
liable to be revoked under section 46 with effect f rom 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 Unite d Kingdom would have been 
liable to be— 
(a) revoked under section 46 with effect from a dat e prior to—  29  (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 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 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 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 serv ices had not been removed from the 
registration, the registration of the trade mark wo uld 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 subparagraphs (3) and (6) shall be construed 
accordingly. 
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 f or and proceedings relating to the 
revocation or invalidation of a trade mark apply, w ith 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 “re levant assignment”) 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  corresponding 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 licen ce”) which— 
(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.  30 (2) Subject to any agreement to the contrary betwee n 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 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— 
(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 da y. 
(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 o f a security interest (a “relevant 
security interest”) which does not terminate on exi t 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 EUT M. 
(3) Section 25 applies in relation to a relevant se curity interest as if it were a 
registrable transaction affecting a comparable trad e 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 intere st; or 
(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 da y. 
(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.  31 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 is evidence that the 
document was not intended to have effect in the Uni ted Kingdom, be read on and 
after exit day as including references to the compa rable trade mark (EU) or the 
registration of the comparable trade mark (EU) whic h 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 after exit day of an act in the 
United Kingdom which would otherwise infringe the c omparable trade mark (EU) 
which derives from the existing EUTM is to be treat ed for the purposes of section 9 
as a consent to the doing of that act. 
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 proceedi ngs”) before a court in the 
United Kingdom designated for the purposes of Artic le 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 M ember State with effect 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 existi ng EUTM, the EU trade mark court 
may grant an injunction to prohibit unauthorised us e of the comparable 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 exis ting 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 th e 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 i s registered, the revocation or 
declaration of invalidity in respect of the registr ation of the comparable trade mark 
(EU) which derives from the existing EUTM relates t o those goods or services 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 t he 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 regi stration of a comparable trade 
mark (EU) is declared invalid to any extent, the re gistration is to that extent to be 
deemed never to have been made, provided that this does not affect transactions past 
and closed. 
(8) For the purposes of this paragraph proceedings are treated as pending on exit 
day if they were instituted but not finally determi ned before exit day.  32 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 United Kingdom which infringe 
or would infringe an existing EUTM (a “relevant inj unction”). 
(2) Subject to any order of the court to the contra ry, a relevant injunction will have 
effect and be enforceable to prohibit the performan ce of acts which infringe or would 
infringe a comparable trade mark (EU) to the same e xtent 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. 
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 which, as a result of the 
expiry of the registration of the European Union tr ade mark during the transitional 
period, does not fall within paragraph 1(1) (an “ex pired 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 
subparagraph (3)) of a comparable trade mark (EU) w hich 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 com parable trade mark (EU) is 
removed from the register in accordance with paragr aph 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 t he registrar must, as soon as 
reasonably practicable after the date of such renew al, renew the registration of the 
comparable trade mark (EU) which derives from the e xpired 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 expir y of 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 expir ed EUTM was registered before its 
registration expired, the registration of the compa rable trade mark (EU) under 
subparagraph (1) is to be renewed for those goods o r services 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 .  33 (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. 
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 conditi ons 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 Intellect ual Property 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 sa me goods 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 ex isting 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 p eriod between the 
date referred to in paragraph (a) and the date of t he application under 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 registere d trade mark or a protected 
international trade mark (UK), the applicant may cl aim seniority of the senior mark 
in an application for registration of a trade mark (“a relevant mark”) pursuant to this 
Part. 
(2) The effect of a seniority claim made pursuant t o sub-paragraph (1) is that where 
following the registration of the relevant mark the  proprietor of that mark surrenders 
the senior mark or allows it to lapse (wholly or pa rtially), subject to paragraph 27,  34 the proprietor of the relevant mark is deemed to co ntinue to have the same rights as 
the proprietor would have had if the senior mark ha d continued to be registered in 
respect of all the goods or services for which it w as 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 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— 
(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 
subparagraph (2) 
(2) The declaration is that, if the trade mark had not been so removed or 
surrendered, the registration of the trade mark wou ld 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 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 
subparagraph (5). 
(5) The declaration is that, if the trade mark had not been so removed or 
surrendered, the protection of the trade mark in th e United Kingdom would have 
been liable to be revoked under section 46 with eff ect 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  35 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 regis tered, the declaration in sub-
paragraphs (2) and (5) is that if the goods or serv ices had not been removed from the 
registration, the registration of the trade mark wo uld 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 subparagraphs (3) and (6) shall be construed 
accordingly. 
(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 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 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 Regulatio n; 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 tr ade mark under this Act for some or 
all of the same goods or services, the provisions o f 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 peri od of nine months beginning with 
the date on which the relevant application is resto red as referred to in sub-paragraph 
(1)(b).  36 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); 
“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 m ark(a) and Council 
Regulation (EC) No 40/94 of 20th December 1993 on t he 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 co ntained in the previous 
EUTM Regulations; 
(b) the European Union Trade Mark Regulation includ e references to the 
previous EUTM Regulations; 
a European Union trade mark include references to a n EU collective mark and an EU 
certification mark as defined in Articles 74 and 83 . 
 SCHEDULE 2B Section 54A 
INTERNATIONAL TRADE MARKS PROTECTED IN THE 
EUROPEAN UNION 
PART 1 
Existing international trade marks protected in the  European Union 
An international trade mark protected in the Europe an Union to be treated as 
registered under this Act 
1. —(1) A trade mark which, immediately before exit da y, is an international trade 
mark which is protected in the European Union in ac cordance with Article 189(2) of 
the European Union Trade Mark Regulation (an “exist ing IR(EU)”) is to be treated 
on and after exit day as if an application had been  made, and the trade mark had been 
                                                                                                                                            
(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.  37 registered, under this Act in respect of the same g oods or services in respect of which 
the international trade mark is protected in the Eu ropean Union. 
(2) Where the international registration to which a n international trade mark is 
subject is sub-divided to reflect the making of mor e 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 trad e mark in respect of the goods or 
services covered by each subdivision of the registr ation. 
(3) Where the international registration to which a n international trade mark is 
subject has been created by virtue of Rule 27(2) (r ecording of partial change in 
ownership) (a “separate international registration” ), it is irrelevant for the purposes 
of the application of subparagraph (2) to that sepa rate international registration that 
the requests for territorial extension were made be fore 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 ma rk (IR). 
(5) This Act applies to a comparable trade mark (IR ) as it applies to other 
registered trade marks except as otherwise provided  in this Schedule. 
