• SCHEDULE 4

    The Registered Designs Act 1949 as amended

    An Act to consolidate certain enactments relating to registered designs.

    The Registered Designs Act 1949 (and amending legislation) is reproduced under the terms of Crown Copyright Policy Guidance issued by HMSO.

    REGISTRABLE DESIGNS AND PROCEEDINGS FOR REGISTRATION

    Section 1: Registration of designs.

    1. - (1) A design may, subject to the following provisions of this Act, be registered under this Act on the making of an application for registration.

    (2) In this Act "design" means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.

    (3) In this Act -

    "complex product" means a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product; and

    "product" means any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product.

    Notes & References

    Relevant Community Design Directive Article(s): 1(a) - (c) & 3(1)

    Section 1A: Substantive grounds for refusal of registration.

    1A. - (1) The following shall be refused registration under this Act -

    (a) anything which does not fulfil the requirements of section 1(2) of this Act;

    (b) designs which do not fulfil the requirements of sections 1B to 1D of this Act;

    (c) designs to which a ground of refusal mentioned in Schedule A1 to this Act applies.

    (2) A design ("the later design") shall be refused registration under this Act if it is not new or does not have individual character when compared with a design which -

    (a) has been made available to the public on or after the relevant date; but

    (b) is protected as from a date prior to the relevant date by virtue of registration under this Act or the Community Design Regulation or an application for such registration.

    (3) In subsection (2) above "the relevant date" means the date on which the application for the registration of the later design was made or is treated by virtue of section 3B (2), (3) or (5) or 14(2) of this Act as having been made.

    Notes & References

    Relevant TRIPS Article(s): 25.1

    Relevant Community Design Directive Article(s): 11(1)(a) - (d) & 11(2)

    Section 1B: Requirement of novelty and individual character.

    1B. - (1) A design shall be protected by a right in a registered design to the extent that the design is new and has individual character.

    (2) For the purposes of subsection (1) above, a design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.

    (3) For the purposes of subsection (1) above, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.

    (4) In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.

    (5) For the purposes of this section, a design has been made available to the public before the relevant date if -

    (a) it has been published (whether following registration or otherwise), exhibited, used in trade or otherwise disclosed before that date; and

    (b) the disclosure does not fall within subsection (6) below.

    (6) A disclosure falls within this subsection if -

    (a) it could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the European Economic Area and specialising in the sector concerned;

    (b) it was made to a person other than the designer, or any successor in title of his, under conditions of confidentiality (whether express or implied);

    (c) it was made by the designer, or any successor in title of his, during the period of 12 months immediately preceding the relevant date;

    (d) it was made by a person other than the designer, or any successor in title of his, during the period of 12 months immediately preceding the relevant date in consequence of information provided or other action taken by the designer or any successor in title of his; or

    (e) it was made during the period of 12 months immediately preceding the relevant date as a consequence of an abuse in relation to the designer or any successor in title of his.

    (7) In subsections (2), (3), (5) and (6) above "the relevant date" means the date on which the application for the registration of the design was made or is treated by virtue of section 3B (2), (3) or (5) or 14(2) of this Act as having been made.

    (8) For the purposes of this section, a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character -

    (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the complex product; and

    (b) to the extent that those visible features of the component part are in themselves new and have individual character.

    (9) In subsection (8) above "normal use" means use by the end user; but does not include any maintenance, servicing or repair work in relation to the product.

    Notes & References

    Relevant TRIPS Article(s): 25.1

    Relevant Community Design Directive Article(s): 3(2), 3(3)(a), 3(3)(b), 3(4), 4, 5(1), 5 (2) & 6(1) (3)

    Section 1C: Designs dictated by their technical function.

    1C. - (1) A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product's technical function.

    (2) A right in a registered design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function.

    (3) Subsection (2) above does not prevent a right in a registered design subsisting in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

    Notes & References

    Relevant TRIPS Article(s): 25.1

    Relevant Community Design Directive Article(s): 7(1) (3)

    Section 1D: Designs contrary to public policy or morality.

    1D. A right in a registered design shall not subsist in a design which is contrary to public policy or to accepted principles of morality.

    Notes & References

    Relevant Community Design Directive Article(s): 8

    Section 2: Proprietorship of designs.

    2. - (1) The author of a design shall be treated for the purposes of this Act as the original proprietor of the design, subject to the following provisions.

    (1A) Where a design is created in pursuance of a commission for money or money's worth, the person commissioning the design shall be treated as the original proprietor of the design.

    (1B) Where, in a case not falling within subsection (1A), a design is created by an employee in the course of his employment, his employer shall be treated as the original proprietor of the design.

    (2) Where a design becomes vested, whether by assignment, transmission or operation of law, in any person other than the original proprietor, either alone or jointly with the original proprietor, that other person, or as the case may be the original proprietor and that other person, shall be treated for the purposes of this Act as the proprietor of the design.

    (3) In this Act the "author" of a design means the person who creates it.

    (4) In the case of a design generated by computer in circumstances such that there is no human author, the person by whom the arrangements necessary for the creation of the design are made shall be taken to be the author.

    Section 3: Applications for registration.

    3.- (1) An application for the registration of a design shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner.

    (2) An application for the registration of a design shall be made by the person claiming to be the proprietor of the design.

    (3) An application for the registration of a design in which national unregistered design right subsists shall be made by the person claiming to be the design right owner.

    (4) For the purpose of deciding whether, and to what extent, a design is new or has individual character, the registrar may make such searches (if any) as he thinks fit.

    (5) An application for the registration of a design which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within such time as may be prescribed shall be deemed to be abandoned.

    Notes & References

    Relevant Rule(s): 12,14, 15, 17, 17A, 19, 20, 21, 23, 36, 36A,
    Relevant TRIPS Article(s): 25.2

    Section 3A: Determination of applications for registration.

    3A.-(1) Subject as follows, the registrar shall not refuse an application for the registration of a design.

    (2) If it appears to the registrar that an application for the registration of a design has not been made in accordance with any rules made under this Act, he may refuse the application.

    (3) If it appears to the registrar that an application for the registration of a design has not been made in accordance with sections 3 (2) and (3) and 14(1) of this Act, he shall refuse the application.

    (4) If it appears to the registrar that any ground for refusal of registration mentioned in section 1A of this Act applies in relation to an application for the registration of a design, he shall refuse the application.

    Notes & References

    Relevant Rule(s): 29, 30, 31,
    Relevant TRIPS Article(s): 41 62

    Section 3B: Modification of applications for registration.

    3B.—(1) The registrar may, at any time before an application for the registration of a design is determined, permit the applicant to make such modifications of the application as theregistrar thinks fit.

    (2) Where an application for the registration of a design has been modified before it has been determined in such a way that the design has been altered significantly, the registrar may, for the purpose of deciding whether and to what extent the design is new or has individual character, direct that the application shall be treated as having been made on the date on which it was so modified.

    (3)
    Where -

    (a) an application for the registration of a design has disclosed more than one design and has been modified before it has been determined to exclude one or more designs from the application; and

    (b) a subsequent application for the registration of a design so excluded has, within such period (if any) as has been prescribed for such applications, been made by the person who made the earlier application or his successor in title,

    the registrar may, for the purpose of deciding whether and to what extent the design is new or has individual character, direct that the subsequent application shall be treated as having been made on the date on which the earlier application was, or is treated as having been, made.

    (4) Where an application for the registration of a design has been refused on any ground mentioned in section 1A (1)(b) or (c) of this Act, the application may be modified by the applicant if it appears to the registrar that -

    (a) the identity of the design is retained; and

    (b) the modifications have been made in accordance with any rules made under this Act.

    (5) An application modified under subsection (4) above shall be treated as the original application and, in particular, as made on the date on which the original application was made or is treated as having been made.

    (6) Any modification under this section may, in particular, be effected by making a partial disclaimer in relation to the application.

