The Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2019 (expired—not approved)

• Citation: S.I. 2019/1366
• Sections: 105

Section 1 Citation and commencement

These Regulations may be cited as the Agricultural Products, Food and Drink (Amendment) (EU Exit) Regulations 2019 and come into force on exit day.

Section 2 The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019

In the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 , in Schedule 5, after paragraph 7(1) insert—

(1A) Paragraph 1 does not apply to an application to register a trade mark that was pending immediately before exit day referred to in—

(a) Article 14a of Regulation (EU) No 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs ;

(b) Article 102a of Regulation (EU) No 1308/2013 of the European Parliament and of the Council establishing a common organisation of the markets in agricultural products ;

(c) Article 19a of Regulation (EU) No 251/2014 of the European Parliament and of the Council on the definition, description, presentation, labelling and the protection of geographical indications of aromatised wine products ;

(d) Article 32a of Commission Delegated Regulation (EU) 2019/33 supplementing Regulation (EU) No 1308/2013 of the European Parliament and of the Council as regards applications for protection of designations of origin, geographical indications and traditional terms in the wine sector, the objection procedure, restrictions of use, amendments to product specifications, cancellation of protection, and labelling and presentation ;

(e) Article 36a of Regulation (EU) 2019/787 of the European Parliament and of the Council on the definition, description, presentation and labelling of spirit drinks, the use of the names of spirit drinks in the presentation and labelling of other foodstuffs, the protection of geographical indications for spirit drinks, the use of ethyl alcohol and distillates of agricultural origin in alcoholic beverages .

Section 3 Regulation (EU) No 1151/2012 of the European Parliament and of the Council

(1) Regulation (EU) No 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs is amended as follows.

(2) In Article 3—

(a) after point (13) insert—

(13a) ‘an Article 52(4) approval notice’ means a notice published under Article 52(4) relating to a decision of the Secretary of State to approve an application to register a designation of origin or geographical indication;

(b) after point (17) insert—

(17a) ‘enters into force’, in relation to a reference to an international agreement, includes, where the provisional application of that agreement is agreed between the parties before it enters into force, the provisional application of the agreement and ‘entry into force’ is to be construed accordingly;

(c) after point (20) insert—

(20a) ‘EUIA’ means an international agreement made between the European Union and a third country that provides for the protection of a designation of origin or geographical indication of the third country in the European Union;

(d) after point (21) insert—

(21a) ‘the relevant period’ means the period beginning on exit day and expiring at the end of the day that falls nine months after the day on which exit day falls;

(e) in point (22), after “and” insert “, except in the definition of ‘EUIA’ in this Article and in Annex 1A,”;

(f) after point (22) insert—

(23) ‘the TMA’ means the Trade Marks Act 1994 ;

(24) ‘the Types Table’ means the table in Part 1 of Annex 1A;

(25) ‘the United Kingdom's PDOs and PGIs Register’ means the register established and maintained by the Secretary of State under Article 11(1).

(3) After Article 3 insert the new Article 3a in Part 1 of Schedule 1.

(4) In Article 14(2), in the first sentence—

(a) omit the words from “if” to “concerned”;

(b) for “Union” substitute “ United Kingdom ” ;

(c) for “Commission” substitute “ Secretary of State ” ;

(d) for the words from “under Council” to “2008/95/EC” substitute “ in, or under, the TMA ” .

(5) After Article 14 insert the new Articles 14a and 14b in Part 2 of Schedule 1.

(6) After Annex 1 insert the new Annex 1A in Part 3 of Schedule 1.

Section 4 Regulation (EU) No 1308/2013 of the European Parliament and of the Council

(1) Regulation (EU) No 1308/2013 of the European Parliament and of the Council establishing a common organisation of the markets in agricultural products is amended as follows.

(2) In Article 93, after paragraph 1 insert—

(1a) For the purpose of Article 102a and Annex 8A:

(a) ‘an Article 99 approval notice’ means a notice published under Article 99(3) relating to a decision of the Secretary of State to approve an application to register a designation of origin or geographical indication;

(b) ‘enters into force’, in relation to a reference to an international agreement, includes, where the provisional application of that agreement is agreed between the parties before it enters into force, the provisional application of the agreement and ‘entry into force’ is to be construed accordingly;

(c) ‘EUIA’ means an international agreement made between the European Union and a third country that provides for the protection of a designation of origin or geographical indication of the third country in the European Union;

(d) ‘EU Regulation 1308/2013’ means Regulation (EU) No 1308/2013 of the European Parliament and of the Council establishing a common organisation of the markets in agricultural products as it had effect before exit day;

(e) ‘the relevant period’ means the period beginning on exit day and expiring at the end of the day that falls nine months after the day on which exit day falls;

(f) ‘the Types Table’ means the table in Part 1 of Annex 8A;

(g) ‘the United Kingdom's PDOs and PGIs Register’ means the register established and maintained by the Secretary of State under Article 104.

(1b) In the following provisions ‘third country’ means any country except that it does not include any part of the British Islands:

(a) the definition of ‘EUIA’ in paragraph 1a(c);

(b) Annex 8A.

(3) After Article 93 insert the new Article 93a in Part 1 of Schedule 2.

(4) In Article 95, after paragraph 1 insert—

(1a) An application to protect a designation of origin or a geographical indication for a wine produced in the United Kingdom must be submitted to the Secretary of State.

