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TITLE IIU.K.THE LAW RELATING TO DESIGNS

Section 1U.K.Requirements for protection

Article 3U.K.Definitions

For the purposes of this Regulation:

(a)

‘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 and/or materials of the product itself and/or its ornamentation;

(b)

‘product’ means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs;

(c)

‘complex product’ means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product;

(d)

[F1‘qualifying country’ and ‘qualifying territory’ mean a country or territory designated by regulations made under Article 7.]

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Article 4U.K.Requirements for protection

1.A design shall be protected by a [F2supplementary unregistered] design to the extent that it is new and has individual character.

2.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 latter; and

(b)to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

3.‘Normal use’ within the meaning of paragraph (2)(a) shall mean use by the end user, excluding maintenance, servicing or repair work.

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Article 5U.K.Novelty

1.A design shall be considered to be new if no identical design has been made available to the public:

(a)in the case of [F3a supplementary] unregistered F4... design, before the date on which the design for which protection is claimed has first been made available to the public;

F5(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

2.Designs shall be deemed to be identical if their features differ only in immaterial details.

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Article 6U.K.Individual character

1.A design shall be considered to have 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:

(a)in the case of [F6a supplementary] unregistered F7... design, before the date on which the design for which protection is claimed has first been made available to the public;

F8(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

2.In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Textual Amendments

[F9Article 7U.K.Disclosure

1.Subject to paragraph 4, for the purposes of applying Articles 5 and 6, a supplementary unregistered design shall be deemed to have been made available to the public where paragraph 2 or 3 applies.

2.This paragraph applies where before IP completion day, the design was published or exhibited, used in trade or otherwise disclosed except where those events could not have become known in the normal course of business to the circles specialised in the sector operating within the European Union.

3.This paragraph applies where on or after IP completion day but before the date mentioned in Articles 5(1)(a) or 6(1)(a), the design was published or exhibited, used in trade or otherwise disclosed except where those events could not have become known in the normal course of business to the circles specialised in the sector operating within the United Kingdom, a qualifying country or a qualifying territory.

4.A design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

5.For the purposes of this Regulation, a “qualifying country” is a country designated as such, and a “qualifying territory” is a territory designated as such, in Regulations made by the Secretary of State.

6.Regulations under paragraph 5 are to be made by statutory instrument and are subject to annulment in pursuance of a resolution of either House.]

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Article 8U.K.Designs dictated by their technical function and designs of interconnections

1.A [F10supplementary unregistered] design shall not subsist in features of appearance of a product which are solely dictated by its technical function.

2.A [F10supplementary unregistered] design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order 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.Notwithstanding paragraph 2, a [F10supplementary unregistered] design shall under the conditions set out in Articles 5 and 6 subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system.

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Article 9U.K.Designs contrary to public policy or morality

A [F11supplementary unregistered] design shall not subsist in a design which is contrary to public policy or to accepted principles of morality.

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Section 2U.K.Scope and term of protection

Article 10U.K.Scope of protection

1.The scope of the protection conferred by a [F12supplementary unregistered] design shall include any design which does not produce on the informed user a different overall impression.

2.In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

Textual Amendments

Article 11U.K.Commencement and term of protection of the [F13supplementary] unregistered F14... design

1.A design which meets the requirements under Section 1 shall be protected by [F15a supplementary] unregistered F16... design for a period of three years as from the date on which the design was first made available to the public within the [F17United Kingdom, a qualifying country or a qualifying territory].

2.For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the [F18United Kingdom, a qualifying country or a qualifying territory] if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the [F18United Kingdom, a qualifying country or a qualifying territory]. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

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F19Article 12U.K.Commencement and term of protection of the registered Community design

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F20Article 13U.K.Renewal

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Section 3U.K.Right to the [F21supplementary unregistered] design

Article 14U.K.Right to the [F22supplementary unregistered] design

1.The right to the [F22supplementary unregistered] design shall vest in the designer or his successor in title.

2.If two or more persons have jointly developed a design, the right to the [F22supplementary unregistered] design shall vest in them jointly.

3.However, where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the [F22supplementary unregistered] design shall vest in the employer, unless otherwise agreed F23....

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Article 15U.K.Claims relating to the entitlement to a [F24supplementary unregistered] design

1.If [F25a supplementary] unregistered F26... design is disclosed or claimed by F27... a person who is not entitled to it under Article 14, the person entitled to it under that provision may, without prejudice to any other remedy which may be open to him, claim to become recognised as the legitimate holder of [F28that] design.