    Notes & References

    Relevant Rule(s): 36, 36A,
    Relevant Community Design Directive Article(s): 11(7)

    Section 3C: Date of registration of designs.

    3C.—(1) Subject as follows, a design, when registered, shall be registered as of the date on which the application was made or is treated as having been made.

    (2) Subsection (1) above shall not apply to an application which is treated as having been made on a particular date by section 14(2) of this Act or by virtue of the operation of section 3B (3) or (5) of this Act by reference to section 14(2) of this Act.

    (3)
    A design, when registered, shall be registered as of -

    (a) in the case of an application which is treated as having been made on a particular date by section 14 (2) of this Act, the date on which the application was made;

    (b) in the case of an application which is treated as having been made on a particular date by virtue of the operation of section 3B(3) of this Act by reference to section 14(2) of this Act, the date on which the earlier application was made;

    (c) in the case of an application which is treated as having been made on a particular date by virtue of the operation of section 3B(5) of this Act by reference to section 14(2) of this Act, the date on which the original application was made.

    Section 3D: Appeals in relation to applications for registration.

    3D. An appeal lies from any decision of the registrar under section 3A or 3B of this Act.

    Notes & References

    Relevant TRIPS Article(s): 41 62

    Section 4: Registration of same design in respect of other articles, etc.

    4. Repealed

    Section 5: Provisions for secrecy of certain designs.

    5. - (1) Where, either before or after the commencement of this Act, an application for the registration of a design has been made, and it appears to the registrar that the design is one of a class notified to him by the Secretary of State as relevant for defence purposes, he may give directions for prohibiting or restricting the publication of information with respect to the design, or the communication of such information to any person or class of persons specified in the directions.

    (2) The Secretary of State shall by rules make provision for securing that where such directions are given

    (a) the representation or specimen of the design,

    shall not be open to public inspection at the Patent Office during the continuance in force of the directions.

    (3) Where the registrar gives any such directions as aforesaid, he shall give notice of the application and of the directions to the Secretary of State, and thereupon the following provisions shall have effect, that is to say:

    (a) the Secretary of State shall, upon receipt of such notice, consider whether the publication of the design would be prejudicial to the defence of the realm and unless a notice under paragraph (c) of this subsection has previously been given by that authority to the registrar, shall reconsider that question before the expiration of nine months from the date of filing of the application for registration of the design and at least once in every subsequent year;

    (b) for the purpose aforesaid, the Secretary of State may, at any time after the design has been registered or, with the consent of the applicant, at any time before the design has been registered, inspect the representation or specimen of the design, filed in pursuance of the application;

    (c) if upon consideration of the design at any time it appears to the Secretary of State that the publication of the design would not, or would no longer, be prejudicial to the defence of the realm, he shall give notice to the registrar to that effect;

    (d) on the receipt of any such notice the registrar shall revoke the directions and may, subject to such conditions, if any, as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application or registration, whether or not that time has previously expired.

    (4) No person resident in the United Kingdom shall, except under the authority of a written permit granted by or on behalf of the registrar, make or cause to be made any application outside the United Kingdom for the registration of a design of any class prescribed for the purposes of this subsection unless

    (a) an application for registration of the same design has been made in the United Kingdom not less than six weeks before the application outside the United Kingdom; and

    (b) either no directions have been given under subsection (1) of this section in relation to the application in the United Kingdom or all such directions have been revoked:

    Provided that this subsection shall not apply in relation to a design for which an application for protection has first been filed in a country outside the United Kingdom by a person resident outside the United Kingdom.

    Notes & References

    Relevant Rule(s): 68

    Section 6: Repealed

    EFFECT OF REGISTRATION, &C.

    Section 7: Right given by registration.

    7. - (1) The registration of a design under this Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.

    (2) For the purposes of subsection (1) above and section 7A of this Act any reference to the use of a design includes a reference to -

    (a) the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied; or

    (b) stocking such a product for those purposes.

    (3) In determining for the purposes of subsection (1) above whether a design produces a different overall impression on the informed user, the degree of freedom of the author in creating his design shall be taken into consideration.

    (4) The right conferred by subsection (1) above is subject to any limitation attaching to the registration in question (including, in particular, any partial disclaimer or any declaration by the registrar or a court of partial invalidity).

    Notes & References

    Relevant TRIPS Article(s): 26.1

    Relevant Community Design Directive Article(s): 9(1), 9(2) & 12(1)

    Section 7A: Infringements of rights in registered designs.

    7A. - (1) Subject as follows, the right in a registered design is infringed by a person who, without the consent of the registered proprietor, does anything which by virtue of section 7 of this Act is the exclusive right of the registered proprietor.

    (2) The right in a registered design is not infringed by -

    (a) an act which is done privately and for purposes which are not commercial;

    (b) an act which is done for experimental purposes;

    (c) an act of reproduction for teaching purposes or for the purpose of making citations provided that the conditions mentioned in subsection (3) below are satisfied;

    (d) the use of equipment on ships or aircraft which are registered in another country but which are temporarily in the United Kingdom;

    (e) the importation into the United Kingdom of spare parts or accessories for the purpose of repairing such ships or aircraft; or

    (f) the carrying out of repairs on such ships or aircraft.

    (3) The conditions mentioned in this subsection are -

    (a) the act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design; and

    (b) mention is made of the source.

    (4) The right in a registered design is not infringed by an act which relates to a product in which any design protected by the registration is incorporated or to which it is applied if the product has been put on the market in the European Economic Area by the registered proprietor or with his consent.

    (5) The right in a registered design of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration.

    (6) No proceedings shall be taken in respect of an infringement of the right in a registered design committed before the date on which the certificate of registration of the design under this Act is granted.

    Notes & References

    Relevant TRIPS Article(s): 26.2

    Relevant Community Design Directive Article(s): 13(1)(a) (c), 13(2)(a) (c), 14 & 15

    Section 8: Duration of right in registered design.

    8. - (1) The right in a registered design subsists in the first instance for a period of five years from the date of the registration of the design.

    (2) The period for which the right subsists may be extended for a second, third, fourth and fifth period of five years, by applying to the registrar for an extension and paying the prescribed renewal fee.

    (3) If the first, second, third or fourth period expires without such application and payment being made, the right shall cease to have effect; and the registrar shall, in accordance with rules made by the Secretary of State, notify the proprietor of that fact.

    (4) If during the period of six months immediately following the end of that period an application for extension is made and the prescribed renewal fee and any prescribed additional fee is paid, the right shall be treated as if it had never expired, with the result that

    (a) anything done under or in relation to the right during that further period shall be treated as valid,

    (b) an act which would have constituted an infringement of the right if it had not expired shall be treated as an infringement, and

    (c) an act which would have constituted use of the design for the services of the Crown if the right had not expired shall be treated as such use.

    (5) Repealed

    (6) Repealed

    Notes & References

    Relevant Rule(s): 38,39, 40
    Relevant Paris Convention Article(s): 5bis(1)
    Relevant TRIPS Article(s): 26.3
    Relevant Community Design Directive Article(s): 10

    Section 8A: Restoration of lapsed right in design.

    8A. - (1) Where the right in a registered design has expired by reason of a failure to extend, in accordance with section 8 (2) or (4), the period for which the right subsists, an application for the restoration of the right in the design may be made to the registrar within the prescribed period.

    (2) The application may be made by the person who was the registered proprietor of the design or by any other person who would have been entitled to the right in the design if it had not expired; and where the design was held by two or more persons jointly, the application may, with the leave of the registrar, be made by one or more of them without joining the others.

    (3) Notice of the application shall be published by the registrar in the prescribed manner.

    (4) If the registrar is satisfied that the proprietor took reasonable care to see that the period for which the right subsisted was extended in accordance with section 8 (2) or (4), he shall, on payment of any unpaid renewal fee and any prescribed additional fee, order the restoration of the right in the design.

    (5) The order may be made subject to such conditions as the registrar thinks fit, and if the proprietor of the design does not comply with any condition the registrar may revoke the order and give such consequential directions as he thinks fit.