(5) In Article 99, after paragraph 2 insert—

(3) Where the Secretary of State decides to approve an application under point (b) of the first paragraph, the Secretary of State must:

(a) inform the applicant and any interested parties of the decision, and

(b) publish the decision.

(6) After Article 102 insert the new Articles 102a and 102b in Part 2 of Schedule 2.

(7) After Annex 8 insert the new Annex 8A in Part 3 of Schedule 2.

Section 5 Regulation (EU) No 251/2014 of the European Parliament and of the Council

(1) Regulation (EU) No 251/2014 of the European Parliament and of the Council on the definition, description, presentation, labelling and the protection of geographical indications of aromatised wine products is amended as follows.

(2) In Article 2(1)—

(a) after point (3) insert—

(3a) ‘an Article 16 approval notice’ means a notice published under the second paragraph of Article 16 relating to a decision of the Secretary of State to grant an application to register a geographical indication;

(b) after point (6) insert—

(6a) ‘enters into force’, in relation to a reference to an international agreement, includes, where the provisional application of that agreement is agreed between the parties before it enters into force, the provisional application of the agreement and ‘entry into force’ is to be construed accordingly;

(6b) ‘EUIA’ means an international agreement made between the European Union and a third country that provides for the protection of a geographical indication of the third country in the European Union;

(6c) ‘EU Regulation 251/2014’ means Regulation (EU) No 251/2014 of the European Parliament and of the Council on the definition, description, presentation, labelling and the protection of geographical indications of aromatised wine products as it had effect before exit day;

(c) in point (8), for “means” substitute “and ‘the United Kingdom's GIs Register’ mean”;

(d) after point (8) insert—

(8a) ‘the relevant period’ means the period beginning on exit day and expiring at the end of the day that falls nine months after the day on which exit day falls;

(e) in point (9), after “and” insert “, except in the definition of ‘EUIA’ in point (6b) and in Annex 2A,”;

(f) after point (9) insert—

(10) ‘the TMA’ means the Trade Marks Act 1994;

(11) ‘the Types Table’ means the table in Part A of Annex 2A.

(3) In Chapter 3 insert as the first Article in that Chapter the new Article 8a in Part 1 of Schedule 3.

(4) After Article 19 insert the new Articles 19a and 19b in Part 2 of Schedule 3.

(5) After Annex 2 insert the new Annex 2A in Part 3 of Schedule 3.

Section 6 Commission Delegated Regulation (EU) 2019/33

(1) Commission Delegated Regulation (EU) 2019/33 supplementing Regulation (EU) No 1308/2013 of the European Parliament and of the Council as regards applications for protection of designations of origin, geographical indications and traditional terms in the wine sector, the objection procedure, restrictions of use, amendments to product specifications, cancellation of protection, and labelling and presentation is amended as follows.

(2) In Article 1a—

(a) after the definition relating to the Article 25 Register insert—

‘an Article 115(2) approval notice’ means a notice published under the second subparagraph of Article 115(2) of Regulation (EU) No 1308/2013 relating to a decision of the Secretary of State to approve an application to protect a traditional term;

(b) after the definition of “country” insert—

‘enters into force’, in relation to a reference to an international agreement, includes, where the provisional application of that agreement is agreed between the parties before it enters into force, the provisional application of the agreement and ‘entry into force’ is to be construed accordingly;‘EUIA’ means an international agreement made between the European Union and a third country that provides for the protection of a traditional term used in the third country in the European Union;

(c) in the definition of “third country”, after “and” insert “, except in the definition of ‘EUIA’ in this Article and in Annex 7A,”.

(d) after the definition of “relevant legislation” insert—

‘the relevant period’ means the period beginning on exit day and expiring at the end of the day that falls nine months after the day on which exit day falls;

‘the TMA’ means the Trade Marks Act 1994;

‘the Types Table’ means the table in Part A of Annex 7A.

(3) After Article 1a insert the new Article 1b in Part 1 of Schedule 4.

(4) In Article 32(3), in the first subparagraph—

(a) omit “, where national legislation so provides,”;

(b) for “Union” substitute “ United Kingdom ” ;

(c) for the words from “under” to the end substitute “ in, or under, the TMA ” .

(5) After Article 32 insert the new Articles 32a and 32b in Part 2 of Schedule 4.

(6) After Annex 7 insert the new Annex 7A in Part 3 of Schedule 4.

Section 7 Regulation (EU) 2019/787 of the European Parliament and of the Council

(1) Regulation (EU) 2019/787 of the European Parliament and of the Council on the definition, description, presentation and labelling of spirit drinks, the use of the names of spirit drinks in the presentation and labelling of other foodstuffs, the protection of geographical indications for spirit drinks, the use of ethyl alcohol and distillates of agricultural origin in alcoholic beverages is amended as follows.

(2) In Article 3—

(a) after point (7) insert—

(7a) ‘an Article 30(4) approval notice’ means a notice published under Article 30(4) relating to a decision of the Secretary of State to approve an application for a geographical indication;

(7b) ‘enters into force’, in relation to a reference to an international agreement, includes, where the provisional application of that agreement is agreed between the parties before it enters into force, the provisional application of the agreement and ‘entry into force’ is to be construed accordingly;

(7c) ‘EUIA’ means an international agreement made between the European Union and a third country that provides for the protection of a geographical indication of the third country in the European Union;

(b) in point (12) , after “and” insert “, except in the definition of ‘EUIA’ in point (7c) and in Annex 1A,”;

(c) after point (12) insert—

(12a) ‘the TMA’ means the Trade Marks Act 1994;

(12b) ‘the Types Table’ means the table in Part 1 of Annex 1A;

(3) After Article 3 insert the new Article 4 in Part 1 of Schedule 5.