(6) A comparable trade mark (IR) is deemed for the purposes of this Act to be 
registered as of— 
(a) where the protection in the European Union of t he existing IR(EU) from 
which the comparable trade mark (IR) derives result ed from a request for 
territorial extension under Article 3 ter (1) (request mentioned in original 
application), the date of registration of the exist ing IR(EU) accorded 
pursuant to Article 3(4); or 
(b) where the protection in the European Union of t he existing IR(EU) from 
which the comparable trade mark (IR) derives result ed from a request for 
territorial extension under Article 3 ter (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 Ac t to be the date of registration. 
(7) Section 40(3) and (4) does not apply to the reg istration of a comparable trade 
mark (IR) under this Part. 
(8) Section 67(1) applies in relation to the provis ion of information and the 
inspection of documents relating to a comparable tr ade 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) Any fee provided for by regulations under Sched ule 4 to the European Union 
(Withdrawal) Act 2018 in respect of any matter rela ting to a comparable trade mark 
(IR) applies in the Isle of Man in respect of that matter. 
(10) For the purposes of this Act— 
(a) the date of filing of an application for regist ration of a comparable trade 
mark (IR) is the same date as the deemed date of re gistration of the 
comparable trade mark (IR) under sub-paragraph (6);  
(b) references to the date of application for regis tration of a comparable trade 
mark (IR) are to the date of filing of the applicat ion; 
(c) where an earlier trade mark is a comparable tra de mark (IR), references to 
the completion of the registration procedure for th e earlier trade mark are to 
publication by the European Union Intellectual Prop erty Office of the 
matters referred to in Article 190(2) of the Europe an Union Trade Mark 
Regulation in respect of the existing IR(EU) from w hich the comparable 
trade mark (IR) derives. 
(11) In this Schedule—  38 (a) “the International Register” means the register  of trade marks maintained by 
the International Bureau for the purposes of the Ma drid Protocol; 
(b) “international registration” means a registrati on made in the International 
Register in accordance with the Madrid Protocol; 
(c) “international trade mark” means a trade mark w hich is the subject of an 
international registration. 
Opt out 
2. —(1) Subject to sub-paragraphs (2) and (6), the pro prietor of an existing IR(EU) 
may, at any time on or after exit day, serve notice  on 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 exit day— 
(a) the comparable trade mark (IR) has been put to use in the United Kingdom 
by the proprietor or with the proprietor’s consent (which use includes 
affixing the trade mark to goods or to the packagin g 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 int erest or any other 
agreement or document except for an assent by perso nal 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 regist ration to which the existing 
IR(EU) to which the notice relates is subject; and 
(b) include the name and address of any person havi ng an interest in the 
existing IR(EU) which had effect before exit day in  the United Kingdom, 
and in respect of which an entry was recorded in th e International 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 (IR) which derives fr om the existing IR(EU) 
ceases with effect from exit day to be treated as i f it had been registered 
under this Act; and 
(b) the registrar must, where particulars of the co mparable trade mark (IR) have 
been entered in the register, remove the comparable  trade mark (IR) from 
the register. 
(6) Where an international trade mark which is prot ected in the European Union is 
treated as being more than one trade mark by virtue  of paragraph 1(2)— 
(a) an opt out notice must relate to all of the exi sting IR(EU)s which (by virtue 
of paragraph 1(2)) derive from the international tr ade mark; 
(b) the references in sub-paragraph (2) to the comp arable trade mark (IR) are to 
be read as references to any of the comparable trad e marks (IR) which 
derive from the existing IR(EU)s to which the opt o ut notice relates; and  39 (c) the references in sub-paragraph (5) to the comp arable trade mark (IR) are to 
be read as references to all of the comparable trad e marks (IR) which derive 
from the existing IR(EU)s to which the notice relat es. 
Entries to be made in the register in relation to a  comparable trade mark (IR) 
3. —(1) The registrar must as soon as reasonably pract icable after exit day enter a 
comparable trade mark (IR) in the register. 
(2) The particulars of the goods or services in res pect of which the comparable 
trade mark (IR) is treated as if it had been regist ered must be taken from the English 
language version of the entry in the International Register for the corresponding (IR). 
(3) Where on or after exit day the entry in the Int ernational Register containing the 
particulars referred to in sub-paragraph (2) is mod ified to correct an error pursuant to 
Rule 28, a person having a sufficient interest may apply to the registrar for 
rectification of the register by the substitution o f the English language version of the 
entry for the corresponding (IR) in the Internation al 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 mar k treated as an EU 
Collective Mark or EU Certification Mark 
4. —(1) This paragraph applies where the existing IR(E U) from which a 
comparable trade mark (IR) derives is dealt with fo r the purposes of the European 
Union Trade Mark Regulation as an EU collective mar k 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 Unio n Trade 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 tra nslation 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  they apply in relation to the 
regulations referred to in sub-paragraph (3). 
(6) Where the regulations or any translation are no t filed in accordance with the 
above provisions— 
(a) the registrar must remove the comparable trade mark (IR) from the register; 
and 
(b) the rights of the proprietor shall be deemed to  have ceased as from the date 
of removal. 
Renewal of a comparable trade mark (IR) which expir es within six months after 
exit day 
5. —(1) This paragraph applies to the renewal of the r egistration of a comparable 
trade mark (IR) which expires within the period beg inning with exit day and ending 
with the end of the relevant period (and accordingl y 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.  40 (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 r egistration has expired and 
of the manner in which the registration may be rene wed; and 
(b) a request for renewal must be made within the p eriod of six months 
beginning with the date of the notice. 
(4) If a request for renewal is made in respect of only some of the goods or 
services for which the comparable trade mark (IR) i s registered, the registration is to 
be renewed for those goods or services only. 
(5) If the registration is not renewed in accordanc e with the above provisions, the 
registrar must remove the comparable trade mark (IR ) from the register. 
(6) Section 43(4) and (6) applies to the registrati on of a comparable trade mark 
(IR) which is renewed in accordance with the above provisions. 
(7) In sub-paragraph (1), the “relevant period” mea ns the period of six months 
beginning with the day after that on which exit day  falls. 
Restoration of a comparable trade mark (IR) 
6.  Where a comparable trade mark (IR) is removed from  the register pursuant to 
paragraph 5, the rules relating to the restoration of the registration of a trade mark 
(referred to in section 43(5)) apply in relation to  the restoration of the comparable 
trade mark (IR) to the register. 
Raising of relative grounds in opposition proceedin gs in case of non-use 
7. —(1) Section 6A applies where an earlier trade mark  is a comparable trade mark 
(IR), subject to the modifications set out below. 
(2) Where the relevant period referred to in sectio n 6A(3)(a) (the “five-year 
period”) has expired before exit day— 
(a) the references in section 6A(3) and (6) to the earlier trade mark are to be 
treated as references to the corresponding (IR); an d 
(b) the references in section 6A(3) and (4) to the United Kingdom include the 
European Union. 
(3) Where exit day falls within the five-year perio d, in respect of that part of the 
five-year period which falls before exit day— 
(a) the references in section 6A(3) and (6) to the earlier trade mark are to be 
treated as references to the corresponding (IR); an d 
(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 (IR) 
8. —(1) Sections 11A and 46 apply in relation to a com parable trade mark (IR), 
subject to the modifications set out below. 
(2) Where the period of five years referred to in s ections 11A(3)(a) and 46(1)(a) or 
(b) (the “five-year period”) has expired before exi t 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 refer ences to the corresponding 
(IR); and  41 (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 refe rences to the 
corresponding (IR); and 
(b) the references in sections 11A and 46 to the Un ited Kingdom include the 
European Union. 
Grounds for invalidity of registration of a trade m ark based upon an earlier 
comparable trade mark (IR) 
9. —(1) Section 47 applies where an earlier trade mark  is a comparable trade mark 
(IR), subject to the modifications set out below. 
(2) Where the period of five years referred to in s ections 47(2A)(a) and 47(2B) (the 
“five-year period”) has expired before exit day— 
(a) the references in section 47(2B) and (2E) to th e earlier trade mark are to be 
treated as references to the corresponding (IR); an d 
(b) the references in section 47 to the United King dom include the European 
Union. 
(3) Where exit day falls within the five-year perio d, in respect of that part of the 
five-year period which falls before exit day— 
(a) the references in section 47(2B) and (2E) to th e earlier trade mark are to be 
treated as references to the corresponding (IR); an d 
(b) the references in section 47 to the United King dom include the European 
Union. 
Reputation of a comparable trade mark (IR) 
10. —(1) Sections 5 and 10 apply in relation to a compa rable trade mark (IR), 
subject to the modifications set out below. 
(2) Where the reputation of a comparable trade mark  (IR) falls to be considered in 
respect of any time before exit day, references in sections 5(3) and 10(3) to— 
(a) the reputation of the mark are to be treated as  references to the reputation of 
the corresponding (IR); and 
(b) the United Kingdom include the European Union. 
Rights conferred by registered trade mark 
11.  Section 9 applies in relation to a comparable trad e mark (IR) but as if— 
(a) the words in brackets in subsection (3) referri ng to section 40(3) were 
replaced with a reference to paragraph 1(6) of this  Schedule; and 
(b) the proviso in subsection (3) were omitted. 
Effect of disclaimer 
12.  Where, immediately before exit day, the protection  in the European Union of 
an existing IR(EU) is subject to a disclaimer recor ded 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 exit day as su bject to the same disclaimer (and 
section 13 applies accordingly but as if the refere nce to “publication” in subsection 
(2) was omitted).  42 Effect of claim of priority 
13. —(1) This paragraph applies where— 
(a) a right of priority was claimed in respect of a n international application for 
protection of a trade mark in accordance with Rule 9(4)(iv); 
(b) immediately before exit day there is an entry i n the International Register in 
respect of that trade mark containing particulars o f that claim of priority (a 
“claim of priority”); 
(c) the trade mark is an existing IR(EU). 
(2) Subject to sub-paragraph (4), the proprietor of  the comparable trade mark (IR) 
which derives from the existing IR(EU) is to be tre ated on and after exit day as 
having the same claim of priority. 
(3) Accordingly, the relevant date for the purposes  of establishing, in relation to 
the comparable trade mark (IR), which rights take p recedence is the date of filing of 
the application for a trade mark in a Convention co untry which formed the basis for 
the claim of priority. 
(4) Where the protection in the European Union of t he existing IR(EU) resulted 
from a request for territorial extension under Arti cle 3ter(2), the proprietor of the 
comparable trade mark (IR) which derives from the e xisting IR(EU) is to be treated 
on and after exit day as having the same claim of p riority only where the request for 
territorial extension was recorded in the Internati onal Register within a period of six 
months beginning with the day after the priority da te recorded in the International 
Register in respect of the international applicatio n referred to in sub-paragraph 
(1)(a). 
Effect of seniority claim 
14. —(1) This paragraph applies where immediately befor e exit day an existing 
IR(EU) has a valid claim to seniority of a trade ma rk which trade mark (the “senior 
mark”) is a registered trade mark or a protected in ternational trade mark (UK). 
(2) The comparable trade mark (IR) which derives fr om the existing IR(EU) is to 
be treated on and after exit day as if it had a val id claim to seniority of the senior 
mark. 
(3) Accordingly, where the proprietor of the compar able trade mark (IR) 
surrenders the senior mark or allows it to lapse (w hether wholly or partially), subject 
to paragraph 15, the proprietor of the comparable t rade 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 th e goods or services for which it was 
registered prior to the surrender or lapse. 
(4) An existing IR(EU) has a valid claim to seniori ty of a trade mark where— 
(a) a claim has been filed in accordance with Artic le 191 or 192 of the 
European Union Trade Mark Regulation in respect of the international 
registration to which the existing IR(EU) is subjec t; and 
(b) the seniority so claimed has not lapsed in the circumstances referred to in 
Article 39 of that Regulation (as it applies to int ernational registrations 
under Article 182 of that Regulation). 
Determination of invalidity and liability to revoca tion in relation to claims of 
seniority 
15. —(1) Where pursuant to paragraph 14 a comparable tr ade mark (IR) is treated 
as if it had a valid claim to seniority of a regist ered trade mark which has been— 
(a) removed from the register under section 43; or  43 (b) surrendered under section 45, 
any person may apply to the registrar or to the cou rt for the declaration set out in 
subparagraph (2). 
(2) The declaration is that if the trade mark had n ot been so removed or 
surrendered, the registration of the trade mark wou ld 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 mar k not been so removed or 
surrendered the registration of it would have been liable to be— 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) where there has been no claim of priority purs uant to Article 35 of the 
European Union Trade Mark Regulation (as it applies  to international 
registrations under Article 182 of that Regulation)  in respect of the 
existing IR(EU) from which the comparable trade mar k (IR) derives, 
the deemed date of registration of the comparable t rade 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) de rives; or 
(b) declared invalid under section 47, 
the seniority claimed for the comparable trade mark  (IR) is to be treated as if it never 
had effect. 
(4) Where pursuant to paragraph 14 a comparable tra de mark (IR) is treated as if it 
had a valid claim to seniority of a protected inter national trade mark (UK) which has 
been— 
(a) removed from the International Register; or 
(b) surrendered under the Madrid Protocol, 
any person may apply to the registrar or to the cou rt for the declaration set out in 
subparagraph (5). 
(5) The declaration is that, if the trade mark had not been so removed or 
surrendered, the protection of the mark in the Unit ed Kingdom would have been 
liable to be revoked under section 46 with effect f rom 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 Unite d Kingdom would have been 
liable to be— 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) where there has been no claim of priority purs uant to Article 35 of the 
European Union Trade Mark Regulation (as it applies  to international 
registrations under Article 182 of that Regulation)  in respect of the 
existing IR(EU) from which the comparable trade mar k (IR) derives, 
the deemed date of registration of the comparable t rade 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) de rives; 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 a n existing IR(EU) resulted 
from a request for territorial extension under Arti cle 3ter(2), a right of priority  44 claimed pursuant to Article 35 of the European Unio n 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 req uest for territorial extension was 
recorded in the International Register within a per iod of six months beginning with 
the day after the priority date recorded in the Int ernational Register in respect of the 
international application for protection of the tra de mark which is the same as the 
one in respect of which the request for territorial  extension was filed. 
(8) References in sub-paragraphs (5) and (6) to sec tions 46 and 47 are to those 
sections as they apply to a protected international  trade mark (UK) under an order 
made pursuant to section 54. 
(9) Where a trade mark has been surrendered or allo wed to lapse in respect of 
some only of the goods or services for which it is registered, the declaration in sub-
paragraphs (2) and (5) is that if the goods or serv ices had not been removed from the 
registration, the registration of the trade mark wo uld 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 subparagraphs (3) and (6) shall be construed 
accordingly. 
Procedure for declaration that trade mark would hav e been liable to be revoked 
or declared invalid 
16. —(1) In the case of proceedings on an application u nder paragraph 15 before 
the registrar, the rules relating to applications f or and proceedings relating to the 
revocation or invalidation of a trade mark apply, w ith necessary modifications. 
(2) In the case of proceedings on an application un der paragraph 15 before the 
court, section 74 applies to the proceedings as it applies to proceedings involving an 
application of the type referred to in section 74(1 )(a) to (c). 
Assignment of an existing IR(EU) not registered on exit day 
17. —(1) This paragraph applies where before exit day a n existing IR(EU) (or any 
right in it) is the subject of an assignment (a “re levant assignment”) which 
immediately before exit day is not recorded in the International Register. 
(2) Section 25 applies in relation to a relevant as signment as if it were a registrable 
transaction affecting a comparable trade mark (IR),  subject to the modification set 
out below. 
(3) An application under section 25(1) may only be made by— 
(a) a person claiming to be entitled to an interest  in or under a comparable trade 
mark (IR) by virtue of a relevant assignment of the  corresponding (IR); or 
(b) the proprietor of the comparable trade mark (IR ). 
Effect of a licence of an existing IR(EU) 
18. —(1) This paragraph applies where immediately befor e exit day an existing 
IR(EU) is the subject of a licence (a “relevant lic ence”) which— 
(a) authorises the doing of acts in the United King dom which would otherwise 
infringe the international trade mark; and 
(b) does not expire on exit day. 
(2) Subject to any agreement to the contrary betwee n the licensee and the licensor, 
relevant licence continues to authorise the doing o f acts in the United Kingdom 
which would otherwise infringe the comparable trade  mark (IR) which derives from 
the existing IR(EU). 
(3) Sub-paragraph (2) is subject to—  45 (a) the terms on which the relevant licence was gra nted; and 
(b) such modifications to the terms referred to in paragraph (a) as are necessary 
for their application in the United Kingdom. 
(4) Section 25 applies in relation to a relevant li cence as if it were a registrable 
transaction affecting a comparable trade mark (IR),  subject to the modifications set 
out below. 
(5) An application under section 25(1) may only be made by— 
(a) a person claiming to be a licensee by virtue of  the relevant licence; or 
(b) the proprietor of the comparable trade mark (IR ). 
(6) Where immediately before exit day there is an e ntry in the International 
Register relating to a relevant licence— 
(a) section 25(3) and (4) does not apply until afte r the expiry of the relevant 
period; and 
(b) section 25(4)(a) applies after the expiry of th e relevant period but as if the 
reference to six months beginning with the date of the transaction were a 
reference to eighteen months beginning with exit da y. 
(7) In sub-paragraph (6)(a), the “relevant period” means the period of twelve 
months beginning with the day after that on which e xit day falls. 
Effect of a security interest in an existing IR(EU)  
19. —(1) This paragraph applies where immediately befor e exit day an existing 
IR(EU) (or any right in or under it) is the subject  of a 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 exit day. 
(2) References to the existing IR(EU), or the inter national registration to which the 
existing IR(EU) is subject, in any document which g rants or refers to the relevant 
security interest are to be read as including refer ences to the comparable trade mark 
(IR) which derives from the existing IR(EU). 
(3) Section 25 applies in relation to a relevant se curity interest as if it were a 
registrable transaction affecting a comparable trad e 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 intere st; or 
(b) the proprietor of the comparable trade mark (IR ). 
(5) Where immediately before exit day there is an e ntry in the International 
Register relating to a relevant security interest— 
(a) section 25(3) and (4) do not apply until after the expiry of the relevant 
period; and 
(b) section 25(4)(a) applies after the expiry of th e relevant period but as if the 
reference to six months beginning with the date of the transaction were a 
reference to eighteen months beginning with exit da y. 
(6) In sub-paragraph (5)(a), the “relevant period” means the period of twelve 
months beginning with the day after that on which e xit day falls.  46 Continuity of rights in relation to a comparable tr ade mark (IR) 
20. —(1) References to an existing IR(EU), or the inter national registration to 
which an existing IR(EU) is subject, in any documen t made before exit day shall, 
unless there is evidence that the document was not intended to have effect in the 
United Kingdom, be read on and after exit day as in cluding references to the 
comparable trade mark (IR) or the registration of t he comparable trade mark (IR) 
which derives from the existing IR(EU). 