    (6) Rules altering the period prescribed for the purposes of subsection (1) may contain such transitional provisions and savings as appear to the Secretary of State to be necessary or expedient.

    Notes & References

    Relevant Rule(s): 41
    Relevant Paris Convention Article(s): 5bis(2)

    Section 8B: Effect of order for restoration of right.

    8B. - (1) The effect of an order under section 8A for the restoration of the right in a registered design is as follows.

    (2) Anything done under or in relation to the right during the period between expiry and restoration shall be treated as valid.

    (3) Anything done during that period which would have constituted an infringement if the right had not expired shall be treated as an infringement

    (a) if done at a time when it was possible for an application for extension to be made under section 8 (4); or

    (b) if it was a continuation or repetition of an earlier infringing act.

    (4) If after it was no longer possible for such an application for extension to be made, and before publication of notice of the application for restoration, a person

    (a) began in good faith to do an act which would have constituted an infringement of the right in the design if it had not expired, or

    (b) made in good faith effective and serious preparations to do such an act,

    he has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the restoration of the right in the design; but this does not extend to granting a licence to another person to do the act.

    (5) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (4) may

    (a) authorise the doing of that act by any partners of his for the time being in that business, and

    (b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.

    (6) Where a product is disposed of to another in exercise of the rights conferred by subsection (4) or subsection (5), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the registered proprietor of the design.

    (7) The above provisions apply in relation to the use of a registered design for the services of the Crown as they apply in relation to infringement of the right in the design.

    Notes & References

    Relevant Paris Convention Article(s): 5D

    Section 9: Repealed SI 2006-1028

    Section 10: Repealed

    Section 11: Cancellation of registration.

    11. The registrar may, upon a request made in the prescribed manner by the registered proprietor, cancel the registration of a design.

    Notes & References

    Relevant Rule(s): 58

    Section 11ZA: Grounds for invalidity of registration.

    11ZA. - (1) The registration of a design may be declared invalid on any of the grounds mentioned in section 1A of this Act.

    (2) The registration of a design may be declared invalid on the ground of the registered proprietor not being the proprietor of the design and the proprietor of the design objecting.

    (3) The registration of a design involving the use of an earlier distinctive sign may be declared invalid on the ground of an objection by the holder of rights to the sign which include the right to prohibit in the United Kingdom such use of the sign.

    (4) The registration of a design constituting an unauthorised use of a work protected by the law of copyright in the United Kingdom may be declared invalid on the ground of an objection by the owner of the copyright.

    (5) In this section and sections 11ZB , 11ZC and 11ZE of this Act (other than section 11ZE(1)) references to the registration of a design include references to the former registration of a design; and these sections shall apply, with necessary modifications, in relation to such former registrations.

    Notes & References

    Relevant Rule(s): 52,53, 54, 55, 56, 57

    Section 11ZB: Applications for declaration of invalidity.

    11ZB. - (1) Any person interested may make an application to the registrar for a declaration of invalidity on the ground mentioned in section 1A (1)(a) or (b) of this Act.

    (2) Any person concerned by the use in question may make an application to the registrar for a declaration of invalidity on the ground mentioned in section 1A(1)(c) of this Act.

    (3) The relevant person may make an application to the registrar for a declaration of invalidity on the ground mentioned in section 1A(2) of this Act.

    (4) In subsection (3) above "the relevant person" means, in relation to an earlier design protected by virtue of registration under this Act or the Community Design Regulation or an application for such registration, the registered proprietor of the design, the holder of the registered Community design or (as the case may be) the applicant.

    (5) The person able to make an objection under subsection (2), (3) or (4) of section 11ZA of this Act may make an application to the registrar for a declaration of invalidity on the ground mentioned in that subsection.

    (6) An application may be made under this section in relation to a design at any time after the design has been registered.

    Notes & References

    Relevant Rule(s): 52,53, 54, 55, 56, 57

    Section 11ZC: Determination of applications for declaration of invalidity.

    11ZC. - (1) This section applies where an application has been made to the registrar for a declaration of invalidity in relation to a registration.

    (2) If it appears to the registrar that the application has not been made in accordance with any rules made under this Act, he may refuse the application.

    (3) If it appears to the registrar that the application has not been made in accordance with section 11ZB of this Act, he shall refuse the application.

    (4) Subject to subsections (2) and (3) above, the registrar shall make a declaration of invalidity if it appears to him that the ground of invalidity specified in the application has been established in relation to the registration.

    (5) Otherwise the registrar shall refuse the application.

    (6) A declaration of invalidity may be a declaration of partial invalidity.

    Notes & References

    Relevant Rule(s): 52,53, 54, 55, 56, 57

    Section 11ZD: Modification of registration.

    11ZD. - (1) Subsections (2) and (3) below apply where the registrar intends to declare the registration of a design invalid on any ground mentioned in section 1A (1)(b) or (c) or 11ZA(3) or (4) of this Act.

    (2) The registrar shall inform the registered proprietor of that fact.

    (3) The registered proprietor may make an application to the registrar for the registrar to make such modifications to the registration of the design as the registered proprietor specifies in his application.

    (4) Such modifications may, in particular, include the inclusion on the register of a partial disclaimer by the registered proprietor.

    (5) If it appears to the registrar that the application has not been made in accordance with any rules made under this Act, the registrar may refuse the application.

    (6) If it appears to the registrar that the identity of the design is not retained or the modified registration would be invalid by virtue of section 11ZA of this Act, the registrar shall refuse the application.

    (7) Otherwise the registrar shall make the specified modifications.

    (8) A modification of a registration made under this section shall have effect, and be treated always to have had effect, from the grant of registration.

    Notes & References

    Relevant Rule(s): 15, 52,53, 54, 55, 56, 57

    Section 11ZE: Effect of cancellation or invalidation of registration.

    11ZE. - (1) A cancellation of registration under section 11 of this Act takes effect from the date of the registrar's decision or from such other date as the registrar may direct.

    (2) Where the registrar declares the registration of a design invalid to any extent, the registration shall to that extent be treated as having been invalid from the date of registration or from such other date as the registrar may direct.

    Notes & References

    Relevant Rule(s): 58

    Section 11ZF:Appeals in relation to cancellation or invalidation.

    11ZF. An appeal lies from any decision of the registrar under section 11 to 11ZE of this Act.

    Section 11A: Powers exercisable for protection of the public interest.

    11A. - (1) Where a report of the Competition Commission has been laid before Parliament containing conclusions to the effect

    (a) on a monopoly reference, that a monopoly situation exists and facts found by the Commission operate or may be expected to operate against the public interest,

    (b) on a merger reference, that a merger situation qualifying for investigation has been created and the creation of the situation, or particular elements in or consequences of it specified in the report, operate or may be expected to operate against the public interest,

    (c) on a competition reference, that a person was engaged in an anti-competitive practice which operated or may be expected to operate against the public interest, or

    (d) on a reference under section 11 of the Competition Act 1980 (reference of public bodies and certain other persons), that a person is pursuing a course of conduct which operates against the public interest, the appropriate Minister or Ministers may apply to the registrar to take action under this section.

    (2) Before making an application the appropriate Minister or Ministers shall publish, in such manner as he or they think appropriate, a notice describing the nature of the proposed application and shall consider any representations which may be made within 30 days of such publication by persons whose interests appear to him or them to be affected.

    (3) If on an application under this section it appears to the registrar that the matters specified in the Commission's report as being those which in the Commission's opinion operate, or operated or may be expected to operate, against the public interest include

    (a) conditions in licences granted in respect of a registered design by its proprietor restricting the use of the design by the licensee or the right of the proprietor to grant other licences,

    he may by order cancel or modify any such condition.

    (4) Repealed

    (5) Repealed

    (6) An appeal lies from any order of the registrar under this section.

    (7) In this section "the appropriate Minister or Ministers" means the Minister or Ministers to whom the report of the Competition Commission was made.