(4) In Article 36(2)—

(a) omit the words from “if” to “concerned,”;

(b) for “Union” substitute “ United Kingdom ” ;

(c) for “Commission” substitute “ Secretary of State ” ;

(d) for the words from “under” to the end substitute “ in, or under, the TMA ” .

(5) After Article 36 insert the new Articles 36a and 36b in Part 2 of Schedule 5.

(6) After Annex 1 insert the new Annex 1A in Part 3 of Schedule 5.

Section 1

Unless paragraph 4 applies, an application to register a trade mark that was pending immediately before exit day or filed during the relevant period must be refused where, if the trade mark is registered, the use of the trade mark will contravene Article 13(1) in relation to a category A designation of origin or geographical indication.

Section 1

For the purpose of Article 14a, the following provisions of the TMA apply, with the modifications, in the case of section 47(3) and (5), 74(1), 76(1) and 77(1), specified in paragraph 2:

(a) subsections (3) to (5) and (6) of section 47 (invalidation of trade marks) in relation to an application to invalidate a trade mark referred to in Article 14a(3);

(b) section 72 (registration to be prima face evidence of validity);

(c) section 73 (certificate of validity of contested application);

(d) section 74 (registrar's appearance in proceedings involving the register of trade marks);

(e) section 75 (definition of ‘the court’);

(f) section 76 (appeals) except for subsection (5);

(g) section 77(1) (persons appointed to hear and determine appeals).

Section 1

In the table in this Part:

(a) ‘an Article 52(4) notice’ means a notice published by the Secretary of State under Article 52(4);

(b) ‘the European Commission's PDOs and PGIs Register’ means the register established and maintained by the European Commission pursuant to Article 11(1) of EU Regulation 1151/2012;

(c) ‘the paragraph 1 trade mark application’ means the application to register a trade mark referred to in Article 14a(1);

(d) ‘the relevant pre-exit Regulation’ means:

(i) in the case of an application to register a designation of origin or geographical submitted to the European Commission under Council Regulation (EEC) No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs , Article 5 or 12a of that Regulation, as relevant;

(ii) in the case of an application to register a designation of origin or geographical submitted to the European Commission under Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs , Article 5 of that Regulation;

(iii) in the case of an application to register a designation of origin or geographical submitted to the European Commission under EU Regulation 1151/2012, Article 49(2) or (5) of that Regulation, as relevant;

(e) ‘the relevant trade mark application’ means a trade mark application of the type referred to in Article 14a(2) or (3)(a), as relevant;

(f) ‘the relevant EUIA-based date’ means the relevant EUIA-based date determined in accordance with Part 2.

Section 2

Unless paragraph 4 applies, an application to register a trade mark that was pending immediately before exit day or filed during the relevant period must be refused where:

(a) if the trade mark is registered, the use of the trade mark will contravene Article 13(1) in relation to a category B designation of origin or geographical indication, and

(b) after the application for the trade mark is accepted but before the trade mark is registered:

(i) in the case of a type 3B designation of origin or geographical indication:

(aa) the international agreement referred to in paragraph (c) of column 2 of row 3 of the Types Table enters into force, and

(bb) the entry into force of the international agreement is brought to the attention of the registrar before the trade mark is registered;

(ii) in the case of any other category B designation of origin or geographical indication:

(aa) the Secretary of State publishes an Article 52(4) approval notice relating to the designation of origin or geographical indication, and

(bb) the Article 52(4) approval notice is brought to the attention of the registrar before the trade mark is registered.

Section 2

The modifications are:

(a) section 47 applies as if:

(i) in subsection (3), in the words before paragraph (a), after ‘invalidity’ there were inserted ‘made under this section, as applied by Article 14b(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs on quality schemes for agricultural products and foodstuffs,’;

(ii) in subsection (5), for ‘grounds of invalidity exist’ there were substituted ‘ground for invalidity specified in Article 14a(3) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council exists’;

(b) section 74(1) applies as if, for the words from ‘for’ to ‘the registrar’ there were substituted ‘for a declaration of the invalidity of the registration of a trade mark the registrar’;

(c) section 76(1) applies as if:

(i) in the first paragraph, for the words from ‘this Act’ to the end there were substituted ‘made under Article 14a of Regulation (EU) No 1151/2012 of the European Parliament and of the Council’;

(ii) the second paragraph were omitted;

(d) section 77(1) applies as if, at the end there were inserted ‘as applied by Article 14b(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council’.

Section 2

In the table in Part 1, in a case where the relevant EUIA-based date applies, the relevant EUIA-based date means:

(a) the date provided for in paragraph 3, or

(b) where paragraph 3 does not apply, the date provided for in the relevant point of paragraph 4, or paragraph 5 or 6, as relevant to the designation of origin or geographical indication.

Section 3

Where an application for a declaration of invalidity is made under the TMA (as applied by Article 14b(1) and modified by Article 14b(2)) in relation to the registration of a trade mark, the registration of a trade mark must be declared to be invalid, unless paragraph 4 applies, if:

(a) the application to register the trade mark was pending immediately before exit day or filed during the relevant period,

(b) the use of the trade mark contravenes, or will, if used, contravene, Article 13(1) in relation to a category B designation of origin or geographical indication, and

(c) in the case of a type 2B, 4B, 5B, 6B or 7B designation of origin or geographical indication, the Secretary of State publishes an Article 52(4) approval notice relating to the designation of origin or geographical indication on or after the day on which the trade mark application is accepted.