(2) Subject to any agreement to the contrary, a con sent granted before exit day by 
the proprietor of an existing IR(EU) to the doing o n or after exit day of an act in the 
United Kingdom which would otherwise infringe the c omparable trade mark (IR) 
which derives from the existing IR(EU) is to be tre ated for the purposes of section 9 
as a consent to the doing of that act. 
Existing IR(EU): pending proceedings 
21. —(1) This paragraph applies where on exit day an ex isting IR(EU) is the 
subject of proceedings which are pending (“pending proceedings”) before a court in 
the United Kingdom designated for the purposes of A rticle 123 of the European 
Union Trade Mark Regulation (“EU trade mark court”) . 
(2) Subject to sub-paragraphs (3) and (4), the prov isions contained or referred to in 
Chapter 10 of the European Union Trade Mark Regulat ion (with the exception of 
Articles 128(2), (4), (6) and (7) and 132) continue  to apply to the pending 
proceedings as if the United Kingdom were still a M ember State with effect from 
exit day. 
(3) Where the pending proceedings involve a claim f or infringement of an existing 
IR(EU), without prejudice to any other relief by wa y of damages, accounts or 
otherwise available to the proprietor of the existi ng IR(EU), the EU trade mark court 
may grant an injunction to prohibit unauthorised us e of the comparable trade mark 
(IR) which derives from the existing IR(EU). 
(4) Where the pending proceedings involve a counter claim for the revocation of, or 
a declaration of invalidity in relation to, an exis ting 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 invali d. 
(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 registr ation of the comparable trade mark 
(IR) which derives from the existing IR(EU) relates  to those goods or services only. 
(6) Where (by virtue of sub-paragraph (4)) the regi stration of a comparable trade 
mark (IR) is revoked to any extent, the rights of t he 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 regi stration of a comparable trade 
mark (IR) is declared invalid to any extent, the re gistration is to that extent to be 
deemed never to have been made, provided that this does not affect transactions past 
and closed. 
(8) For the purposes of this paragraph proceedings are treated as pending on exit 
day if they were instituted but not finally determi ned before exit day.  47 Existing IR(EU): effect of injunction 
22. —(1) This paragraph applies where immediately befor e exit day an injunction 
is in force prohibiting the performance of acts in the United Kingdom which infringe 
or would infringe an existing IR(EU) (a “relevant i njunction”). 
(2) Subject to any order of the court to the contra ry, a relevant injunction will have 
effect and be enforceable to prohibit the performan ce of acts which infringe or would 
infringe a comparable trade mark (IR) to the same e xtent as in relation to the existing 
IR(EU) from which the comparable trade mark (IR) de rives as if it were an 
injunction granted by the court. 
PART 2 
Treatment of international trade marks protected in  the European Union 
which expire during the period of six months ending  on exit day 
Registration of certain expired international trade  marks 
23. —(1) This Part applies to an international trade ma rk which, immediately 
before the transitional period, was protected in th e European Union in accordance 
with Article 189(2) of the European Union Trade Mar k Regulation but which, as a 
result of the expiry of the registration of the int ernational trade mark during the 
transitional period, does not fall within paragraph  1(1) (an “expired IR(EU)”). 
(2) Where the international registration to which a n international trade mark is 
subject has been sub-divided as referred to in para graph 1(2), there is to be deemed 
for the purposes of sub-paragraph (1) to be a separ ate expired trade mark in respect 
of the goods or services covered by each sub-divisi on of the registration. 
(3) An expired IR(EU) is to be treated as if it wer e an existing IR(EU). 
(4) The provisions of Part 1 of this Schedule apply  to an expired IR(EU) as they 
apply to an existing IR(EU) subject to the provisio ns of this Part of the Schedule. 
(5) Notwithstanding the entry in the register (unde r paragraph 3, as applied by 
subparagraph (4)) of a comparable trade mark (IR) w hich derives from an expired 
IR(EU), the registration of the comparable trade ma rk (IR) is expired until the 
proprietor gives notice to the registrar in accorda nce with paragraph 24(1)(b) (or the 
comparable trade mark (IR) is removed from the regi ster in accordance with 
paragraph 24(2)). 
(6) In this paragraph, “transitional period” means the period of six months ending 
with exit day. 
Renewal of an expired IR(EU) 
24. —(1) Where within the period beginning with exit da y and ending with the end 
of the relevant period— 
(a) the international registration to which an expi red IR(EU) is subject is 
renewed in accordance with Article 7; and 
(b) the proprietor of the expired IR(EU) notifies t he registrar of such renewal (a 
“renewal notice”), 
paragraphs 25 and 26 apply to the renewal of the re gistration of the comparable trade 
mark (IR) which derives from the expired IR(EU). 
(2) If within the period referred to in sub-paragra ph (1) the proprietor fails to 
notify the registrar in accordance with sub-paragra ph (1)(b)— 
(a) the registrar must remove from the register the  comparable trade mark (IR) 
which derives from the expired IR(EU); and  48 (b) the comparable trade mark (IR) ceases with effe ct from exit day to be 
treated as if it had been registered under this Act . 
(3) In sub-paragraph (1), the “relevant period” mea ns the period of nine months 
beginning with the day after that on which exit day  falls. 
Renewal of an expired IR(EU): territorial extension  under Article 3 ter (1) 
25. —(1) Where the protection in the European Union of an expired IR(EU) 
resulted from a request for territorial extension u nder Article 3 ter (1), the registrar 
must, as soon as reasonably practicable following r eceipt 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 u nder sub-paragraph (1) shall 
be renewed for a period of ten years from the expir y 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 3 ter (2) 
26. —(1) This paragraph applies where the protection in  the European Union of an 
expired IR(EU) resulted from a request for territor ial extension under Article 3 ter (2). 
(2) The relevant date for the purposes of determini ng the date of renewal of the 
registration of the comparable trade mark (IR) whic h derives from the expired 
IR(EU) (the “relevant renewal date”) shall be— 
(a) the date of expiry of the period of ten years f rom the date on which the 
request for territorial extension was recorded in t he International Register; 
or 
(b) where the international registration to which t he expired IR(EU) is subject 
has been renewed since the date referred to in para graph (a), the anniversary 
of that date, computed by reference to periods of t en 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 rea sonably 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 wi th 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 renew al date. 
(6) Where the registration of the comparable trade mark (IR) is not renewed in 
accordance with sub-paragraph (5)— 
(a) on, or as soon as reasonably practicable after,  the relevant renewal date, the 
registrar must notify the proprietor that the regis tration of the comparable 
trade mark (IR) has expired and of the manner in wh ich registration may be 
renewed; and 
(b) a request for renewal must be made within a per iod of six months beginning 
with the date of the notice. 