    Section 11B: Repealed

    Section 12: Use for services of the Crown.

    12. The provisions of the First Schedule to this Act shall have effect with respect to the use of registered designs for the services of the Crown and the rights of third parties in respect of such use.

    Notes & References

    Ministry of Defence DEFCON 632

    INTERNATIONAL ARRANGEMENTS

    Section 13: Orders in Council as to convention countries.

    13. - (1) His Majesty may, with a view to the fulfilment of a treaty, convention, arrangement or engagement, by Order in Council declare that any country specified in the Order is a convention country for the purposes of this Act:

    Provided that a declaration may be made as aforesaid for the purposes either of all or of some only of the provisions of this Act, and a country in the case of which a declaration made for the purposes of some only of the provisions of this Act is in force shall be deemed to be a convention country for the purposes of those provisions only.

    (2) His Majesty may by Order in Council direct that any of the Channel Islands, any colony,... shall be deemed to be a convention country for the purposes of all or any of the provisions of this Act; and an Order made under this subsection may direct that any such provisions shall have effect, in relation to the territory in question, subject to such conditions or limitations, if any, as may be specified in the Order.

    (3) For the purposes of subsection (1) of this section, every colony, protectorate, territory subject to the authority or under the suzerainty of another country, and territory administered by another country... under the trusteeship system of the United Nations, shall be deemed to be a country in the case of which a declaration may be made under that subsection.

    Section 14: Registration of design where application for protection in convention country has been made.

    14. - (1) An application for registration of a design in respect of which protection has been applied for in a convention country may be made in accordance with the provisions of this Act by the person by whom the application for protection was made or his personal representative or assignee:

    Provided that no application shall be made by virtue of this section after the expiration of six months from the date of the application for protection in a convention country or, where more than one such application for protection has been made, from the date of the first application.

    (2) Where an application for registration of a design is made by virtue of this section, the application shall be treated, for the purpose of determining whether (and to what extent) that or any other design is new or has individual character, as made on the date of the application for protection in the convention country or, if more than one such application was made, on the date of the first such application.

    (3) Subsection (2) shall not be construed as excluding the power to give directions under section 3B (2) or (3) of this Act in relation to an application made by virtue of this section.

    (4) Where a person has applied for protection for a design by an application which

    (a) in accordance with the terms of a treaty subsisting between two or more convention countries, is equivalent to an application duly made in any one of those convention countries; or

    (b) in accordance with the law of any convention country, is equivalent to an application duly made in that convention country,

    he shall be deemed for the purposes of this section to have applied in that convention country.

    Notes & References

    Relevant Rule(s): 27,28
    Relevant Paris Convention Article(s): 4

    Section 15: Extension of time for applications under s.14 in certain cases.

    15. - (1) If the Secretary of State is satisfied that provision substantially equivalent to the provision to be made by or under this section has been or will be made under the law of any convention country, he may make rules empowering the registrar to extend the time for making application under subsection (1) of section 14 of this Act for registration of a design in respect of which protection has been applied for in that country in any case where the period specified in the proviso to that subsection expires during a period prescribed by the rules.

    (2) Rules made under this section

    (a) may, where any agreement or arrangement has been made between His Majesty's Government in the United Kingdom and the government of the convention country for the supply or mutual exchange of information or products, provide, either generally or in any class of case specified in the rules, that an extension of time shall not be granted under this section unless the design has been communicated in accordance with the agreement or arrangement;

    (b) may, either generally or in any class of case specified in the rules, fix the maximum extension which may be granted under this section;

    (c) may prescribe or allow any special procedure in connection with applications made by virtue of this section;

    (d) may empower the registrar to extend, in relation to an application made by virtue of this section, the time limited by or under the foregoing provisions of this Act for doing any act, subject to such conditions, if any, as may be imposed by or under the rules;

    (e) may provide for securing that the rights conferred by registration on an application made by virtue of this section shall be subject to such restrictions or conditions as may be specified by or under the rules and in particular to restrictions and conditions for the protection of persons (including persons acting on behalf of His Majesty) who, otherwise than as the result of a communication made in accordance with such an agreement or arrangement as is mentioned in paragraph (a) of this subsection, and before the date of the application in question or such later date as may be allowed by the rules, may have imported or made products to which the design is applied or in which it is incorporated or may have made any application for registration of the design.

    Section 15A: The nature of registered designs

    15A. A registered design or an application for a registered design is personal property (in Scotland, incorporeal moveable property).

    Section 15B: Assignment, &c of registered designs and applications for registered designs

    15B —(1) A registered design or an application for a registered design is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property, subject to the following provisions of this section.

    (2) Any transmission of a registered design or an application for a registered design is subject to any rights vested in any other person of which notice is entered in the register of designs, or in the case of applications, notice is given to the registrar.

    (3) An assignment of, or an assent relating to, a registered design or application for a registered design is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative.

    (4) Except in Scotland, the requirement in subsection (3) may be satisfied in a case where the assignor or personal representative is a body corporate by the affixing of its seal.

    (5) Subsections (3) and (4) apply to assignment by way of security as in relation to any other assignment.

    (6) A registered design or application for a registered design may be the subject of a charge (in Scotland, security) in the same way as other personal or moveable property.

    (7) The proprietor of a registered design may grant a licence to use that registered design.

    (8) Any equities (in Scotland, rights) in respect of a registered design or an application for a registered design may be enforced in like manner as in respect of any other personal or moveable property.

    Section 15C: Exclusive licences

    15C—(1) In this Act an "exclusive licence" means a licence in writing signed by or on behalf of the proprietor of the registered design authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the proprietor of the registered design.

    (2) The licensee under an exclusive licence has the same rights against any successor in title who is bound by the licence as he has against the person granting the licence.

    Section 16: Repealed

    REGISTER OF DESIGNS, ETC.

    Section 17: Register of designs.

    17. - (1) The registrar shall maintain the register of designs, in which shall be entered

    (a) the names and addresses of proprietors of registered designs;

    (b) notices of assignments and of transmissions of registered designs; and

    (c) such other matters as may be prescribed or as the registrar may think fit.

    (2) No notice of any trust, whether express, implied or constructive, shall be entered in the register of designs, and the registrar shall not be affected by any such notice.

    (3) The register need not be kept in documentary form.

    (4) Subject to the provisions of this Act and to rules made by the Secretary of State under it, the public shall have a right to inspect the register at the Patent Office at all convenient times.

    (5) Any person who applies for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts; and rules made by the Secretary of State under this Act may provide that any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts.

    (6) Applications under subsection (5) above or rules made by virtue of that subsection shall be made in such manner as may be prescribed.

    (7) In relation to any portion of the register kept otherwise than in documentary form

    (a) the right of inspection conferred by subsection (4) above is a right to inspect the material on the register; and

    (b) the right to a copy or extract conferred by subsection (5) above or rules is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible.

    (8) Subject to subsection (11) below, the register shall be prima facie evidence of anything required or authorised to be entered in it and in Scotland shall be sufficient evidence of any such thing.

    (9) A certificate purporting to be signed by the registrar and certifying that any entry which he is authorised by or under this Act to make has or has not been made, or that any other thing which he is so authorised to do has or has not been done, shall be prima facie evidence, and in Scotland shall be sufficient evidence, of the matters so certified.

    (10) Each of the following

    (a) a copy of an entry in the register or an extract from the register which is supplied under subsection (5) above;

    (b) a copy or any representation, specimen or document kept in the Patent Office or an extract from any such document,

    which purports to be a certified copy or certified extract shall, subject to subsection (11) below, be admitted in evidence without further proof and without production of any original; and in Scotland such evidence shall be sufficient evidence.

    (11) - REPEALED

    (12) In this section "certified copy" and "certified extract" means a copy and extract certified by the registrar and sealed with the seal of the Patent Office.

    Notes & References

    Relevant Rule(s): 37,46, 72, 73

    Section 18: Certificate of registration.