Section 3

In the case of the following proceedings, the rules made under section 68 or 69 of the TMA apply to those proceedings as they apply to proceedings involving an application of the type referred to in section 74(1)(b) of the TMA:

(a) an application to invalidate a trade mark referred to in Article 14a(3);

(b) an appeal to the appointed person from a decision of the registrar in relation to an application referred to in paragraph (a).

Section 3

In a case where the EUIA referred to in paragraph (b) in column 2 of the row of the Types Table relating to a designation of origin or geographical indication contained priority provisions that applied to the designation of origin or geographical indication, the relevant EUIA-based date is the priority date provided for in the EUIA that applied to that designation of origin or geographical indication.

Section 4

This paragraph applies where a column 5 date applies in relation to a category A or B designation of origin or geographical indication and, taking account of any priority claimed in respect of an application to register the trade mark referred to in paragraph 1, 2 or 3(a) (as relevant) and on the basis of the information available to the registrar, it appears to the registrar that the date of filing of the trade mark application is earlier than the column 5 date that applies to the relevant designation of origin or geographical indication.

Section 4

In a case of a type 3 or 4 designation of origin or geographical indication to which paragraph 3 does not apply, the relevant EUIA-based date is:

(a) in a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to an amendment made to the EUIA (without the need for further action to be taken under the EUIA), the date on which the amendment entered into force;

(b) in a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to a provision in the EUIA that was provisionally applied before exit day (without the need for further action to be taken under the EUIA), the date on which the provision was provisionally applied;

(c) in a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to an amendment made to the EUIA that was provisionally applied before exit day (without the need for further action to be taken under the EUIA), the date on which the amendment was provisionally applied;

(d) in a case of a designation of origin or geographical indication that was protected in the European Union immediately before exit day following the submission and processing of a request, or application, for protection or assessment (however described) under a provision in the EUIA providing for such requests, or applications, the date the request, or application, for protection or assessment was submitted under the EUIA;

(e) in any other case, including a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to provisions in the EUIA that applied from the date that the EUIA entered into force (without the need for further action to be taken under the EUIA), the date on which the relevant EUIA entered into force.

Section 5

As regards paragraph 1 or 2, a column 5 date does not apply in relation to a type 3A, 4A or 5A designation of origin or geographical indication where the EUIA referred to in paragraph (b) in column 2 of the row of the Types Table relating to the designation of origin or geographical indication provides that an application for a trade mark must be refused, regardless of when that application is filed, if the trade mark, if registered, will contravene a provision in the EUIA providing for the protection of the use of the designation of origin or geographical indication

Section 5

In a case of a type 5 designation of origin or geographical indication to which paragraph 3 does not apply and for which a request, or an application, for protection or assessment (however described) was submitted before exit day under the EUIA, the relevant EUIA-based date is the date the request, or application, for protection or assessment was submitted under the EUIA.

Section 6

As regards paragraph 3, a column 5 date does not apply in relation to a type 3B, 4B or 5B designation of origin or geographical indication where the EUIA referred to in paragraph (b) in column 2 of the row of the Types Table relating to the designation of origin or geographical indication provides that the registration of a trade mark must be invalidated if, regardless of when the application that resulted in the registration of the trade mark is filed, the use of the trade mark contravenes a provision in the EUIA providing for the protection of the use of the designation of origin or geographical indication.

Section 6

Any reference in this Part to:

(a) ‘the priority date’ means the date provided for in priority provisions in an EUIA as the date that must be taken into account when determining whether an application for a trade mark may be granted, including:

(i) a calendar date specified in the EUIA;

(ii) a date relating to the happening of a specified event;

(b) ‘priority provisions’ means provisions in an EUIA that governed the relationship between trade marks and designations of origin and geographical indications that provided (however expressed):

(i) that, in the circumstances specified in the EUIA, an application for a trade mark must be refused if the application for the trade mark was filed after a date provided for in the EUIA,

(ii) that, in the circumstances specified in the EUIA, the registration of a trade mark must be invalidated if the application that resulted in the registration of that trade mark was filed after a date provided for in the EUIA, or

(iii) for both the refusal of applications for trade marks, and the invalidation of the registration of trade marks, as provided for in points (i) and (ii);

(c) ‘without the need for further action to be taken under the EUIA’, in relation to a designation of origin or geographical indication protected in the European Union immediately before exit day pursuant to an EUIA, means that the provisions in the EUIA providing for the designation of origin or geographical indication to be protected in the European Union did not require a request or application (however described) to be submitted by the contracting third country under the EUIA in relation to the protection of the designation of origin or geographical indication or require an assessment to be carried out under the EUIA in relation to the designation of origin or geographical indication.

Section 7

Where a designation of origin or geographical indication falls within the definition of more than one type of designation of origin or geographical indication in Article 3a, the column 5 date to be taken into account for the purpose of paragraph 4 is the earliest of the column 5 dates for the relevant types of designation of origin or geographical indication.

Section 8

A trade mark that could be used under Article 14(2) of EU Regulation 1151/2012 immediately before exit day and could be renewed pursuant to that provision may continue to be used and renewed:

(a) notwithstanding that the use of the trade mark would contravene Article 13(1) in relation to a designation of origin or geographical indication registered by the Secretary of State under this Regulation;

(b) provided that no grounds for the invalidation or revocation of the trade mark exist in, or under, the TMA.

