Registered Designs Act 1949

1949 CHAPTER 88 12 13 and 14 Geo 6

An Act to consolidate certain enactments relating to registered designs.

[16th December 1949]

Extent Information

E1 Act extends to Isle of Man see s. 47

Modifications etc. (not altering text)

C1 Act restricted (retrospectively) by 1994 c. 26, s. 106(1), Sch. 4 para. 2(4); S.I. 1994/2550, art. 2; and modified (9.12.2001) by S.I. 2001/3678, art. 2(1)(2), Sch. 1

C2 Functions of Board of Trade and of President of Board of Trade now exercisable concurrently by Secretary of State: S.I. 1970/1537, art. 2(1)

C3 Act reprinted as amended by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 273, Sch. 4

Commencement Information

I1 Act wholly in force at 1.1.1950 see s. 49 (2)

Registrable designs and proceedings for registration U.K.

[F1 1 Designs registerable under Act. U.K.

(1) In this Act “design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include—

(a) a method or principle of construction, or

(b) features of shape or configuration of an article which—

(i) are dictated solely by the function which the article has to perform, or

(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

(2) A design which is new may, upon application by the person claiming to be the proprietor, be registered under this Act in respect of any article, or set of articles, specified in the application.

(3) A design shall not be registered in respect of an article if the appearance of the article is not material, that is, if aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description, and would not be so taken into account if the design were to be applied to the article.

(4) A design shall not be regarded as new for the purposes of this Act if it is the same as a design—

(a) registered in respect of the same or any other article in pursuance of a prior application, or

(b) published in the United Kingdom in respect of the same or any other article before the date of the application,

or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade.

This subsection has effect subject to the provisions of sections 4, 6 and 16 of this Act.

(5) The Secretary of State may by rules provide for excluding from registration under this Act designs for such articles of a primarily literary or artistic character as the Secretary of State thinks fit.]

[F2 (6) A design shall not be registered if it consists of or contains a controlled representation within the meaning of the Olympic Symbol etc. (Protection) Act 1995 unless it appears to the registrar—

(a) that the application is made by the person for the time being appointed under section 1(2) of the Olympic Symbol etc. (Protection) Act 1995 (power of Secretary of State to appoint a person as the proprietor of the Olympics association right), or

(b) that consent has been given by or on behalf of the person mentioned in paragraph (a) of this subsection.]

Textual Amendments

F1 S. 1 substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 265, 266

F2 S. 1(6) inserted (20.9.1995 with effect as mentioned in to s. 13(3) of the amending Act) by 1995 c. 32, s. 13(1)(3); S.I. 1995/2472, art. 2

Valid from 09/12/2001

[F3 1A Substantive grounds for refusal of registration. U.K.

(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 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.]

Textual Amendments

F3 Ss. 1-1D substituted (9.12.2001) for s. 1 by S.I. 2001/3949, reg. 2 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F4 1B Requirement of novelty and individual character. U.K.

(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.]

Textual Amendments

F4 Ss. 1-1D substituted (9.12.2001) for s. 1 by S.I. 2001/3949, reg. 2 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F5 1C Designs dictated by their technical function. U.K.

(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.]

Textual Amendments

F5 Ss. 1-1D substituted (9.12.2001) for s. 1 by S.I. 2001/3949, reg. 2 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F6 1D Designs contrary to public policy or morality. U.K.

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

Textual Amendments

F6 Ss. 1-1D substituted (9.12.2001) for s. 1 by S.I. 2001/3949, reg. 2 (with transitional provisions in regs. 10-14)

2 Proprietorship of designs. U.K.

[F7 (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, or the right to apply a design to any article, 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 or as the proprietor of the design in relation to that article.

[F8 (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.]

Textual Amendments

F7 S. 2(1) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 267(2)

F8 S. 2(3)(4) inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 267(3)(4)

3 Proceedings for registration. U.K.

(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.

[F9 (2) An application for the registration of a design in which design right subsists shall not be entertained unless made by the person claiming to be the design right owner.

(3) For the purpose of deciding whether a design is new, the registrar may make such searches, if any, as he thinks fit.

(4) The registrar may, in such cases as may be prescribed, direct that for the purpose of deciding whether a design is new an application shall be treated as made on a date earlier or later than that on which it was in fact made.

(5) The registrar may refuse an application for the registration of a design or may register the design in pursuance of the application subject to such modifications, if any, as he thinks fit; and a design when registered shall be registered as of the date on which the application was made or is treated as having been made.