(7) If a request for renewal is made in respect of only some of the goods or 
services for which the comparable trade mark (IR) i s registered, the registration is to 
be renewed for those goods or services only.  49 (8) A comparable trade mark (IR) which is renewed u nder sub-paragraph (3) or 
pursuant to a request for renewal in accordance wit h 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 r enewal of the registration of a 
comparable trade mark (IR) and the registration is not renewed in accordance with 
those provisions, the registrar must remove the com parable 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 
subparagraph (9), the rules relating to the restora tion of the registration of a trade 
mark (referred to in section 43(5)) apply in relati on to the restoration of the 
comparable trade mark (IR) to the register. 
(12) Where the relevant renewal date of a comparabl e trade mark (IR) falls on or 
after the expiry of the period of six months beginn ing with the notice date, section 43 
applies to the renewal of the registration of the c omparable trade mark (IR) and 
references to the expiry of the registration are to  be treated as references to the 
relevant renewal date of the comparable trade mark (IR). 
PART 3 
Applications for the extension of protection of int ernational registrations 
to the European Union which are pending on exit day  
Interpretation 
27. —(1) In this Part— 
(a) references to an “existing ITM application” are  to an international 
application which contains a request for extension of the protection resulting 
from an international registration to the European Union under Article 
3ter (1) in respect of which the conditions in sub-parag raph (2) are satisfied; 
(b) references to an “existing request for EU exten sion” are to a request for 
extension to the European Union of the protection r esulting from an 
international registration made subsequent to the i nternational registration 
pursuant to Article 3ter(2) in respect of which the  conditions in sub-
paragraph (3) are satisfied; 
(c) references to an “international application” ar e to an application to the 
International Bureau under Article 2(2) for the reg istration of a trade mark 
in the International Register. 
(2) The conditions referred to in sub-paragraph (1) (a) are— 
(a) the international application was filed before exit day with the Office of 
origin in accordance with Article 2(2); and 
(b) as at the time immediately before exit day, the  request for extension of 
protection to the European Union mentioned in the i nternational application 
has been neither granted nor refused by the Europea n 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 exit day with the Office of origin or the In ternational Bureau (as the 
case may be) in accordance with Rule 24(2); and  50 (b) as at the time immediately before exit day, the  request for extension of 
protection to the European Union has been neither g ranted nor refused by 
the European Union Intellectual Property Office und er the European Union 
Trade Mark Regulation. 
(4) In sub-paragraphs (2)(b) and (3)(b) — 
(a) the reference to the request for extension of p rotection to the European 
Union being “granted” means the European Union Inte llectual Property 
Office having sent to the International Bureau a st atement to the effect that 
protection is granted to the mark in the European U nion in accordance with 
Rule 18 ter ; and 
(b) the reference to the request for extension of p rotection to the European 
Union being “refused” means the European Union Inte llectual Property 
Office having sent to the International Bureau a no tification of refusal in 
accordance with Article 5(1) or (2) which refusal h as not been subsequently 
withdrawn. 
Application for registration under this Act based u pon an existing ITM 
application or an existing request for EU extension  recorded in the 
International Register prior to exit day 
28. —(1) This paragraph applies where— 
(a) either— 
 (i) an existing ITM application has been filed wit h the International 
Bureau in respect of a trade mark and the date acco rded to the 
international registration of the trade mark pursua nt to Article 3(4) is a 
date prior to exit day; or 
 (ii) an existing request for EU extension in respe ct of a trade mark has been 
filed with the International Bureau and the date on  which it was 
recorded in the International Register pursuant to Article 3ter(2) is a 
date prior to exit day; 
(b) the person who filed the existing ITM applicati on or (as the case may be) 
the existing request for EU extension, or a success or in title of that person, 
applies for registration of the same trade mark und er this Act for some or all 
of the same goods or services, and 
(c) the application under this Act is made within a  period beginning with exit 
day and ending with the end of the period referred to in 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 ma rk 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 req uest was recorded in the 
International Register pursuant to Article 3 ter (2); 
(b) the date of priority (if any) accorded pursuant  to a right of priority claimed 
pursuant to Article 4 of the Paris Convention in re spect of the existing ITM 
application or the existing request for EU extensio n (as the case may be). 
(3) The registrability of the trade mark the subjec t of an application under this Act 
of the type mentioned in sub-paragraph (1)(b) and m ade within the period mentioned 
in subparagraph (1)(c) shall not be affected by any  use of the mark in the United 
Kingdom which commenced in the period between the d ate 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 exit day  falls.  51 (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 m onths beginning with the day after 
the priority date recorded in the International Reg ister 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 fil ed. 
Application for registration under this Act based u pon an existing ITM 
application or an existing request for EU extension  recorded in the 
International Register on or after exit day 
29. —(1) This paragraph applies where— 
(a) either— 
 (i) an existing ITM application has been filed wit h the International 
Bureau in respect of a trade mark and the date acco rded to the 
international registration of the trade mark pursua nt to Article 3(4) is a 
date on or after exit day; or 
 (ii) an existing request for EU extension in respe ct of a trade mark has been 
filed with the International Bureau and the date on  which it was 
recorded in the International Register pursuant to Article 3ter(2) is a 
date on or after exit day; 
(b) the person who filed the existing ITM applicati on or (as the case may be) 
the existing request for EU extension, or a success or in title of that person, 
applies for registration of the same trade mark und er this Act for some or all 
of the same goods or services; and 
(c) the application under this Act is made within t he period of nine months 
beginning with the date referred to in sub-paragrap h (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 ma rk 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 req uest 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 re spect of the existing ITM 
application or the existing request for EU extensio n (as the case may be). 
(2) The registrability of the trade mark the subjec t of an application under this Act 
of the type mentioned in sub-paragraph (1)(b) and m ade within the period mentioned 
in subparagraph (1)(c) shall not be affected by any  use of the mark in the United 
Kingdom which commenced in the period between the d ate referred to in sub-
paragraph (2) and the date of the application under  this Act. 
(3) 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 m onths beginning with the day after 
the priority date recorded in the International Reg ister 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 fil ed.  52 Right to claim seniority where seniority has been c laimed by an existing ITM 
application or an existing request for EU extension  
30. —(1) Where an existing ITM application or an existi ng request for EU 
extension claims seniority of a trade mark which tr ade 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 applicatio n for registration of a trade mark (a 
“relevant mark”) pursuant to this Part. 