Section 9

Where paragraph 8 applies to the use or renewal of a trade mark, this does not affect the use of:

(a) a designation of origin or geographical indication entered on the United Kingdom's PDOs and PGIs Register by the Secretary of State under Article 11(2);

(b) an established protected designation of origin or an established protected geographical indication entered on the United Kingdom's PDOs and PGIs Register pursuant to Article 16;

(c) a designation of origin or geographical indication entered on the United Kingdom's PDOs and PGIs Register following a decision by the Secretary of State to approve an application to register the designation of origin or geographical indication following an application submitted under Article 49.

Section 10

In this Article:

(a) ‘an application to register a trade mark’ means an application to register a trade mark filed under the TMA;

(b) ‘a category A designation of origin or geographical indication’ means a type 1, 2A, 3A, 4A, 5A, 6A or 7A designation of origin or geographical indication;

(c) ‘a category B designation of origin or geographical indication’ means a type 2B, 3B, 4B, 5B, 6B or 7B designation of origin or geographical indication;

(d) ‘the column 5 date’, in relation to a designation of origin or geographical indication that is a category A or B designation of origin or geographical indication, means the date specified, or provided for, in column 5 of the Types Table in the row relating to the relevant type of designation of origin or geographical indication;

(e) ‘date of filing’:

(i) in the case of an EUTM-based trade mark application, means the filing date referred to in paragraph 25(2)(a)(i) of Schedule 2A to the TMA for the existing EUTM application;

(ii) in the case of an ITM-based trade mark application, means:

(aa) in the case of an application for the registration of a trade mark to which paragraph 28 of Schedule 2B to the TMA applies, the date referred to in paragraph 28(2)(a) of that Schedule for the existing ITM application or existing request for EU extension (as the case may be);

(bb) in the case of an application for the registration of a trade mark to which paragraph 29 of Schedule 2B to the TMA applies, the date referred to in paragraph 29(2)(a) of that Schedule for the existing ITM application or existing request for EU extension (as the case may be);

(iii) in any other case, has the meaning given by section 33 of the TMA;

(f) ‘EUTM-based trade mark application’ means an application to register a trade mark to which paragraph 25(1) of Schedule 2A to the TMA applies that is made within the period specified in paragraph 25(2) of that Schedule;

(g) ‘existing EUTM application’ has the same meaning as in paragraph 24 of Schedule 2A to the TMA;

(h) ‘existing ITM application’ has the same meaning as in paragraph 27(1)(a) of Schedule 2B to the TMA;

(i) ‘existing request for EU extension’ has the same meaning as in paragraph 27(1)(b) of Schedule 2B to the TMA;

(j) ‘ITM-based trade mark application’ means an application to register a trade mark to which paragraph 28(1) or 29(1) of Schedule 2B to the TMA applies that is made within the period specified in paragraph 28(1)(c) or 29(1)(c) (as the case may be) of that Schedule;

(k) ‘the registrar’ has the meaning given by section 62 to the TMA.

Section 11

Any reference in this Article to:

(a) ‘priority claimed in respect of an application’:

(i) in the case of an EUTM-based trade mark application, means any priority claimed in respect of the existing EUTM application referred to in paragraph 25(2)(a)(ii) of Schedule 2A to the TMA;

(ii) in the case of an ITM-based trade mark application, means any priority claimed in respect of the existing ITM application or the existing request for EU extension referred to in paragraph 28(2)(b) or 29(2)(b) (as the case may be) of Schedule 2B to the TMA;

(iii) in any other case, means any priority claimed in respect of the application pursuant to section 35 of the TMA;

(b) an application to register a trade mark that was ‘pending immediately before exit day’ is to an application that was neither refused, nor resulted in the registration of the trade mark that is the subject of the application, before exit day;

(c) a trade mark includes a reference to:

(i) a collective mark as defined in section 49(1) of the TMA ;

(ii) a certification mark as defined in section 50(1) of the TMA .

Section 1

Unless paragraph 4 applies, an application to register a trade mark that was pending immediately before exit day or filed during the relevant period must be refused where, if the trade mark is registered, the use of the trade mark will contravene Article 103(2) in relation to a category A designation of origin or geographical indication.

Section 1

For the purpose of Article 102a, the following provisions of the TMA apply, with the modifications, in the case of section 47(3) and (5), 74(1), 76(1) and 77(1), specified in paragraph 2:

(a) subsections (3) to (5) and (6) of section 47 (invalidation of trade marks) in relation to an application to invalidate a trade mark referred to in Article 102a(3);

(b) section 72 (registration to be prima face evidence of validity);

(c) section 73 (certificate of validity of contested application);

(d) section 74 (registrar's appearance in proceedings involving the register of trade marks);

(e) section 75 (definition of ‘the court’);

(f) section 76 (appeals) except for subsection (5);

(g) section 77(1) (persons appointed to hear and determine appeals).