(6) An application 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.

(7) An appeal lies from any decision of the registrar under this section.]

Textual Amendments

F9 S. 3(2)–(7) substituted for s. 3(2)–(6) by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 1

Valid from 09/12/2001

[F10 3A Determination of applications for registration. U.K.

(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.]

Textual Amendments

F10 Ss. 3-3D substituted (9.12.2001) for s. 3 by S.I. 2001/3949, reg. 4 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F11 3B Modification of applications for registration. U.K.

(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 the registrar 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.]

Textual Amendments

F11 Ss. 3-3D substituted (9.12.2001) for s. 3 by S.I. 2001/3949, reg. 4 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F12 3C Date of registration of designs. U.K.

(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.]

Textual Amendments

F12 Ss. 3-3D substituted (9.12.2001) for s. 3 by S.I. 2001/3949, reg. 4 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F13 3D Appeals in relation to applications for registration. U.K.

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

Textual Amendments

F13 Ss. 3-3D substituted (9.12.2001) for s. 3 by S.I. 2001/3949, reg. 4 (with transitional provisions in regs. 10-14)

4 Registration of same design in respect of other articles, etc. U.K.

(1) Where the registered proprietor of a design registered in respect of any article makes an application—

(a) for registration in respect of one or more other articles, of the registered design, or

(b) for registration in respect of the same or one or more other articles, of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof,

the application shall not be refused and the registration made on that application shall not be invalidated by reason only of the previous registration or publication of the registered design:

[F14 Provided that the right in a design registered by virtue of this section shall not extend beyond the end of the period, and any extended period, for which the right subsists in the original registered design.]

(2) Where any person makes an application for the registration of a design in respect of any article and either—

(a) that design has been previously registered by another person in respect of some other article; or

(b) the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof,

then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of this section shall apply as if at the time of making the application the applicant had been the registered proprietor of that design.

Textual Amendments

F14 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 2

5 Provisions for secrecy of certain designs. U.K.

(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 [F15 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.

[F16 (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, and

(b) any evidence filed in support of the applicant’s contention that the appearance of an article is material (for the purposes of section 1(3) of this Act),

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 [F15 the Secretary of State], and thereupon the following provisions shall have effect, that is to say:—

(a) [F15 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, [F15 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 [F17 , or any such evidence as is mentioned in subsection (2)(b) above,] filed in pursuance of the application;

(c) if upon consideration of the design at any time it appears to [F15 the Secretary of State] that the publication of the design would not, or would no longer, be prejudicial to the defence of the realm, [F18 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.

(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F19

Textual Amendments

F15 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 3(2)

F16 S. 5(2) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 3(3)

F17 Words inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 3(4)

F18 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 3(2)

F19 S. 5(5) repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 3(5), Sch. 8

6 Provisions as to confidential disclosure, etc. U.K.

(1) An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of—

(a) the disclosure of the design by the proprietor to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design;

(b) the disclosure of the design in breach of good faith by any person other than the proprietor of the design; or

(c) in the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design.

(2) An application for the registration of a design shall not be refused and the registration of a design shall not be invalidated by reason only—

(a) that a representation of the design, or any article to which the design has been applied, has been displayed, with the consent of the proprietor of the design, at an exhibition [F20 certified by the Secretary of State] for the purposes of this subsection;

(b) that after any such display as aforesaid, and during the period of the exhibition, a representation of the design or any such article as aforesaid has been displayed by any person without the consent of the proprietor; or

(c) that a representation of the design has been published in consequence of any such display as is mentioned in paragraph (a) of this subsection,

if the application for registration of the design is made not later than six months after the opening of the exhibition.

(3) An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of the communication of the design by the proprietor thereof to a Government department or to any person authorised by a Government department to consider the merits of the design, or of anything done in consequence of such a communication.

[F21 (4) Where an application is made by or with the consent of the owner of copyright in an artistic work for the registration of a corresponding design, the design shall not be treated for the purposes of this Act as being other than new by reason only of any use previously made of the artistic work, subject to subsection (5).

(5) Subsection (4) does not apply if the previous use consisted of or included the sale, letting for hire or offer or exposure for sale or hire of articles to which had been applied industrially—

(a) the design in question, or

(b) a design differing from it only in immaterial details or in features which are variants commonly used in the trade,

and that previous use was made by or with the consent of the copyright owner.

