4Designations of origin and geographical indications
(1)
Regulation 1151/2012 is amended as set out in subsections (2) to (4).
(2)
", and a trade mark has been ‘applied for’, or an application for registration of a trade mark is ‘pending’, where an application to register a trade mark has been submitted and:
(a)
the trade mark has not been registered,
(b)
the application has not been withdrawn or abandoned, and
(c)
in a case where the application for registration has been refused—
(i)
an appeal has been brought but has not been finally determined, withdrawn or abandoned, or
(ii)
the period for bringing an appeal is still running (disregarding the possibility of an appeal out of time);".
(3)
“, in” to the end substitute“the name proposed is likely to cause confusion with a trade mark that is, on the date on which the application for protection of the designation of origin or geographical indication is submitted to the Secretary of State:
(a)
the subject of a good faith pending application for registration,
(b)
the subject of a good faith registration, or
(c)
established by use,
within the territory of the United Kingdom."
(4)
“1A.
The Secretary of State may, on the Secretary of State’s own initiative or at the request of any natural or legal person having a legitimate interest, decide to cancel the registration of a protected designation of origin or a protected geographical indication on the grounds that, on the date on which the application for registration was submitted to the Secretary of State under Article 49, either of the following provisions applied in relation to the name proposed:
(a)
paragraph 1 of Article 6 (no registration of generic terms), or
(b)
paragraph 4 of Article 6 (conflict with trade mark).
1B.
In a case where the protected designation of origin or protected geographical indication has been the subject of an application for approval of an amendment to the product specification under Article 53 which resulted in a change to the protected name, the reference in paragraph 1A to the application for registration under Article 49 is to be read as a reference to the application for approval of the amendment to the name under Article 49 as applied by Article 53(2) (or, in a case where there has been more than one such application, the latest of those).”
(5)
In Regulation 664/2014, in Article 7(1) (cancellation), for the words from “as” to “54(1)”, substitute “under Article 54(1) or (1A)”
.
(6)
Regulation 668/2014 is amended as set out in subsections (7) to (9).
(7)
In Article 11(1) (cancellation), after “54(1)” insert “or (1A)”
.
(8)
In Annex 3 (reasoned statement of opposition), in section 4 (reason for the opposition), omit “existing”.
(9)
In Annex 9 (cancellation request)—
(a)
in the words before section 1, after “54(1)” insert “or (1A)”
;
(b)
in section 4, after “54(1)” insert “or (1A)”
;
(c)
“☐ In accordance with Article 54(1A) of Regulation (EU) No 1151/2012
☐ point (a)
[Provide the detailed reasons and, where appropriate, evidence for the cancellation of the registration of the name in accordance with point (a) of Article 54(1A).]
☐ point (b)
[Provide the detailed reasons and, where appropriate, evidence for the cancellation of the registration of the name in accordance with point (b) of Article 54(1A).]”
(10)
(a)
an application for the protection of a DO or GI that is submitted on or after the day on which those amendments come into force (and for date of submission of such an application, see Article 6(3) of Regulation 668/2014), or
(b)
a name-change application relating to the protected DO or GI that is submitted on or after that day (and for date of submission of such an application, see Article 10(4) of Regulation 668/2014).
(11)
(a)
the Secretary of State may decide to cancel the registration of a protected DO or a protected GI under Article 54(1A)(a) (cancellation on ground that generic name should not have been registered) whether the application for protection of the DO or GI was submitted before or after those amendments came into force;
(b)
the Secretary of State may decide to cancel the registration of a protected DO or a protected GI under Article 54(1A)(b) (cancellation on ground of conflict with trade mark) only in a case where—
(i)
the application for protection of the DO or GI was submitted on or after the day on which those amendments came into force (and for date of submission of such an application, see Article 6(3) of Regulation 668/2014), or
(ii)
a name-change application relating to the protected DO or GI was submitted on or after that day (and for date of submission of such an application, see Article 10(4) of Regulation 668/2014).
(12)
In this section—
“DO” means a designation of origin for the purposes of Regulation 1151/2012 (see Article 5(1) of that Regulation);
“GI” means a geographical indication for the purposes of Regulation 1151/2012 (see Article 5(2) of that Regulation);
“name-change application” means an application for approval of an amendment to a product specification under Article 53 of Regulation 1151/2012 which involves a change to the protected name;
“Regulation 1151/2012” means Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs;
“Regulation 664/2014” means Commission Delegated Regulation (EU) No 664/2014 of 18 December 2013 supplementing Regulation (EU) No 1151/2012 of the European Parliament and of the Council with regard to the establishment of the Union symbols for protected designations of origin, protected geographical indications and traditional specialities guaranteed and with regard to certain rules on sourcing, certain procedural rules and certain additional transitional rules;
“Regulation 668/2014” means Commission Implementing Regulation (EU) No 668/2014 of 13 June 2014 laying down rules for the application of Regulation (EU) No 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs.