The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019

Regulation 7

SCHEDULE 5 Fees payable in respect of re-registered designs, re-registered international designs and comparable trade marks (IR)

PART 1 Fees payable in respect of a re-registered design or a re-registered international design

1.—(1) The extension of the duration of the right in a re-registered design or a re-registered international design under section 8 of the Act is subject to the payment of a renewal fee and payment of the additional fee which applies in the circumstances referred to in section 8(4) of the Act.

(2) But no additional fee is payable if the application for extension under section 8(4) of the Act relates to a re-registered design, or a re-registered international design, the right in which expired within the period of six months beginning with exit day and ending with the end of the relevant period.

(3) In sub-paragraph (2), “the relevant period” means the period of six months ending with the day after that on which exit day falls.

2.  The restoration of the right in a re-registered design or a re-registered international design under section 8A of the Act is subject to the payment of a renewal fee and payment of the additional fee which applies in the circumstances referred to in section 8(4) of the Act.

3.  A request for a certified copy of an entry in the register or a certified extract from the register relating to a re-registered design or a re-registered international design made under section 17(5) of the Act is subject to payment of a fee.

4.  The registrar may by rules provide that any person who applies for an uncertified copy or extract from the register in respect of a re-registered design or re-registered international design shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts.

5.  A request made to correct any error in the representation of a re-registered design or re-registered international design, or any error in the register in respect of a re-registered design or re-registered international design, made under section 21(2) of the Act is subject to payment of a fee.

6.  A request for information under section 23 of the Act relating to a design which is a re-registered design or re-registered international design is subject to payment of a fee.

7.  The registrar may by regulations make provision about fees in relation to the making of requests to the registrar under section 28A for an opinion on specified matters relating to re-registered designs or re-registered international designs.

8.  The Registered Designs (Fees) Rules 2016(1) apply to re-registered designs and re-registered international designs as they apply to other registered designs.

PART 2 Fees payable in respect of a comparable trade mark (IR)

9.  The renewal of the registration of a comparable trade mark (IR) under section 43 of the 1994 Act is subject to the payment of a renewal fee and, in the circumstances referred to in section 43(3) of the 1994 Act, payment of an additional renewal fee.

10.  The renewal of the registration of a comparable trade mark (IR) under paragraph 5 of Schedule 2B to the 1994 Act is subject to the payment of a renewal fee as if the renewal had been requested under section 43(1) of the 1994 Act before the expiry of the registration.

11.  The renewal of a comparable trade mark (IR) under paragraph 26(5) or (6) of Schedule 2B to the 1994 Act is subject to the payment of a renewal fee as if the renewal had been requested under section 43(1) of the 1994 Act before the expiry of the registration.

12.  If a renewal fee is paid in respect of only some of the goods or services for which a comparable trade mark (IR) is registered, the registration is to be renewed for those goods or services only.

13.  A request for information or inspection of documents relating to a comparable trade mark (IR) made under section 67 of the 1994 Act is subject to payment of the appropriate fee (if any).

14.  The Trade Marks (Fees) Rules 2008(2) apply to comparable trade marks (IR) as they apply to other registered trade marks.

15.  The Commissioners for Her Majesty’s Revenue and Customs may by regulations made by statutory instrument require the proprietor or a licensee of a comparable trade mark (IR) who is giving notice under section 89 of the 1994 Act to pay such fees in respect of the notice as may be specified by the regulations.

16.  Regulations under paragraph 15 may make different provision as respects different classes of case to which they apply and may include such incidental and supplementary provisions as the Commissioners consider expedient.

17.  A statutory instrument containing regulations under paragraph 15 is subject to annulment in pursuance of a resolution of either House of Parliament.

18.  The Trade Marks (Customs) Regulations 1994, to the extent that they make provision which could be made under paragraph 15, are to be treated as if they had been made under paragraph 14 as well as under section 90 of the 1994 Act.

(1)

S.I. 2016/889

(2)

S.I. 2008/1958 as amended by S.I. 2009/2089, rules 15 to 19, S.I. 2010/33, rules 13 to 14, S.I. 2012/1003, rule 3(2), S.I. 2013/2236, rules 2(1) to (c).