(6) The Secretary of State may make provision by rules as to the circumstances in which a design is to be regarded for the purposes of this section as “applied industrially” to articles, or any description of articles.]

Textual Amendments

F20 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 4(2)

F21 S. 6 (4)–(6) substituted for s. 6 (4)(5) by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 4(3)

Effect of registration, etc. U.K.

[F22 7 Right given by registration. U.K.

(1) The registration of a design under this Act gives the registered proprietor the exclusive right—

(a) to make or import—

(i) for sale or hire, or

(ii) for use for the purposes of a trade or business, or

(b) to sell, hire or offer or expose for sale or hire,

an article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied.

(2) The right in the registered design is infringed by a person who without the licence of the registered proprietor does anything which by virtue of subsection (1) is the exclusive right of the proprietor.

(3) The right in the registered design is also infringed by a person who without the licence of the registered proprietor makes anything for enabling any such article to be made, in the United Kingdom or elsewhere, as mentioned in subsection (1).

(4) The right in the registered design is also infringed by a person who without the licence of the registered proprietor—

(a) does anything in relation to a kit that would be an infringement if done in relation to the assembled article (see subsection (1)), or

(b) makes anything for enabling a kit to be made or assembled, in the United Kingdom or elsewhere, if the assembled article would be such an article as is mentioned in subsection (1);

and for this purpose a “kit” means a complete or substantially complete set of components intended to be assembled into an article.

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

(6) The right in a registered design is not infringed by the reproduction of a feature of the design which, by virtue of section 1(1)(b), is left out of account in determining whether the design is registrable.]

Textual Amendments

F22 S. 7 substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 268

Valid from 09/12/2001

[F23 7A Infringements of rights in registered designs. U.K.

(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.]

Textual Amendments

F23 Ss. 7 and 7A substituted (9.12.2001) for s. 7 by S.I. 2001/3949, reg. 4 (with transitional provisions in regs. 10-14)

[8 Duration of right in registered design. U.K.

(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 has 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) Where it is shown that a registered design—

(a) was at the time it was registered a corresponding design in relation to an artistic work in which copyright subsists, and

(b) by reason of a previous use of that work would not have been registrable but for section 6(4) of this Act (registration despite certain prior applications of design),

the right in the registered design expires when the copyright in that work expires, if that is earlier than the time at which it would otherwise expire, and it may not thereafter be renewed.

(6) The above provisions have effect subject to the proviso to section 4(1) (registration of same design in respect of other articles, &c.) [F24 and, in the case of the right of the Secretary of State in any design forming part of the British mercantile marine uniform registered under this Act, to that right’s subsisting so long as the design remains on the register.]]

Textual Amendments

F24 Words in s. 8(6) inserted (1.1.1996) by 1995 c. 21, ss. 314(2), 316(2), Sch. 13 para. 26 (with s. 312(1))

Modifications etc. (not altering text)

C4 Ss. 8, 8A, 8B substituted for s. 8 by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 269(1)(2)

[F25 8A Restoration of lapsed right in design. U.K.

(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.]

Textual Amendments

F25 Ss. 8, 8A, 8B substituted for s. 8 by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 269(1)(2)

[F26 8B Effect of order for restoration of right. U.K.

(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 an article 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 article 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.]

Textual Amendments

F26 Ss. 8, 8A, 8B substituted for s. 8 by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 269(1)(2)

9 Exemption of innocent infringer from liability for damages. U.K.

(1) In proceedings for the infringement of [F27 the right in a registered design] damages shall not be awarded 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; and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the marking of an article with the word “registered” or any abbreviation thereof, or any word or words expressing or implying that the design applied to the article has been registered, unless the number of the design accompanied the word or words or the abbreviation in question.

(2) Nothing in this section shall affect the power of the court to grant an injunction in any proceedings for infringement of [F27 the right in a registered design].

Textual Amendments

F27 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 5

10 Compulsory licence in respect of registered design. U.K.

(1) At any time after a design has been registered any person interested may apply to the registrar for the grant of a compulsory licence in respect of the design on the ground that the design is not applied in the United Kingdom by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case; and the registrar may make such order on the application as he thinks fit.

(2) An order for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed executed by the registered proprietor and all other necessary parties, granting a licence in accordance with the order.

(3) No order shall be made under this section which would be at variance with any treaty, convention, arrangement or engagement applying to the United Kingdom and any convention country.

(4) An appeal shall lie from any order of the registrar under this section.

11 Cancellation of registration. U.K.

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

(2) At any time after a design has been registered any person interested may apply to the registrar for the cancellation of the registration of the design on the ground that the design was not, at the date of the registration thereof, new . . . F28 , or on any other ground on which the registrar could have refused to register the design; and the registrar may make such order on the application as he thinks fit.

[F29 (3) At any time after a design has been registered, any person interested may apply to the registrar for the cancellation of the registration on the ground that—

(a) the design was at the time it was registered a corresponding design in relation to an artistic work in copyright subsisted, and

(b) the right in the registered design has expired in accordance with section 8(4) of this Act (expiry of right in registered design on expiry of copyright in artistic work);

and the registrar may make such order on the application as he thinks fit.

(4) A cancellation under this section takes effect—

(a) in the case of cancellation under subsection (1), from the date of the registrar’s decision,

(b) in the case of cancellation under subsection (2), from the date of registration,

(c) in the case of cancellation under subsection (3), from the date on which the right in the registered design expired,

or, in any case, from such other date as the registrar may direct.

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

Textual Amendments

F28 Words repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 6(2), Sch. 8

F29 S. 11(3)(4)(5) substituted for s. 11(2A)(3) by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 6(3)

Valid from 09/12/2001

[F30 11ZA Grounds for invalidity of registration. U.K.

(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.]

Textual Amendments

F30 Ss. 11-11ZF substituted (9.12.2001) for s. 11 by S.I. 2001/3949, reg. 7 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F31 11ZB Applications for declaration of invalidity. U.K.

(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 an application for such registration, the registered proprietor of the 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.]

Textual Amendments

F31 Ss. 11-11ZF substituted (9.12.2001) for s. 11 by S.I. 2001/3949, reg. 7 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F32 11ZC Determination of applications for declaration of invalidity. U.K.

(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.]

Textual Amendments

F32 Ss. 11-11ZF substituted (9.12.2001) for s. 11 by S.I. 2001/3949, reg. 7 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F33 11ZD Modification of registration. U.K.

(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.]

Textual Amendments

F33 Ss. 11-11ZF substituted (9.12.2001) for s. 11 by S.I. 2001/3949, reg. 7 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F34 11ZE Effect of cancellation or invalidation of registration. U.K.

(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.]

Textual Amendments

F34 Ss. 11-11ZF substituted (9.12.2001) for s. 11 by S.I. 2001/3949, reg. 7 (with transitional provisions in regs. 10-14)

Valid from 09/12/2001

[F35 11ZF Appeals in relation to cancellation or invalidation. U.K.

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

Textual Amendments

F35 Ss. 11-11ZF substituted (9.12.2001) for s. 11 by S.I. 2001/3949, reg. 7 (with transitional provisions in regs. 10-14)

[F36 11A Powers exercisable for protection of the public interest. U.K.

(1) Where a report of the [F37 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 a 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, or

(b) a refusal by the proprietor of a registered design to grant licences on reasonable terms,

he may by order cancel or modify any such condition or may, instead or in addition, make an entry in the register to the effects that licences in respect of the design are to be available as of right.

(4) The terms of a licence available by virtue of this section shall, in default of agreement, be settled by the registrar on an application by the person requiring the licence; and terms so settled shall authorise the licensee to do everything which would be an infringement of the right in the registered design in the absence of a licence.

(5) Where the terms of a licence are settled by the registrar the licence has effect from the date on which the application to him was made.

(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 [F37 Competition Commission] was made.]

Textual Amendments

F36 Ss. 11A, 11B inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 266(5), 270

F37 Words in s. 11A(1)(7) substituted (1.4.1999) by S.I. 1999/506, art. 9 (with art. 3)

Valid from 20/06/2003

[F38 11AB Powers exercisable following merger and market investigations U.K.

(1) Subsection (2) below applies where—

(a) section 41(2), 55(2), 66(6), 75(2), 83(2), 138(2), 147(2) or 160(2) of, or paragraph 5(2) or 10(2) of Schedule 7 to, the Enterprise Act 2002 (powers to take remedial action following merger or market investigations) applies;

(b) the Competition Commission or (as the case may be) the Secretary of State considers that it would be appropriate to make an application under this section for the purpose of remedying, mitigating or preventing a matter which cannot be dealt with under the enactment concerned; and

(c) the matter concerned involves 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.

(2) The Competition Commission or (as the case may be) the Secretary of State may apply to the registrar to take action under this section.

(3) Before making an application the Competition Commission or (as the case may be) the Secretary of State shall publish, in such manner as it or he thinks 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 it or him to be affected.

(4) The registrar may, if it appears to him on an application under this section that the application is made in accordance with this section, by order cancel or modify any condition concerned of the kind mentioned in subsection (1)(c) above.

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

(6) References in this section to the Competition Commission shall, in cases where section 75(2) of the Enterprise Act 2002 applies, be read as references to the Office of Fair Trading.

(7) References in section 35, 36, 47, 63, 134 or 141 of the Enterprise Act 2002 (questions to be decided by the Competition Commission in its reports) to taking action under section 41(2), 55, 66, 138 or 147 shall include references to taking action under subsection (2) above.

(8) An order made by virtue of this section in consequence of action under subsection (2) above where an enactment mentioned in subsection (1)(a) above applies shall be treated, for the purposes of sections 91(3), 92(1)(a), 162(1) and 166(3) of the Enterprise Act 2002 (duties to register and keep under review enforcement orders etc.), as if it were made under the relevant power in Part 3 or (as the case may be) 4 of that Act to make an enforcement order (within the meaning of the Part concerned).]

Textual Amendments

F38 S. 11AB inserted (prosp.) by Enterprise Act 2002 (c. 40), ss. 278(1), 279, Sch. 25 {para. 1(3)}

[F39 11B Undertaking to take licence of right in infringement proceedings. U.K.

(1) If in proceedings for infringement of the right in a registered design in respect of which a licence is available as of right under section 11A of this Act the defendant undertakes to take a licence on such terms as may be agreed or, in default of agreement, settled by the registrar under that section—

(a) no injunction shall be granted against him, and

(b) the amount recoverable against him by way of damages or on an account of profits shall not exceed double the amount which would have been payable by him as licensee if such a licence on those terms had been granted before the earliest infringement.

(2) An undertaking may be given at any time before final order in the proceedings, without any admission of liability.

(3) Nothing in this section affects the remedies available in respect of an infringement committed before licences of right were available.]

Textual Amendments

F39 Ss. 11A, 11B inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 266(5), 270

Modifications etc. (not altering text)

C5 S. 11B applied by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 266(5)

12 Use for services of the Crown. U.K.

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.

Modifications etc. (not altering text)

C6 S. 12 extended by S.I. 1965/1536, Sch. 3

International Arrangements U.K.

13 Orders in Council as to convention countries. U.K.

(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 . . . F40 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 . . . F41 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.

Textual Amendments

F40 Words repealed by Statute Law (Repeals) Act 1986 (c. 12), s. 1(1), Sch. 1 Pt. VI

F41 Words repealed by Statute Law (Repeals) Act 1986 (c. 12), s. 1(1), Sch. 1 Pt. VI

14 Registration of design where application for protection in convention country has been made. U.K.

(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.

[F42 (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 that or any other design is new, 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 3(4) 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.

Textual Amendments

F42 S. 14(2)(3) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 7

15 Extension of time for applications under s. 14 in certain cases. U.K.

(1) If [F43 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, [F43 he] may make rules empowering the registrar to extend the time for making application under subsection (1) of section fourteen 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 articles, 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 articles to which the design is applied or may have made an application for registration of the design.

Textual Amendments

F43 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 8

16 Protection of designs communicated under international agreements. U.K.

(1) Subject to the provisions of this section, [F44 the Secretary of State] may make rules for securing that, where a design has been communicated in accordance with an agreement or arrangement made between His Majesty’s Government in the United Kingdom and the government of any other country for the supply or mutual exchange of information or articles,—

(a) an application for the registration of the design made by the person from whom the design was communicated or his personal representative or assignee shall not be prejudiced, and the registration of the design in pursuance of such an application shall not be invalidated, by reason only that the design has been communicated as aforesaid or that in consequence thereof—

(i) the design has been published or applied, or

(ii) an application for registration of the design has been made by any other person, or the design has been registered on such an application;

(b) any application for the registration of a design made in consequence of such a communication as aforesaid may be refused and any registration of a design made on such an application may be cancelled.

(2) Rules made under subsection (1) of this section may provide that the publication or application of a design, or the making of any application for registration thereof shall, in such circumstances and subject to such conditions or exceptions as may be prescribed by the rules, be presumed to have been in consequence of such a communication as is mentioned in that subsection.

(3) The powers of [F45 the Secretary of State] under this section, so far as they are exercisable for the benefit of persons from whom designs have been communicated to His Majesty’s Government in the United Kingdom by the government of any other country, shall only be exercised if and to the extent that [F45 the Secretary of State is satisfied] that substantially equivalent provision has been or will be made under the law of that country for the benefit of persons from whom designs have been communicated by His Majesty’s Government in the United Kingdom to the government of that country.

(4) References in the last foregoing subsection to the communication of a design to or by His Majesty’s Government or the government of any other country shall be construed as including references to the communication of the design by or to any person authorised in that behalf by the government in question.

Textual Amendments

F44 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 9(a)

F45 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 9(b)

Register of designs, etc . U.K.

[F46 17 Register of designs etc. U.K.

(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 registrar 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 by this Act 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 of 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.

F47 (11) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(12) In this section “certified copy” and “certified extract” mean a copy and extract certified by the registrar and sealed with the seal of the Patent Office.]

Textual Amendments

F46 S. 17 substituted by Patents, Designs and Marks Act 1986 (c. 39, SIF 67A), s. 1, Sch. 1 para. 3

F47 S. 17(11) repealed (14.4.2000) by 1999 c. 23, s. 67, Sch. 6 (with Sch. 7 para. 5(2)); S.I. 2000/1034, art. 2(c), Sch.

18 Certificate of registration. U.K.

(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.

19 Registration of assignments, etc. U.K.

(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.

[F48 (3A) Where 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 design right.

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

(4) Subject to any rights vested in any other person of which notice is entered in the register of designs, the person or persons registered as proprietor of a registered design shall have power to assign, grant licences under, or otherwise deal with the design, and to give effectual receipts for any consideration for any such assignment, licence or dealing:

Provided that any equities in respect of the design may be enforced in like manner as in respect of any other personal property.

(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.

Textual Amendments

F48 S. 19(3A)(3B) inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 10

20 Rectification of register. U.K.

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

(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.

[F49 (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.]

Textual Amendments

F49 S. 20(5) added by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 11

21 Power to correct clerical errors. U.K.

(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.

22 [F50 (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, and

(b) any evidence filed in support of the applicant’s contention that the appearance of an article is material (for the purposes of section 1(3) of this Act).

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) In the case of a design registered in respect of an article of any class prescribed for the purposes of this subsection, no [F51 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 articles 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 it is the same as the first—mentioned design or differs from that design only in immaterial details or in features which are variants commonly used in the trade, 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 design registered in respect of an article of any class prescribed for the purposes of the last foregoing subsection, the [F51 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 [F51 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 [F51 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.

Textual Amendments

F50 S. 22(1) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 12(2)

F51 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 12(3)

23 Information as to existence of right in registered design. U.K.

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, if so, in respect of what articles, 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.

24 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F52 U.K.

Textual Amendments

F52 S. 24 repealed by Patents, Designs and Marks Act 1986 (c. 39, SIF 67A), s. 3(1), Sch. 3 Pt. I

Legal proceedings and Appeals U.K.

25 Certificate of contested validity of registration. U.K.

(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 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 [F53 the right in the registered design] or for cancellation 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.

Textual Amendments

F53 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 14

26 Remedy for groundless threats of infringement proceedings. U.K.

(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 [F54 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 [F54 the right in a registered design] the registration of which is not shown by the plaintiff to be invalid, the plaintiff 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.

[F55 (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.

Textual Amendments

F54 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 15(2)

F55 S. 26(2A) inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 15(3)

[F56 27 The court. U.K.

(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 Chancellor may select for the purpose.]

Textual Amendments

F56 S. 27 substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 16

28 The Appeal Tribunal. U.K.

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

[F57 (2) The Appeal Tribunal shall consist of—

(a) one or more judges of the High Court nominated by the Lord Chancellor, and

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

[F58 (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 [F59 or expenses] as the Tribunal may consider reasonable and direct how and by what parties the costs [F59 or expenses] are to be paid; [F60 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.]

(6 )F61 The Appeal Tribunal shall, with regard to the right of audience, observe the same practice as before the first day of November, nineteen hundred and thirty—two, was observed in the hearing of appeals by the law officer.

(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. [F62 including right of audience]

[F63 (8A) At any time when the Appeal Tribunal consists of two or more judges, the power to make rules under sub—section (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.

[F64 (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.]

Textual Amendments

F57 S. 28(2) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 17(2)

F58 S. 28(2)(2A) substituted for s. 28(2) by Administration of Justice Act 1969 (c. 58), s. 24(1)(2)

F59 Words inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 17(3)

F60 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 17(3)

F61 S. 28(6) repealed (E.W.)(S) by Administration of Justice Act 1970 (c. 31),Sch 11

F62 Words inserted by Administration of Justice Act 1970 (c. 31, SIF 37), s. 10(5) (as extended retrospectively to N.I. by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 17(5))

F63 S. 28(8A) inserted by Administration of Justice Act 1969 (c. 58), s. 24(1)(3)

F64 S. 28(10) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 17(4)

Modifications etc. (not altering text)

C7 S. 28 extended with modifications by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 249(2)

Powers and Duties of Registrar U.K.

29 Exercise of discretionary powers of registrar. U.K.

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, [F65 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.

Textual Amendments

F65 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 18

30 Costs and security for costs. U.K.

(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 cancellation of the registration of a design,

(b) an application for the grant of a licence in respect of a registered 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.

[F66 31 Evidence before registrar. U.K.

(1) 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.]

Textual Amendments

F66 S. 31 substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 20

32 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F67 U.K.

Textual Amendments

F67 S. 32 repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 21, Sch. 8

Offences U.K.

33 Offences under s. 5. U.K.

(1) If any person fails to comply with any direction given under section five 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—

[F68 (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.]

(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F69

Textual Amendments

F68 S. 33(1)(a)(b) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 22(2)(4)

F69 S. 33(2) repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 22(3)(4), Sch. 8

34 Falsification of register, etc. U.K.

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 [F70 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.]

Textual Amendments

F70 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 23(1)(2)

35 Fine for falsely representing a design as registered. U.K.

(1) If any person falsely represents that a design applied to any article sold by him is registered in respect of that article, he shall be liable on summary conviction to [F71 a fine not exceeding level 3 on the standard scale]; and for the purposes of this provision a person who sells an article 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 the article is registered, shall be deemed to represent that the design applied to the article is registered in respect of that article.

(2) If any person, after [F72 the right in a registered design] has expired, marks any article to which the design has been applied with the word “registered”, or any word or words implying that there is a [F73 subsisting right in the design under this Act], or causes any such article to be so marked, he shall be liable on summary conviction to [F74 a fine not exceeding level 1 on the standard scale]

Textual Amendments

F71 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 24(2)(4)

F72 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 24(3)(a)

F73 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 24(3)(b)

F74 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 24(3)(c)

[F75 35A Offence by body corporate: liability of officers. U.K.

(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.]

Textual Amendments

F75 S. 35A inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 25(1)(2)

Rules, etc. U.K.

36 General power of Board of Trade to make rules, etc. U.K.

(1) Subject to the provisions of this Act, [F76 the Secretary of State,] may make such rules [F76 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 [F76 the Secretary of State,] . . . F77 .

[F78 (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;

(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.

Subordinate Legislation Made

P1 S. 36: for previous exercises of this power see Index to Government Orders

P2 S. 36: s. 36 (with ss. 40 and 44(1)) power exercised by S.I. 1991/1628

P3 S. 36:s. 36(1):power exercised by S.I. 1991/675

Textual Amendments

F76 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 26(2)

F77 Words repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 26(3)

F78 S. 36(1A)(1B) added by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 26(3)

Modifications etc. (not altering text)

C8 S. 36 extended by Copyright Act 1956 (c. 74), s. 10(5)

37 Provisions as to rules and Orders. U.K.

(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F79

(2) Any rules made by [F80 the Secretary of State] in pursuance of section fifteen or section sixteen 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 [F80 the Secretary of State] or on the Appeal Tribunal shall be exercisable by statutory instrument; and the M1 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 [F80 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.

Textual Amendments

F79 S. 37(1) repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 27(2), Sch. 8

F80 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 27(3)

Marginal Citations

M1 1946 c. 36.

38

(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F81

(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F82

(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F82

Textual Amendments

F81 S. 38(1) repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 28, Sch. 8

F82 S. 38(2)(3) repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 28, Sch. 8

Supplemental U.K.

39 Hours of business and excluded days. U.K.

(1) Rules made by [F83 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.

Textual Amendments

F83 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 29

40 Fees. U.K.

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 [F84 the Secretary of State] with the consent of the Treasury.

Subordinate Legislation Made

P4 S. 40: s. 36 (with ss. 40 and 44(1)) power exercised by S.I. 1991/1628

P5 S. 40: for previous exercises of this power see Index to Government Orders.