    18. - (1) The registrar shall grant a certificate of registration in the prescribed form to the registered proprietor of a design when the design is registered.

    (2) The registrar may, in a case where he is satisfied that the certificate of registration has been lost or destroyed, or in any other case in which he thinks it expedient, furnish one or more copies of the certificate.

    Notes & References

    Relevant Rule(s): 32,33

    Section 19: Registration of assignments, etc.

    19. - (1) Where any person becomes entitled by assignment, transmission or operation of law to a registered design or to a share in a registered design, or becomes entitled as mortgagee, licensee or otherwise to any other interest in a registered design, he shall apply to the registrar in the prescribed manner for the registration of his title as proprietor or co-proprietor or, as the case may be, of notice of his interest, in the register of designs.

    (2) Without prejudice to the provisions of the foregoing subsection, an application for the registration of the title of any person becoming entitled by assignment to a registered design or a share in a registered design, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in a registered design, may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.

    (3) Where application is made under this section for the registration of the title of any person, the registrar shall, upon proof of title to his satisfaction

    (a) where that person is entitled to a registered design or a share in a registered design, register him in the register of designs as proprietor or co-proprietor of the design, and enter in that register particulars of the instrument or event by which he derives title; or

    (b) where that person is entitled to any other interest in the registered design, enter in that register notice of his interest, with particulars of the instrument (if any) creating it.

    (3A) Where national unregistered design right subsists in a registered design, the registrar shall not register an interest under subsection (3) unless he is satisfied that the person entitled to that interest is also entitled to a corresponding interest in the national unregistered design right.

    (3B) Where national unregistered design right subsists in a registered design and the proprietor of the registered design is also the design right owner, an assignment of the national unregistered design right shall be taken to be also an assignment of the right in the registered design, unless a contrary intention appears.

    (4) Repealed SI 2006-1028.

    (5) Except for the purposes of an application to rectify the register under the following provisions of this Act, a document in respect of which no entry has been made in the register of designs under subsection (3) of this section shall not be admitted in any court as evidence of the title of any person to a registered design or share of or interest in a registered design unless the court otherwise directs.

    Notes & References

    Relevant Rule(s): 42,43, 44, 45

    Section 20: Rectification of register.

    20. - (1) The court may, on the application of the relevant person, order the register of designs to be rectified by the making of any entry therein or the variation or deletion of any entry therein.

    (1A) In subsection (1) above "the relevant person" means -

    (a) in the case of an application invoking any ground referred to in section 1A(1)(c) of this Act, any person concerned by the use in question;

    (b) in the case of an application invoking the ground mentioned in section 1A(2) of this Act, the appropriate person;

    (c) in the case of an application invoking any ground mentioned in section 11ZA(2), (3) or (4) of this Act, the person able to make the objection;

    (d) in any other case, any person aggrieved.

    (1B) In subsection (1A) above "the appropriate person" means, in relation to an earlier design protected by virtue of registration under this Act or the Community Design Regulation or an application for such registration, the registered proprietor of the design, the holder of the registered Community design or (as the case may be) the applicant.

    (2) In proceedings under this section the court may determine any question which it may be necessary or expedient to decide in connection with the rectification of the register.

    (3) Notice of any application to the court under this section shall be given in the prescribed manner to the registrar, who shall be entitled to appear and be heard on the application, and shall appear if so directed by the court.

    (4) Any order made by the court under this section shall direct that notice of the order shall be served on the registrar in the prescribed manner; and the registrar shall, on receipt of the notice, rectify the register accordingly.

    (5) A rectification of the register under this section has effect as follows

    (a) an entry made has effect from the date on which it should have been made,

    (b) an entry varied has effect as if it had originally been made in its varied form, and

    (c) an entry deleted shall be deemed never to have had effect,

    unless, in any case, the court directs otherwise.

    (6) Orders which may be made by the court under this section include, in particular, declarations of partial invalidity.

    Notes & References

    Relevant Rule(s): 46,77, 78
    Patent Court Practice Direction CPR 49E
    Court of Session Rules Chapter 55,

    Section 21: Power to correct clerical errors.

    21. - (1) The registrar may, in accordance with the provisions of this section, correct any error in an application for the registration or in the representation of a design, or any error in the register of designs.

    (2) A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.

    (3) Where the registrar proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the registered proprietor or the applicant for registration of the design, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity to be heard before making the correction.

    Notes & References

    Relevant Rule(s): 47

    Section 22: Inspection of registered designs.

    22. - (1) Where a design has been registered under this Act, there shall be open to inspection at the Patent Office on and after the day on which the certificate of registration is issued

    (a) the representation or specimen of the design,

    This subsection has effect subject to the following provisions of this section and to any rules made under section 5(2) of this Act.

    (2) Where -

    (a) a design has been registered;

    (b) a product to which the design was intended to be applied or in which it was intended to be incorporated was specified, in accordance with rules made under section 36 of this Act, in the application for the registration of the design; and

    (c) the product so specified falls within any class prescribed for the purposes of this subsection,

    no representation, specimen or evidence filed in pursuance of the application shall, until the expiration of such period after the day on which the certificate of registration is issued as may be prescribed in relation to products of that class, be open to inspection at the Patent Office except by the registered proprietor, a person authorised in writing by the registered proprietor, or a person authorised by the registrar or by the court:

    Provided that where the registrar proposes to refuse an application for the registration of any other design on the ground that, by reference to the first-mentioned design, it is not new or does not have individual character, the applicant shall be entitled to inspect the representation or specimen of the first-mentioned design filed in pursuance of the application for registration of that design.

    (3) In the case of a registered design and a specified product which falls within any class prescribed for the purposes of the last foregoing subsection, the representation, specimen or evidence shall not, during the period prescribed as aforesaid, be inspected by any person by virtue of this section except in the presence of the registrar or of an officer acting under him; and except in the case of an inspection authorised by the proviso to that subsection, the person making the inspection shall not be entitled to take a copy of the representation, specimen or evidence or any part thereof.

    (4) Where an application for the registration of a design has been abandoned or refused, neither the application for registration nor any representation, specimen or evidence filed in pursuance thereof shall at any time be open to inspection at the Patent Office or be published by the registrar.

    Notes & References

    Relevant Rule(s): 67,68, 69, 72

    Relevant TRIPS Article(s): 25.2

    Section 23: Information as to existence of right in registered design.

    23. On the request of a person furnishing such information as may enable the registrar to identify the design, and on payment of the prescribed fee, the registrar shall inform him

    (a) whether the design is registered, and

    (b) whether any extension of the period of the right in the registered design has been granted,

    and shall state the date of registration and the name and address of the registered proprietor.

    Notes & References

    Relevant Rule(s): 70,71

    LEGAL PROCEEDINGS AND APPEALS

    Section 24A: Action for infringement

    24A.(1) An infringement of the right in a registered design is actionable by the registered proprietor.

    (2) In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to him as is available in respect of the infringement of any other property right.

    (3) This section has effect subject to section 24B of this Act (exemption of innocent infringer from liability).

    Section 24B: Exemption of innocent infringer from liability

    24B.(1) In proceedings for the infringement of the right in a registered design damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered.

    (2) For the purposes of subsection (1), a person shall not be deemed to have been aware or to have had reasonable grounds for supposing that the design was registered by reason only of the marking of a product with—

    (a) the word "registered" or any abbreviation thereof, or

    (b) any word or words expressing or implying that the design applied to, or incorporated in, the product has been registered,

    unless the number of the design accompanied the word or words or the abbreviation in question.

    (3) Nothing in this section shall affect the power of the court to grant an injunction in any proceedings for infringement of the right in a registered design.

    Section 24C: Order for delivery up

    24C.(1) Where a person—

    (a) has in his possession, custody or control for commercial purposes an infringing article, or

    (b) has in his possession, custody or control anything specifically designed or adapted for making articles to a particular design which is a registered design, knowing or having reason to believe that it has been or is to be used to make an infringing article,

    the registered proprietor in question may apply to the court for an order that the infringing article or other thing be delivered up to him or to such other person as the court may direct.