Section 1

In the table in this Part:

(a) ‘an Article 99 notice’ means a notice published by the Secretary of State under Article 99(2) or (3);

(b) ‘the European Commission's PDOs and PGIs Register’ means the register established and maintained by the European Commission pursuant to Article 104 of EU Regulation 1308/2013 ;

(c) ‘EU Regulation 2019/34’ means Commission Implementing Regulation (EU) 2019/34 laying down rules for the application of Regulation (EU) No 1308/2013 of the European Parliament and of the Council as regards applications for protection of designations of origin, geographical indications and traditional terms in the wine sector, the objection procedure, amendments to product specifications, the register of protected names, cancellation of protection and use of symbols, and of Regulation (EU) No 1306/2013 of the European Parliament and of the Council as regards an appropriate system of checks as it had effect before exit day;

(d) ‘the paragraph 1 trade mark application’ means the application to register a trade mark referred to in Article 102a(1);

(e) ‘Regulation 607/2009’ means Commission Regulation (EC) No 607/2009 laying down certain detailed rules for the implementation of Council Regulation (EC) No 479/2008 as regards protected designations of origin and geographical indications, traditional terms, labelling and presentation of certain wine sector products;

(f) ‘the relevant pre-exit legislation’ means, as relevant:

(i) in the case of an application to register a designation of origin or geographical indication submitted to the European Commission under Regulation (EC) No 1234/2007 , Article 118d or Article 118f(7) of that Regulation, as relevant;

(ii) in the case of an application to register a designation of origin or geographical indication submitted to the European Commission under Council Regulation (EC) No 479/2008 on the common organisation of the market in wine , Article 36(2) or Article 38(5) of that Regulation, as relevant;

(iii) in the case of an application to register a designation of origin or geographical indication submitted to the European Commission under Regulation 607/2009, paragraph 2, 3 or 4 of Article 10 of that Regulation, as relevant;

(iv) in the case of an application to register a designation of origin or geographical indication submitted to the European Commission under EU Regulation 1308/2013, Article 96(5) of that Regulation;

(v) in the case of an application to register a designation of origin or geographical indication submitted to the European Commission under EU Regulation 2019/34, Article 3 or 4 of that Regulation, as relevant;

(g) ‘the relevant trade mark application’ means a trade mark application of the type referred to in Article 102a(2) or (3)(a), as relevant;

(h) ‘the relevant EUIA-based date’ means the relevant EUIA-based date determined in accordance with Part 2.

Section 2

Unless paragraph 4 applies, an application to register a trade mark that was pending immediately before exit day or filed during the relevant period must be refused where:

(a) if the trade mark is registered, the use of the trade mark will contravene Article 103(2) in relation to a category B designation of origin or geographical indication, and

(b) after the application for the trade mark is accepted but before the trade mark is registered:

(i) in the case of a type 3B designation of origin or geographical indication:

(aa) the international agreement referred to in paragraph (c) of column 2 of row 3 of the Types Table enters into force, and

(bb) the entry into force of the international agreement is brought to the attention of the registrar before the trade mark is registered;

(ii) in the case of any other category B designation of origin or geographical indication:

(aa) the Secretary of State publishes an Article 99 approval notice relating to the designation of origin or geographical indication, and

(bb) the Article 99 approval notice is brought to the attention of the registrar before the trade mark is registered.

Section 2

The modifications are:

(a) section 47 applies as if:

(i) in subsection (3), in the words before paragraph (a), after ‘invalidity’ there were inserted ‘made under this section, as applied by Article 102b(1) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council establishing a common organisation of the markets in agricultural products’;

(ii) in subsection (5), for ‘grounds of invalidity exist’ there were substituted ‘ground for invalidity specified in Article 102a(3) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council exists’;

(b) section 74(1) applies as if, for the words from ‘for’ to ‘the registrar’ there were substituted ‘for a declaration of the invalidity of the registration of a trade mark the registrar’;

(c) section 76(1) applies as if:

(i) in the first paragraph, for the words from ‘this Act’ to the end there were substituted ‘made under Article 102a(3) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council’;

(ii) the second paragraph were omitted;

(d) section 77(1) applies as if, at the end there were inserted ‘as applied by Article 102b(1) of Regulation (EU) No 1308/2013 of the European Parliament and of the Council’.

Section 2

In the table in Part 1, in a case where the relevant EUIA-based date applies, the relevant EUIA-based date means:

(a) the date provided for in paragraph 3, or

(b) where paragraph 3 does not apply, the date provided for in the relevant point of paragraph 4, or paragraph 5 or 6, as relevant to the designation of origin or geographical indication.

Section 3

Where an application for a declaration of invalidity is made under the TMA (as applied by Article 102b(1) and modified by Article 102b(2)) in relation to the registration of a trade mark, the registration of a trade mark must be declared to be invalid, unless paragraph 4 applies, if:

(a) the application to register the trade mark was pending immediately before exit day or filed during the relevant period,

(b) the use of the trade mark contravenes, or will, if used, contravene, Article 103(2) in relation to a category B designation of origin or geographical indication, and

(c) in the case of a type 2B, 4B, 5B, 6B or 7B designation of origin or geographical indication, the Secretary of State publishes an Article 99 approval notice relating to the designation of origin or geographical indication on or after the day on which the trade mark application is accepted.

Section 3

In the case of the following proceedings, the rules made under section 68 or 69 of the TMA apply to those proceedings as they apply to proceedings involving an application of the type referred to in section 74(1)(b) of the TMA:

(a) an application to invalidate a trade mark referred to in Article 102a(3);

(b) an appeal to the appointed person from a decision of the registrar in relation to an application referred to in paragraph (a).

Section 3

In a case where the EUIA referred to in paragraph (b) in column 2 of the row of the Types Table relating to a designation of origin or geographical indication contained priority provisions that applied to the designation of origin or geographical indication, the relevant EUIA-based date is the priority date provided for in the EUIA that applied to that designation of origin or geographical indication.