(2) The effect of a seniority claim made pursuant t o sub-paragraph (1) is that where 
following the registration of the relevant mark the  proprietor of that mark surrenders 
the senior mark or allows it to lapse (wholly or pa rtially), subject to paragraph 31, 
the proprietor of the relevant mark is deemed to co ntinue to have the same rights as 
the proprietor would have had if the senior mark ha d continued to be registered in 
respect of all the goods or services for which it w as 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 regist ration of a trade mark “pursuant 
to this Part” means an application that is of the t ype mentioned in paragraph 28(1)(b) 
or 29(1)(b) and that is made within the period ment ioned in paragraph 28(1)(c) or 
29(1)(c) (as the case may be). 
Determination of invalidity and liability to revoca tion in relation to claim of 
seniority under paragraph 30 
31. —(1) Where a relevant mark has claimed seniority of  a registered trade mark 
which has been— 
(a) removed from the register under section 43; or 
(b) surrendered under section 45, 
any person may apply to the registrar or to the cou rt for the declaration set out in 
subparagraph (2). 
(2) The declaration is that, if the trade mark had not been so removed or 
surrendered, the registration of the trade mark wou ld 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 mar k not been so removed or 
surrendered, the registration of it would have been  liable to be— 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) where the application for registration of the relevant mark was based on 
an existing ITM application and there has been no c laim of priority, the 
date of registration accorded pursuant to Article 3 (4) to the 
international trade mark the subject of the existin g 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 recorde d in the International 
Register pursuant to Article 3 ter (2); 
 (iii) where the application for registration of th e relevant mark was based on 
an existing ITM application or an existing request for EU extension and 
there has been a claim of priority, the priority da te accorded pursuant to 
a right of priority claimed pursuant to Article 4 o f the Paris 
Convention; or 
(b) declared invalid under section 47, 
the seniority claimed for the relevant mark is to b e treated as if it never had effect.  53 (4) Where a relevant mark has claimed seniority of a protected international trade 
mark (UK) which has been— 
(a) removed from the International Register; or 
(b) surrendered under the Madrid Protocol, 
any person may apply to the registrar or to the cou rt for the declaration set out in 
subparagraph (5). 
(5) The declaration is that, if the trade mark had not been so removed or 
surrendered, the protection of the trade mark in th e United Kingdom would have 
been liable to be revoked under section 46 with eff ect from a date specified in the 
declaration or declared invalid under section 47. 
(6) Where the declaration is that had the trade mar k not been so removed or 
surrendered, the registration of it would have been  liable to be— 
(a) revoked under section 46 with effect from a dat e prior to— 
 (i) where the application for registration of the relevant mark was based on 
an existing ITM application and there has been no c laim of priority, the 
date of registration accorded pursuant to Article 3 (4) to the 
international trade mark the subject of the existin g 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 recorde d in the International 
Register pursuant to Article 3ter(2); 
 (iii) where the application for registration of th e relevant mark was based on 
an existing ITM application or an existing request for EU extension and 
there has been a claim of priority, the priority da te accorded pursuant to 
a right of priority claimed pursuant to Article 4 o f the Paris 
Convention; or 
(b) declared invalid under section 47, 
the seniority claimed for the relevant mark is to b e treated as if it never had effect. 
(7) Where the application for registration of the r elevant mark was based on an 
existing request for EU extension a right of priori ty 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 exte nsion was recorded in the International 
Register within a period of six months beginning wi th the day after the priority date 
recorded in the International Register in respect o f the international application for 
protection of the trade mark which is the same as t he one in respect of which the 
request for EU extension was filed. 
(8) References in sub-paragraphs (5) and (6) to sec tions 46 and 47 are to those 
sections as they apply to a protected international  trade mark (UK) under an order 
made pursuant to section 54. 
(9) Where a trade mark has been surrendered or allo wed to lapse in respect of only 
some of the goods or services for which it is regis tered, the declaration in sub-
paragraphs (2) and (5) is that if the goods or serv ices had not been removed from the 
registration, the registration of the trade mark wo uld 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 subparagraphs (3) and (6) shall be construed 
accordingly. 
(10) The provisions of paragraph 16 apply in relati on to an application under this 
paragraph as they apply to an application under par agraph 15.  54 PART 4 
Transformation applications which are pending on ex it day 
Transformation applications 
32. —(1) In this Part, references to a “transformation application” are to an 
application for transformation of an international registration 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 condi tions in sub-paragraph (2) are 
satisfied. 
(2) The conditions referred to in sub-paragraph (1)  are— 
(a) the transformation application was filed before  exit day with the European 
Union Intellectual Property Office; 
(b) as at the time immediately before exit day the transformation application 
has neither been granted nor refused by the Europea n Union Intellectual 
Property Office under the European Union Trade Mark  Regulation; and 
(c) the international registration was not cancelle d at the request of the Patent 
Office as Office of origin for the international re gistration 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 th e European Union 
Trade Mark Regulation pursuant to the transformatio n application; and 
(b) the reference to the transformation application  being “refused” means the 
transformation application being subject to the pro visions in Article 204(5) 
of the European Union Trade Mark Regulation. 
Application for registration based upon a cancelled  international registration 
33. —(1) This paragraph applies where— 
(a) a person who has filed a transformation applica tion in respect of a cancelled 
international registration, or a successor in title  of that person, applies for 
registration under this Act of a trade mark which i s the same as the trade 
mark which was the subject of the cancelled interna tional registration and in 
respect of some or all of the same goods or service s included in the 
international registration; 
(b) the application for registration under this Act  is made within the period 
beginning with exit day and ending with the end of the relevant period; and 
(c) on or before the date of the transformation app lication on which the 
application for registration under this Act is base d the trade mark that was 
the subject of the cancelled international registra tion— 
 (i) was protected in the European Union in accorda nce with Article 189(2) 
of the European Union Trade Mark Regulation; or 
 (ii) was the subject of an existing ITM applicatio n or an existing request 
for EU extension which, as at that date, had neithe r been granted nor 
refused by the European Union Intellectual Property  Office (the 
references to “granted” and “refused” having the sa me meaning as 
given by paragraph 27(4)). 