    (2) An application shall not be made after the end of the period specified in the following provisions of this section; and no order shall be made unless the court also makes, or it appears to the court that there are grounds for making, an order under section 24D of this Act (order as to disposal of infringing article, &c.).

    (3) An application for an order under this section may not be made after the end of the period of six years from the date on which the article or thing in question was made, subject to subsection (4).

    (4) If during the whole or any part of that period the registered proprietor—

    (a) is under a disability, or

    (b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an order,

    an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

    (5) In subsection (4) "disability"—

    (a) in England and Wales, has the same meaning as in the Limitation Act 1980;

    (b) in Scotland, means legal disability within the meaning of the Prescription and Limitation (Scotland) Act 1973;

    (c) in Northern Ireland, has the same meaning as in the Statute of Limitations (Northern Ireland) 1958.

    (6) A person to whom an infringing article or other thing is delivered up in pursuance of an order under this section shall, if an order under section 24D of this Act is not made, retain it pending the making of an order, or the decision not to make an order, under that section.

    (7) The reference in subsection (1) to an act being done in relation to an article for "commercial purposes" are to its being done with a view to the article in question being sold or hired in the course of a business.

    (8) Nothing in this section affects any other power of the court.

    Section 24D: Order as to disposal of infringing articles, &c

    24D.(1) An application may be made to the court for an order that an infringing article or other thing delivered up in pursuance of an order under section 24C of this Act shall be—

    (a) forfeited to the registered proprietor, or

    (b) destroyed or otherwise dealt with as the court may think fit,

    or for a decision that no such order should be made.

    (2) In considering what order (if any) should be made, the court shall consider whether other remedies available in an action for infringement of the right in a registered design would be adequate to compensate the registered proprietor and to protect his interests.

    (3) Where there is more than one person interested in an article or other thing, the court shall make such order as it thinks just and may (in particular) direct that the thing be sold, or otherwise dealt with, and the proceeds divided.

    (4) If the court decides that no order should be made under this section, the person in whose possession, custody or control the article or other thing was before being delivered up is entitled to its return.

    (5) References in this section to a person having an interest in an article or other thing include any person in whose favour an order could be made in respect of it—

    (a) under this section;

    (b) under section 19 of Trade Marks Act 1994 (including that section as applied by regulation 4 of the Community Trade Mark Regulations 2006 (SI 2006/1027));

    (c) under section 114, 204 or 231 of the Copyright, Designs and Patents Act 1988; or

    (d) under regulation 1C of the Community Design Regulations 2005 (SI 2005/2339).

    Section 24E: Jurisdiction of county court and sheriff court

    24E.(1) In Northern Ireland a county court may entertain proceedings under the following provisions of this Act—

    section 24C (order for delivery up of infringing article, &c.),

    section 24D (order as to disposal of infringing article, &c.), or

    section 24F(8) (application by exclusive licensee having concurrent rights),

    where the value of the infringing articles and other things in question does not exceed the county court limit for actions in tort.

    (2) In Scotland proceedings for an order under any of those provisions may be brought in the sheriff court.

    (3) Nothing in this section shall be construed as affecting the jurisdiction of the Court of Session or the High Court in Northern Ireland.

    Section 24F: Rights and remedies of exclusive licensee

    24F.(1) In relation to a registered design, an exclusive licensee has, except against the registered proprietor, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

    (2) His rights and remedies are concurrent with those of the registered proprietor; and references to the registered proprietor in the provisions of this Act relating to infringement shall be construed accordingly.

    (3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the registered proprietor.

    (4) Where an action for infringement of the right in a registered design brought by the registered proprietor or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a claimant or added as a defendant.

    (5) A registered proprietor or exclusive licensee who is added as a defendant in pursuance of subsection (4) is not liable for any costs in the action unless he takes part in the proceedings.

    (6) Subsections (4) and (5) do not affect the granting of interlocutory relief on the application of the registered proprietor or an exclusive licensee.

    (7) Where an action for infringement of the right in a registered design is brought which relates (wholly or partly) to an infringement in respect of which the registered proprietor and an exclusive licensee have concurrent rights of action—

    (a) the court shall, in assessing damages, take into account—

    (i)the terms of the licence, and

    (ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;

    (b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and

    (c) the court shall if an account of profits is directed apportion the profits between them as the court considers just, subject to any agreement between them;

    and these provisions apply whether or not the proprietor and the exclusive licensee are both parties to the action.

    (8) The registered proprietor shall notify any exclusive licensee having concurrent rights before applying for an order under section 24C of this Act (order for delivery up of infringing article, &c); and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.

    Section 24G: Meaning of "infringing article"

    24G.(1) In this Act "infringing article", in relation to a design, shall be construed in accordance with this section.

    (2) An article is an infringing article if its making to that design was an infringement of the right in a registered design.

    (3) An article is also an infringing article if—

    (a) it has been or is proposed to be imported into the United Kingdom, and

    (b) its making to that design in the United Kingdom would have been an infringement of the right in a registered design or a breach of an exclusive licensing agreement relating to that registered design.

    (4) Where it is shown that an article is made to a design which is or has been a registered design, it shall be presumed until the contrary is proved that the article was made at a time when the right in the registered design subsisted.

    (5) Nothing in subsection (3) shall be construed as applying to an article which may be lawfully imported into the United Kingdom by virtue of an enforceable Community right within the meaning of section 2(1) of the European Communities Act 1972.

    Section 25: Certificate of contested validity of registration.

    25. - (1) If in any proceedings before the court the validity of the registration of a design is contested, and it is found by the court that the design is to any extent, validly registered, the court may certify that the validity of the registration of the design was contested in those proceedings.

    (2) Where any such certificate has been granted, then if in any subsequent proceedings before the court for infringement of the right in the registered design or for invalidation of the registration of the design, a final order or judgment is made or given in favour of the registered proprietor, he shall, unless the court otherwise directs, be entitled to his costs as between solicitor and client: Provided that this subsection shall not apply to the costs of any appeal in any such proceedings as aforesaid.

    Section 26: Remedy for groundless threats of infringement proceedings.

    26. - (1) Where any person (whether entitled to or interested in a registered design or an application for registration of a design or not) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of the right in a registered design, any person aggrieved thereby may bring an action against him for any such relief as is mentioned in the next following subsection.

    (2) Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of the right in a registered design the registration of which is not shown by the claimant to be invalid, the claimant shall be entitled to the following relief, that is to say:

    (a) a declaration to the effect that the threats are unjustifiable;

    (b) an injunction against the continuance of the threats; and

    (c) such damages, if any, as he has sustained thereby.

    (2A) Proceedings may not be brought under this section in respect of a threat to bring proceedings for an infringement alleged to consist of the making or importing of anything.

    (3) For the avoidance of doubt it is hereby declared that a mere notification that a design is registered does not constitute a threat of proceedings within the meaning of this section.

    Notes & References

    Patent Court Practice Direction CPR 49E
    Court of Session Rules Chapter 55,
    The Community Design Regulations 2005 Regulation 2

    Section 27: The court.

    27. - (1) In this Act "the court" means

    (a) in England and Wales, the High Court or any patents county court having jurisdiction by virtue of an order under section 287 of the Copyright, Designs and Patents Act 1988,

    (b) in Scotland, the Court of Session, and

    (c) in Northern Ireland, the High Court.

    (2) Provision may be made by rules of court with respect to proceedings in the High Court in England and Wales for references and applications under this Act to be dealt with by such judge of that court as the Lord Chief Justice of England and Wales may, after consulting the Lord Chancellor, select for the purpose.

    (3) The Lord Chief Justice may nominate a judicial office holder (as defined in section 109(4) of the Constitutional Reform Act 2005) to exercise his functions under subsection (2).

    Notes & References

    Patent Court Practice Direction CPR 49E
    Court of Session Rules Chapter 55

    Section 28: The Appeal Tribunal.