Section 4

This paragraph applies where a column 5 date applies in relation to a category A or B designation of origin or geographical indication and, taking account of any priority claimed in respect of an application to register a trade mark referred to in paragraph 1, 2 or 3(a) (as relevant) and on the basis of the information available to the registrar, it appears to the registrar that the date of filing of the trade mark application is earlier than the column 5 date that applies to the relevant designation of origin or geographical indication.

Section 4

In a case of a type 3 or 4 designation of origin or geographical indication to which paragraph 3 does not apply, the relevant EUIA-based date is:

(a) in a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to an amendment made to the EUIA (without the need for further action to be taken under the EUIA), the date on which the amendment entered into force;

(b) in a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to a provision in the EUIA that was provisionally applied before exit day (without the need for further action to be taken under the EUIA), the date on which the provision was provisionally applied;

(c) in a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to an amendment made to the EUIA that was provisionally applied before exit day (without the need for further action to be taken under the EUIA), the date on which the amendment was provisionally applied;

(d) in a case of a designation of origin or geographical indication that was protected in the European Union immediately before exit day following the submission and processing of a request, or application, for protection or assessment (however described) under a provision in the EUIA providing for such requests, or applications, the date the request, or application, for protection or assessment was submitted under the EUIA;

(e) in any other case, including a case where the designation of origin or geographical indication was protected in the European Union immediately before exit day pursuant to provisions in the EUIA that applied from the date that the EUIA entered into force (without the need for further action to be taken under the EUIA), the date on which the relevant EUIA entered into force.

Section 5

As regards paragraph 1 or 2, a column 5 date does not apply in relation to a type 3A, 4A or 5A designation of origin or geographical indication where the EUIA referred to in paragraph (b) in column 2 of the row of the Types Table relating to the designation of origin or geographical indication provides that an application for a trade mark must be refused, regardless of when that application is filed, if the trade mark, if registered, will contravene a provision in the EUIA providing for the protection of the use of the designation of origin or geographical indication

Section 5

In a case of a type 5 designation of origin or geographical indication to which paragraph 3 does not apply and for which a request, or application, for protection or assessment (however described) was submitted before exit day under the EUIA, the relevant EUIA-based date is the date the request, or application, for protection or assessment was submitted under the EUIA.

Section 6

As regards paragraph 3, a column 5 date does not apply in relation to a type 3B, 4B or 5B designation of origin or geographical indication where the EUIA referred to in paragraph (b) in column 2 of the row of the Types Table relating to the designation of origin or geographical indication provides that the registration of a trade mark must be invalidated if, regardless of when the application that resulted in the registration of the trade mark is filed, the use of the trade mark contravenes a provision in the EUIA providing for the protection of the use of the designation of origin or geographical indication.

Section 6

Any reference in this Part to:

(a) ‘the priority date’ means the date provided for in priority provisions in an EUIA as the date that must be taken into account when determining whether an application for a trade mark may be granted, including:

(i) a calendar date specified in the EUIA;

(ii) a date relating to the happening of a specified event;

(b) ‘priority provisions’ means provisions in an EUIA that governed the relationship between trade marks and designations of origin and geographical indications that provided (however expressed):

(i) that, in the circumstances specified in the EUIA, an application for a trade mark must be refused if the application for the trade mark was filed after a date provided for in the EUIA,

(ii) that, in the circumstances specified in the EUIA, the registration of a trade mark must be invalidated if the application that resulted in the registration of that trade mark was filed after a date provided for in the EUIA, or

(iii) for both the refusal of applications for trade marks, and the invalidation of the registration of trade marks, as provided for in points (i) and (ii);

(c) ‘without the need for further action to be taken under the EUIA’, in relation to a designation of origin or geographical indication protected in the European Union immediately before exit day pursuant to an EUIA, means that the provisions in the EUIA providing for the designation of origin or geographical indication to be protected in the European Union did not require a request or application (however described) to be submitted by the contracting third country under the EUIA in relation to the protection of the designation of origin or geographical indication or require an assessment to be carried out under the EUIA in relation to the designation of origin or geographical indication.

Section 7

Where a designation of origin or geographical indication falls within the definition of more than one type of designation of origin or geographical indication in Article 93a, the column 5 date to be taken into account for the purpose of paragraph 4 is the earliest of the column 5 dates for the relevant types of designation of origin or geographical indication.

Section 8

A trade mark that could be used under Article 102(2) of EU Regulation 1308/2013 immediately before exit day and could be renewed pursuant to that provision may continue to be used and renewed:

(a) notwithstanding that the use of the trade mark would contravene Article 103(2) in relation to a designation of origin or geographical indication registered by the Secretary of State under this Regulation;

(b) provided that no grounds for the invalidation or revocation of the trade mark exist in, or under, the TMA.

Section 9

Where paragraph 8 applies to the use or renewal of a trade mark, this does not affect the use of:

(a) a designation of origin or geographical indication entered on the United Kingdom's PDOs and PGIs Register following a decision by the Secretary of State to approve an application made under Article 95(1a) or Article 3 of Commission Implementing Regulation (EU) 2019/34 laying down rules for the application of Regulation (EU) No 1308/2013 of the European Parliament and of the Council as regards applications for protection of designations of origin, geographical indications and traditional terms in the wine sector, the objection procedure, amendments to product specifications, the register of protected names, cancellation of protection and use of symbols, and of Regulation (EU) No 1306/2013 of the European Parliament and of the Council as regards an appropriate system of checks ;

(b) a designation of origin or geographical indication entered on the United Kingdom's PDOs and PGIs Register by the Secretary of State following a decision of the Secretary of State to approve an application to which Article 97A applies;

(c) a designation of origin or geographical indication entered on the United Kingdom's PDOs and PGIs Register by the Secretary of State pursuant to the second sentence of Article 104;

(d) an established protected designation of origin or an established protected geographical indication entered on the United Kingdom's PDOs and PGIs Register by the Secretary of State pursuant to 107(1).