2.Where a person is jointly entitled to a [F29supplementary unregistered] design, that person may, in accordance with paragraph 1, claim to become recognised as joint holder.

3.Legal proceedings under paragraphs 1 or 2 shall be barred three years after F30... the date of disclosure of [F31a supplementary] unregistered F32... design. This provision shall not apply if the person who is not entitled to [F33that] design was acting in bad faith at the time when such design was F34... disclosed or was assigned to him.

F354.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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F36Article 16U.K.Effects of a judgement on entitlement to a registered Community design

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F36Article 17U.K.Presumption in favour of the registered holder of the design

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F36Article 18U.K.Right of the designer to be cited

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Section 4U.K.Effects of the [F37supplementary unregistered] design

Article 19U.K.Rights conferred by the [F38supplementary unregistered] design

1.A [F39supplementary unregistered] design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, 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 stocking such a product for those purposes.

2.[F40A supplementary] unregistered F41... design shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design.

The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder.

F423.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

Article 20U.K.Limitation of the rights conferred by a [F43supplementary unregistered] design

1.The rights conferred by a [F44supplementary unregistered] design shall not be exercised in respect of:

(a)acts done privately and for non-commercial purposes;

(b)acts done for experimental purposes;

(c)acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.

2.In addition, the rights conferred by a [F45supplementary unregistered] design shall not be exercised in respect of:

(a)the equipment on ships and aircraft registered in a third country when these temporarily enter the territory of the [F46United Kingdom];

(b)the importation in the [F47United Kingdom] of spare parts and accessories for the purpose of repairing such craft;

(c)the execution of repairs on such craft.

Textual Amendments

Article 21U.K.Exhaustion of rights

The rights conferred by a [F48supplementary unregistered] design shall not extend to acts relating to a product in which a design included within the scope of protection of the [F48supplementary unregistered] design is incorporated or to which it is applied, when the product has been put on the market in the [F49United Kingdom or the European Economic Area] by the holder of the [F48supplementary unregistered] design or with his consent.

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F50Article 22U.K.Rights of prior use in respect of a registered Community design

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F51Article 23U.K.Government use

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Section 5U.K.Invalidity

Article 24U.K.Declaration of invalidity

F521.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

2.A [F53supplementary unregistered] design may be declared invalid even after [F54it] has lapsed F55....

3.An unregistered [F56supplementary unregistered] design shall be declared invalid by a F57... design court on application to such a court or on the basis of a counterclaim in infringement proceedings.

Textual Amendments

Article 25U.K.Grounds for invalidity

1.A [F58supplementary unregistered] design may be declared invalid only in the following cases:

(a)if the design does not correspond to the definition under Article 3(a);

(b)if it does not fulfil the requirements of Articles 4 to 9;

(c)if, by virtue of a court decision, the right holder is not entitled to the F59... design under Article 14;

F60(d). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(e)if a distinctive sign is used in a subsequent design, and F61... the law F62... governing that sign confers on the right holder of the sign the right to prohibit such use;

(f)if the design constitutes an unauthorised use of a work protected under F63... copyright law F64...;

(g)if the design constitutes an improper use of any of the items listed in Article 6ter of the ‘Paris Convention’ for the Protection of Industrial Property hereafter referred to as the ‘Paris Convention’, or of badges, emblems and escutcheons other than those covered by the said Article 6ter and which are of particular public interest in [F65the United Kingdom, a qualifying country or a qualifying territory].

2.The ground provided for in paragraph (1)(c) may be invoked solely by the person who is entitled to the [F66supplementary unregistered] design under Article 14.

3.The grounds provided for in paragraph (1) F67..., (e) and (f) may be invoked solely by F68... holder of the earlier right.

4.The ground provided for in paragraph (1)(g) may be invoked solely by the person or entity concerned by the use.

F695.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F706.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

Article 26U.K.Consequences of invalidity

1.A [F71supplementary unregistered] design shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that it has been declared invalid.

2.Subject to F72... claims for compensation for damage caused by negligence or lack of good faith on the part of the holder of the [F73supplementary unregistered] design, or to unjust enrichment, the retroactive effect of invalidity of the [F73supplementary unregistered] design shall not affect:

(a)any decision on infringement which has acquired the authority of a final decision and been enforced prior to the invalidity decision;

(b)any contract concluded prior to the invalidity decision, in so far as it has been performed before the decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract may be claimed on grounds of equity.

Textual Amendments