    28. - (1) Any appeal from the registrar under this Act shall lie to the Appeal Tribunal.

    (2) The Appeal Tribunal shall consist of

    (a) one or more judges of the High Court nominated by the Lord Chief Justice of England and Wales after consulting the Lord Chancellor, and

    (b) one judge of the Court of Session nominated by the Lord President of that Court.

    (2A) At any time when it consists of two or more judges, the jurisdiction of the Appeal Tribunal

    (a) where in the case of any particular appeal the senior of those judges so directs, shall be exercised in relation to that appeal by both of the judges, or (if there are more than two) by two of them, sitting together, and

    (b) in relation to any appeal in respect of which no such direction is given, may be exercised by any one of the judges;

    and, in the exercise of that jurisdiction, different appeals may be heard at the same time by different judges.

    (3) The expenses of the Appeal Tribunal shall be defrayed and the fees to be taken therein may be fixed as if the Tribunal were a court of the High Court.

    (4) The Appeal Tribunal may examine witnesses on oath and administer oaths for that purpose.

    (5) Upon any appeal under this Act the Appeal Tribunal may by order award to any party such costs as the Tribunal may consider reasonable and direct how and by what parties the costs are to be paid; and any such order may be enforced

    (a) in England and Wales or Northern Ireland, in the same way as an order of the High Court;

    (b) in Scotland, in the same way as a decree for expenses granted by the Court of Session.

    (7) Upon any appeal under this Act the Appeal Tribunal may exercise any power which could have been exercised by the registrar in the proceeding from which the appeal is brought.

    (8) Subject to the foregoing provisions of this section the Appeal Tribunal may make rules for regulating all matters relating to proceedings before it under this Act, including right of audience.

    (8A) At any time when the Appeal Tribunal consists of two or more judges, the power to make rules under subsection (8) of this section shall be exercisable by the senior of those judges:

    Provided that another of those judges may exercise that power if it appears to him that it is necessary for rules to be made and that the judge (or, if more than one, each of the judges) senior to him is for the time being prevented by illness, absence or otherwise from making them.

    (9) An appeal to the Appeal Tribunal under this Act shall not be deemed to be a proceeding in the High Court.

    (10) In this section "the High Court" means the High Court in England and Wales; and for the purposes of this section the seniority of judges shall be reckoned by reference to the dates on which they were appointed judges of that court or the Court of Session.

    (11) The Lord Chief Justice may nominate a judicial office holder (as defined in section 109(4) of the Constitutional Reform Act 2005) to exercise his functions under subsection (2)(a).

    Notes & References

    Relevant Rule(s): 31
    Registered Designs Appeal Tribunal Rules 1950 (as amended)
    Relevant TRIPS Article(s): 62.5

    POWERS AND DUTIES OF REGISTRAR

    Section 29: Exercise of discretionary powers of registrar.

    29. Without prejudice to any provisions of this Act requiring the registrar to hear any party to proceedings thereunder, or to give to any such party an opportunity to be heard, rules made by the Secretary of State under this Act shall require the registrar to give to any applicant for registration of a design an opportunity to be heard before exercising adversely to the applicant any discretion vested in the registrar by or under this Act.

    Notes & References

    Relevant Rule(s): 48

    Section 30: Costs and security for costs.

    30. - (1) Rules made by the Secretary of State under this Act may make provision empowering the registrar, in any proceedings before him under this Act

    (a) to award any party such costs as he may consider reasonable, and

    (b) to direct how and by what parties they are to be paid.

    (2) Any such order of the registrar may be enforced

    (a) in England and Wales or Northern Ireland, in the same way as an order of the High Court;

    (b) in Scotland, in the same way as a decree for expenses granted by the Court of Session.

    (3) Rules made by the Secretary of State under this Act may make provision empowering the registrar to require a person, in such cases as may be prescribed, to give security for the costs of

    (a) an application for invalidation of the registration of a design,

    or

    (c) an appeal from any decision of the registrar under this Act,

    and enabling the application or appeal to be treated as abandoned in default of such security being given.

    Notes & References

    Tribunal Practice Notice TPN 2/2000 on Costs Practice
    Relevant Rule(s): 60,61

    Section 31: Evidence before registrar.

    31. Rules made by the Secretary of State under this Act may make provision

    (a) as to the giving of evidence in proceedings before the registrar under this Act by affidavit or statutory declaration;

    (b) conferring on the registrar the powers of an official referee of the Supreme Court as regards the examination of witnesses on oath and the discovery and production of documents; and

    (c) applying in relation to the attendance of witnesses in proceedings before the registrar the rules applicable to the attendance of witnesses in proceedings before such a referee.

    Notes & References

    Tribunal Practice Notice TPN 1/2000 on Patent Office Practice
    Relevant Rule(s): 62, 63, 64, 64A, 65, 66

    OFFENCES

    Section 33: Offences under s.5.

    33. - (1) If any person fails to comply with any direction given under section 5 of this Act or makes or causes to be made an application for the registration of a design in contravention of that section, he shall be guilty of an offence and liable

    (a) on conviction on indictment to imprisonment for a term not exceeding two years or a fine, or both;

    (b) on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both.

    Section 34: Falsification of register, etc.

    34. If any person makes or causes to be made a false entry in the register of designs, or a writing falsely purporting to be a copy of an entry in that register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of an offence and liable

    (a) on conviction on indictment to imprisonment for a term not exceeding two years or a fine, or both;

    (b) on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both.

    Section 35: Fine for falsely representing a design as registered.

    35. - (1) If any person falsely represents that a design applied to, or incorporated in, any product sold by him is registered, he shall be liable on summary conviction to a fine not exceeding level 3 on the standard scale; and for the purposes of this provision a person who sells a product having stamped, engraved or impressed thereon or otherwise applied thereto the word "registered", or any other word expressing or implying that the design applied to, or incorporated in, the product is registered, shall be deemed to represent that the design applied to, or incorporated in, the product is registered.

    (2) If any person, after the right in a registered design has expired, marks any product to which the design has been applied or in which it has been incorporated with the word "registered", or any word or words implying that there is a subsisting right in the design under this Act, or causes any such product to be so marked, he shall be liable on summary conviction to a fine not exceeding level 1 on the standard scale.

    (3) For the purposes of this section, the use in the United Kingdom in relation to a design—

    (a) of the word "registered", or

    (b) of any other word or symbol importing a reference (express or implied) to registration,shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in the United Kingdom and that the design is in fact so registered.

    Notes & References

    The Community Design Regulations 2005 Regulation 3

    Section 35A: Offence by body corporate: liability of officers.

    35A. - (1) Where an offence under this Act committed by a body corporate is proved to have been committed with the consent or connivance of a director, manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly.

    (2) In relation to a body corporate whose affairs are managed by its members "director" means a member of the body corporate.

    RULES, ETC.

    Section 36: General power of Secretary of State to make rules, etc.

    36. - (1) Subject to the provisions of this Act, the Secretary of State may make such rules as he thinks expedient for regulating the business of the Patent Office in relation to designs and for regulating all matters by this Act placed under the direction or control of the registrar or the Secretary of State.

    (1A) Rules may, in particular, make provision

    (a) prescribing the form of applications for registration of designs and of any representations or specimens of designs or other documents which may be filed at the Patent Office, and requiring copies to be furnished of any such representations, specimens or documents;

    (ab) requiring applications for registration of designs to specify -

    (i) the products to which the designs are intended to be applied or in which they are intended to be incorporated;

    (ii) the classification of the designs by reference to such test as may be prescribed;

    (b) regulating the procedure to be followed in connection with any application or request to the registrar or in connection with any proceeding before him, and authorising the rectification of irregularities of procedure;

    (c) providing for the appointment of advisers to assist the registrar in proceedings before him;

    (d) regulating the keeping of the register of designs;

    (e) authorising the publication and sale of copies of representations of designs and other documents in the Patent Office;

    (f) prescribing anything authorised or required by this Act to be prescribed by rules.