Section 10

In this Article:

(a) ‘an application to register a trade mark’ means an application to register a trade mark filed under the TMA;

(b) ‘a category A designation of origin or geographical indication’ means a type 1, 2A, 3A, 4A, 5A, 6A or 7A designation of origin or geographical indication;

(c) ‘a category B designation of origin or geographical indication’ means a type 2B, 3B, 4B, 5B, 6B or 7B designation of origin or geographical indication;

(d) ‘the column 5 date’, in relation to a designation of origin or geographical indication that is a category A or B designation of origin or geographical indication, means the date specified, or provided for, in column 5 of the Types Table in the row relating to the relevant type of designation of origin or geographical indication;

(e) ‘date of filing’:

(i) in the case of an EUTM-based trade mark application, means the filing date referred to in paragraph 25(2)(a)(i) of Schedule 2A to the TMA for the existing EUTM application;

(ii) in the case of an ITM-based trade mark application, means:

(aa) in the case of an application for the registration of a trade mark to which paragraph 28 of Schedule 2B to the TMA applies, the date referred to in paragraph 28(2)(a) of that Schedule for the existing ITM application or existing request for EU extension (as the case may be);

(bb) in the case of an application for the registration of a trade mark to which paragraph 29 of Schedule 2B to the TMA applies, the date referred to in paragraph 29(2)(a) of that Schedule for the existing ITM application or existing request for EU extension (as the case may be);

(iii) in any other case, has the meaning given by section 33 of the TMA;

(f) ‘established protected designation of origin’ means a designation of origin covered by Article 107(2)(a);

(g) ‘established protected geographical indication’ means a geographical indication covered by Article 107(2)(a);

(h) ‘EUTM-based trade mark application’ means an application to register a trade mark to which paragraph 25(1) of Schedule 2A to the TMA applies that is made within the period specified in paragraph 25(2) of that Schedule;

(i) ‘existing EUTM application’ has the same meaning as in paragraph 24 of Schedule 2A to the TMA;

(j) ‘existing ITM application’ has the same meaning as in paragraph 27(1)(a) of Schedule 2B to the TMA;

(k) ‘existing request for EU extension’ has the same meaning as in paragraph 27(1)(b) of Schedule 2B to the TMA;

(l) ‘ITM-based trade mark application’ means an application to register a trade mark to which paragraph 28(1) or 29(1) of Schedule 2B to the TMA applies that is made within the period specified in paragraph 28(1)(c) or 29(1)(c) (as the case may be) of that Schedule;

(m) ‘the registrar’ has the meaning given by section 62 to the TMA.

Section 11

Any reference in this Article to:

(a) ‘priority claimed in respect of an application’:

(i) in the case of an EUTM-based trade mark application, means any priority claimed in respect of the existing EUTM application referred to in paragraph 25(2)(a)(ii) of Schedule 2A to the TMA;

(ii) in the case of an ITM-based trade mark application, means any priority claimed in respect of the existing ITM application or the existing request for EU extension referred to in paragraph 28(2)(b) or 29(2)(b) (as the case may be) of Schedule 2B to the TMA;

(iii) in any other case, means any priority claimed in respect of the application pursuant to section 35 of the TMA;

(b) an application to register a trade mark that was ‘pending immediately before exit day’ is to an application that was neither refused, nor resulted in the registration of the trade mark that is the subject of the application, before exit day;

(c) a trade mark includes a reference to:

(i) a collective mark as defined in section 49(1) of the TMA;

(ii) a certification mark as defined in section 50(1) of the TMA.

Section 1

Unless paragraph 4 applies, an application to register a trade mark that was pending immediately before exit day or filed during the relevant period must be refused where, if the trade mark is registered, the use of the trade mark will contravene Article 20(2) in relation to a category A geographical indication.

Section 1

For the purpose of Article 19a, the following provisions of the TMA apply, with the modifications, in the case of section 47(3) and (5), 74(1), 76(1) and 77(1), specified in paragraph 2:

(a) subsections (3) to (5) and (6) of section 47 (invalidation of trade marks) in relation to an application to invalidate a trade mark referred to in Article 19a(3);

(b) section 72 (registration to be prima face evidence of validity);

(c) section 73 (certificate of validity of contested application);

(d) section 74 (registrar's appearance in proceedings involving the register of trade marks);

(e) section 75 (definition of ‘the court’);

(f) section 76 (appeals) except for subsection (5);

(g) section 77(1) (persons appointed to hear and determine appeals).

Section 1

In the table in this Part:

(a) ‘an Article 16 notice’ means a notice published by the Secretary of State under the second paragraph of Article 16;

(b) ‘the European Commission's GIs Register’ means the register maintained by the European Commission under Article 21 of EU Regulation 251/2014 ;

(c) ‘the paragraph 1 trade mark application’ means the application to register a trade mark referred to in Article 19a(1);

(d) ‘the relevant trade mark application’ means the trade mark application referred to in Article 19a(2) or (3)(a), as relevant;

(e) ‘the relevant EUIA-based date’ means the relevant EUIA-based date determined in accordance with Part B.