(2) Where this paragraph applies by virtue of sub-p aragraph (1)(c)(i), the relevant 
date for the purposes of establishing which rights take precedence is the earliest of— 
(a) where—  55  (i) the protection in the European Union of the tr ade mark that was the 
subject of the cancelled international registration  resulted from a 
request for territorial extension under Article 3 ter (1), the date of 
registration accorded to the international registra tion pursuant to Article 
3(4); or 
 (ii) the protection in the European Union of the t rade mark that was the 
subject of the cancelled international registration  resulted from a 
request for territorial extension under Article 3 ter (2), the date on which 
the request was recorded in the International Regis ter; and 
(b) the date of priority (if any) accorded pursuant  to a right of priority claimed 
pursuant to Article 4 of the Paris Convention in re spect of the request 
referred to in paragraph (a)(i) or (ii). 
(3) Where this paragraph applies by virtue of sub-p aragraph (1)(c)(ii), the relevant 
date for the purposes of establishing which rights take precedence is the earliest of— 
(a) the date accorded to the trade mark that was th e subject of the existing ITM 
application pursuant to Article 3(4) or, in the cas e of an existing request for 
EU extension, the date on which the request was rec orded in the 
International Register pursuant to Article 3 ter (2); and 
(b) the date of priority (if any) accorded pursuant  to a right of priority claimed 
pursuant to Article 4 of the Paris Convention in re spect of the request 
referred to in paragraph (a). 
(4) A right of priority claimed pursuant to Article  4 of the Paris Convention in 
respect of a request for territorial extension to t he European Union made under 
Article 3 ter (2) is to be disregarded for the purposes of sub-pa ragraphs (2)(b) and 
(3)(b) unless the request for extension was recorde d in the International Register 
within a period of six months beginning with the da y after the priority date recorded 
in the International Register in respect of the int ernational application for protection 
of the trade mark which is the same as the one in r espect of which the request for 
extension was filed. 
(5) The registrability of the trade mark the subjec t of an application under this Act 
of the type mentioned in sub-paragraph (1)(a) and m ade within the period mentioned 
in subparagraph (1)(b) shall not be affected by any  use of the mark in the United 
Kingdom which commenced in the period between the d ate referred to in sub-
paragraph (2) or (3) (as the case may be) and the d ate of the application for 
registration of the trade mark under this Act. 
(6) Paragraphs 30 and 31 apply in relation to an ap plication for a trade mark under 
this Act of the type mentioned in sub-paragraph (1) (a) 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, bu t as if— 
(a) the references to an existing ITM application o r an existing request for EU 
extension and an existing ITM application and an ex isting request for EU 
extension had the same meaning as they have in this  paragraph; and 
(b) the references to an existing ITM application i ncluded references to a 
“protected EU designation”. 
(7) In this paragraph— 
(a) an “existing ITM application” means an internat ional application which 
contains a request for extension of the protection resulting from an 
international registration to the European Union un der Article 3 ter (1) which 
has been filed with the Office of origin in accorda nce 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 r egistration pursuant to  56 Article 3ter(2) which has been filed with the Offic e of origin or the 
International Bureau (as the case may be) in accord ance with Rule 24(2); 
(c) the “relevant period” means the period of nine months beginning with the 
day after that on which exit day falls; 
(d) a “protected EU designation” means an internati onal registration which 
prior to its cancellation was protected in the Euro pean Union in accordance 
with Article 189(2) of the European Union Trade Mar k Regulation. 
PART 5 
Interpretation 
Interpretation 
34. —(1) In this Schedule— 
“comparable trade mark (IR)” has the meaning given by paragraph 1(4); 
“the Common Regulations” means the Common Regulatio ns under the Madrid 
Agreement concerning the international registration  of marks and the Madrid 
Protocol in force on 1st November 2017(a); 
“corresponding (IR)” has the meaning given by parag raph 3(4); 
“existing IR(EU)” has the meaning given by paragrap h 1(1); 
“expired IR(EU)” has the meaning given by paragraph  23(1); 
“international application” has the meaning given b y paragraph 27(1)(c); 
“the International Register” has the meaning given by paragraph 1(11)(a); 
“international registration” has the meaning given by paragraph 1(11)(b); 
“international trade mark” has the meaning given by  paragraph 1(11)(c); 
“Office of origin” has the meaning given by Article  2(2); 
“the previous EUTM Regulations” means Council Regul ation (EC) No 207/2009 
of 26th February 2009 on the European Union trade m ark(a) and Council 
Regulation (EC) No 40/94 of 20th December 1993 on t he Community trade 
mark(b); 
“protected international trade mark (UK)” has the s ame meaning as in the Trade 
Marks (International Registration) Order 2008(c); 
(2) References in this Schedule to— 
(a) an “Article” are to an Article of the Madrid Pr otocol; 
(b) an Article of the European Union Trade mark Reg ulation include references 
to any equivalent Article contained in the previous  EUTM Regulations; 
(c) the European Union Trade Mark Regulation includ e references to the 
previous EUTM Regulations; 
(d) an international trade mark include references to an international trade mark 
which is dealt with for the purposes of the Europea n Union Trade Mark 
Regulation as an EU collective mark or an EU certif ication mark; 
(e) a “Rule” are to a Rule of the Common Regulation s. 
(3) In this Schedule, references to a request for t erritorial extension, in relation to 
an existing IR(EU) which is the subject of a separa te international registration within 
the meaning of paragraph 1(3), are to the request m ade before the separate 
international registration was created.”.”. 
 
  57 EXPLANATORY NOTE 
(This note is not part of the Order) 
This Order amends the Registered Designs (Isle of M an) Order 2013 (S.I. 2013/2533) and the 
Trade Marks (Isle of Man) Order 2013 (S.I. 2013/260 1) to make further modifications to the 
Registered Designs Act 1949 (c. 88) and the Trade M arks Act 1994 (c. 26) respectively in their 
application to the Isle of Man. 
The amendments made by the Order replicate for the Isle of Man amendments in connection with 
the United Kingdom leaving the European Union made to those Acts as they have effect in the 
United Kingdom by the Intellectual Property (Exhaus tion of Rights) (EU Exit) Regulations 2019 
(S.I. 2019/265), the Designs and International Trad e Marks (Amendment etc.) (EU Exit) 
Regulations 2019 (S.I. 2019/638) and the Trade Mark s (Amendment etc.) (EU Exit) Regulations 
2019 (S.I. 2019/269). 
An impact assessment has not been produced for this  instrument as no, or no significant, impact 
on the private or voluntary sector is foreseen. 
  
  
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UK201910031004   10/2019   19585 
http://www.legislation.gov.uk/id/uksi/2019/1335  