    (1B) The remuneration of an adviser appointed to assist the registrar shall be determined by the Secretary of State with the consent of the Treasury and shall be defrayed out of money provided by Parliament.

    (2) Rules made under this section may provide for the establishment of branch offices for designs and may authorise any document or thing required by or under this Act to be filed or done at the Patent Office to be filed or done at the branch office at Manchester or any other branch office established in pursuance of the rules.

    Notes & References

    Relevant Rule(s): 3,4 , 36, 36A, 49, 50, 51, 66

    Section 37: Provisions as to rules and Orders.

    37. - (1) REPEALED

    (2) Any rules made by the Secretary of State in pursuance of section 15 of this Act, and any order made, direction given, or other action taken under the rules by the registrar, may be made, given or taken so as to have effect as respects things done or omitted to be done on or after such date, whether before or after the coming into operation of the rules or of this Act, as may be specified in the rules.

    (3) Any power to make rules conferred by this Act on the Secretary of State or on the Appeal Tribunal shall be exercisable by statutory instrument; and the Statutory Instruments Act 1946 shall apply to a statutory instrument containing rules made by the Appeal Tribunal in like manner as if the rules had been made by a Minister of the Crown.

    (4) Any statutory instrument containing rules made by the Secretary of State under this Act shall be subject to annulment in pursuance of a resolution of either House of Parliament.

    (5) Any Order in Council made under this Act may be revoked or varied by a subsequent Order in Council.

    SUPPLEMENTAL

    Section 39: Hours of business and excluded days.

    39. - (1) Rules made by the Secretary of State under this Act may specify the hour at which the Patent Office shall be deemed to be closed on any day for purposes of the transaction by the public of business under this Act or of any class of such business, and may specify days as excluded days for any such purposes.

    (2) Any business done under this Act on any day after the hour specified as aforesaid in relation to business of that class, or on a day which is an excluded day in relation to business of that class, shall be deemed to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act expires on an excluded day, that time shall be extended to the next following day not being an excluded day.

    Notes & References

    Relevant Rule(s): 74,75, 76

    Section 40: Fees.

    40. There shall be paid in respect of the registration of designs and applications therefor, and in respect of other matters relating to designs arising under this Act, such fees as may be prescribed by rules made by the Secretary of State with the consent of the Treasury.

    Notes & References

    Relevant Rule(s): Registered Designs (Fees) Rules

    Section 41: Service of notices, &c., by post.

    41. Any notice required or authorised to be given by or under this Act, and any application or other document so authorised or required to be made or filed, may be given, made or filed by post.

    Notes & References

    Relevant Rule(s): 7

    Section 42: Annual report of registrar.

    42. The Comptroller-General of Patents, Designs and Trade Marks shall, in his annual report with respect to the execution of the Patents Act 1977, include a report with respect to the execution of this Act as if it formed a part of or was included in that Act.

    Section 43: Savings.

    43. - (1) Repealed

    (2) Nothing in this Act shall affect the right of the Crown or of any person deriving title directly or indirectly from the Crown to sell or use products forfeited under the laws relating to customs or excise.

    Section 44: Interpretation.

    44. - (1) In this Act, except where the context otherwise requires, the following expressions have the meanings hereby respectively assigned by them, that is to say

    "Appeal Tribunal" means the Appeal Tribunal constituted and acting in accordance with section 28 of this Act as amended by the Administration of Justice Act 1969;

    "assignee" includes the personal representative of a deceased assignee, and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person; "author", in relation to a design, has the meaning given by section 2(3) and (4);

    "Community Design Regulation" means Council Regulation (EC) 6/2002 of 12th December 2001 on Community Designs;

    "complex product" has the meaning assigned to it by section 1(3) of this Act;

    "the court" shall be construed in accordance with section 27 of this Act;

    "design" has the meaning assigned to it by section 1(2) of this Act;

    "employee", "employment" and "employer" refer to employment under a contract of service or of apprenticeship;

    "national unregistered design right" means design right within the meaning of Part III of the Copyright, Designs and Patents Act 1988;

    "prescribed" means prescribed by rules made by the Secretary of State under this Act;

    "product" has the meaning assigned to it by section 1(3) of this Act;

    "proprietor" has the meaning assigned to it by section 2 of this Act; "registered proprietor" means the person or persons for the time being entered in the register of designs as proprietor of the design;

    "registered Community design" means a design that complies with the conditions contained in, and is registered in the manner provided for in, the Community Design Regulation;

    "registrar" means the Comptroller-General of Patents Designs and Trade Marks;

    (2) Repealed

    (3) Repealed

    (4) For the purposes of subsection (1) of section 14 of this Act, the expression "personal representative", in relation to a deceased person, includes the legal representative of the deceased appointed in any country outside the United Kingdom.

    Notes & References

    Relevant Rule(s): 2

    Section 45: Application to Scotland.

    45. In the application of this Act to Scotland

    (1) "account of profits" means accounting and payment of profits;
    "accounts" means count, reckoning and payment;
    "arbitrator" means arbiter;
    "assignment" means assignation;
    "claimant" means pursuer;
    "costs" means expenses;
    "defendant" means defender;
    "delivery up" means delivery;
    "injunction" means interdict;
    "interlocutory relief" means interim remedy.

    (2) References to the Crown shall be construed as including references to the Crown in right of the Scottish Administration.

    Notes & References

    Court of Session Rules Chapter 55

    Section 46: Application to Northern Ireland.

    46. In the application of this Act to Northern Ireland

    (3) References to enactments include enactments comprised in Northern Ireland legislation:

    (3A) References to the Crown include the Crown in right of Her Majesty's Government in Northern Ireland:

    (4) References to a government department shall be construed as including references to a Northern Ireland department, and in relation to a Northern Ireland department references to the Treasury shall be construed as references to the Department of Finance and Personnel.

    (4A) Any reference to a claimant includes a reference to a plaintiff.

    Section 47: Application to Isle of Man.

    47. This Act extends to the Isle of Man, subject to any modifications contained in an Order made by Her Majesty in Council, and accordingly, subject to any such Order, references in this Act to the United Kingdom shall be construed as including the Isle of Man.

    Section 47A: Territorial waters and the continental shelf.

    47A. - (1) For the purposes of this Act the territorial waters of the United Kingdom shall be treated as part of the United Kingdom.

    (2) This Act applies to things done in the United Kingdom sector of the continental shelf on a structure or vessel which is present there for purposes directly connected with the exploration of the sea bed or subsoil or the exploitation of their natural resources as it applies to things done in the United Kingdom.

    (3) The United Kingdom sector of the continental shelf means the areas designated by order under section 1(7) of the Continental Shelf Act 1964.

    Section 48: Repeals, savings, and transitional provisions.

    48. - (1) REPEALED

    (2) Subject to the provisions of this section, any Order in Council, rule, order, requirement, certificate, notice, decision, direction, authorisation, consent, application, request or thing made, issued, given or done under any enactment repealed by this Act shall, if in force at the commencement of this Act, and so far as it could have been made, issued, given or done under this Act, continue in force and have effect as if made, issued, given or done under the corresponding enactment of this Act.

    (3) Any register kept under the Patents and Designs Act 1907 shall be deemed to form part of the corresponding register under this Act.

    (4) Any design registered before the commencement of this Act shall be deemed to be registered under this Act in respect of articles of the class in which it is registered.

    (5) Repealed

    (6) Any document referring to any enactment repealed by this Act shall be construed as referring to the corresponding enactment of this Act.

    (7) Nothing in the foregoing provisions of this section shall be taken as prejudicing the operation of section 38 of the Interpretation Act 1889 (which relates to the effect of repeals).

    Section 49: Short title and commencement.

    49. - (1) This Act may be cited as the Registered Designs Act 1949.

    (2) This Act shall come into operation on the first day of January, nineteen hundred and fifty, immediately after the coming into operation of the Patents and Designs Act 1949.

     

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