Textual Amendments

F84 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 30

41 Service of notices, etc., by post. U.K.

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.

42 Annual report of registrar. U.K.

The Comptroller—General of Patents, Designs and Trade Marks shall, in his annual report with respect to the execution of [F85 the M2 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.

Textual Amendments

F85 Words substituted by Patents Act 1977 (c. 37), Sch. 5 para. 3

Marginal Citations

M2 1977 c. 37.

43 Savings. U.K.

(1) Nothing in this Act shall be construed as authorising or requiring the registrar to register a design the use of which would, in his opinion, be contrary to law or morality.

(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 articles forfeited under the laws relating to customs or excise.

44 Interpretation. U.K.

(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

• [F86 “Appeal Tribunal” means the Appeal Tribunal constituted and acting in accordance with section 28 of this Act as amended by the M3 Administration of Justice Act 1969;]

• “article” means any article of manufacture and includes any part of an article if that part is made and sold separately;

• [F87 “artistic work” has the same meaning as in [F88 Part I of the Copyright, Designs and Patents Act 1988];]

• “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;

• [F89 “author”in relation to a design, has the meaning given by section 2(3) and (4);]

• . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F90

• “corresponding design” [F91 , in relation to an artistic work, means a design which if applied to an article would produce something which would be treated for the purposes of Part I of the Copyright, Designs and Patents Act 1988 as a copy of that work;]

• [F92 “the court” shall be construed in accordance with section 27 of this Act;]

• “design” has the meaning assigned to it by [F93 section 1(1) of this Act];

• [F94 “employee”, “employment”, and “employer” refer to employment under a contract of service or of apprenticeship,]

• . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F95

• “prescribed” means prescribed by rules made by [F96 the Secretary of State] under this Act;

• “proprietor” has the meaning assigned to it by section two 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;

• “registrar” means the Comptroller-General of Patents Designs and Trade Marks;

• “set of articles” means a number of articles of the same general character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied.

(2) Any reference in this Act to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set.

(3) Any question arising under this Act whether a number of articles constitute a set of articles shall be determined by the registrar; and notwithstanding anything in this Act any determination of the registrar under this subsection shall be final.

(4) For the purposes of subsection (1) of section fourteen and of section sixteen 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.

Subordinate Legislation Made

P6 S. 44: power previously exercised by 1989/1105, 1131 and 1990/1698

P7 S. 44(1): s. 36 (with ss. 40 and 44(1)) power exercised by S.I. 1991/1628

Textual Amendments

F86 Definition substituted by Administration of Justice Act 1969 (c. 58) Sch. 1

F87 Definition inserted by Copyright Act 1956 (c. 74), s. 44(5)

F88 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 31(2)

F89 Definition inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 31(3)

F90 Definition of “copyright” repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 31(4), Sch. 8

F91 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 31(5)

F92 Definition substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 31(6)

F93 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 31(7)

F94 Definition inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 31(8)

F95 Definition of “Journal” repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 31(9), Sch. 8

F96 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 31(10)

Marginal Citations

M3 1969 c. 58.

45 Application to Scotland. U.K.

In the application of this Act to Scotland—

(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F97

(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F97

(3) The expression “injunction” means “interdict”; the expression “arbitrator” means “arbiter”; the expression “plaintiff” means “pursuer”; the expression “defendant” means “defender”.

[F98 (4) References to the Crown shall be construed as including references to the Crown in right of the Scottish Administration.]

Textual Amendments

F97 S. 45(1)(2) repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 32, Sch. 8

F98 S. 45(4) inserted (1.7.1999) by S.I. 1999/1820, arts. 1(2), 4, Sch. 2 Pt. I para. 25; S.I. 1998/3178, art. 3

46 Application to Northern Ireland. U.K.

In the application of this Act to Northern Ireland—

(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F99

(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F99

[F100 (3) References to enactments include enactments comprised in Northern Ireland legislation:]

[F101 (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 [F102 a Northern Ireland department][F103 and in relation to a Northern Ireland department references to the Treasury shall be construed as references to the Department of Finance and Personnel]:

(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F104

Textual Amendments

F99 S. 46(1)(2) repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 33(2), Sch. 8

F100 S. 46(3) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 33(3)

F101 S. 46(3A) inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 33(4)

F102 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 305(3), Sch. 3 para. 33(5)

F103 Words added by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A) s. 272, Sch. 3 para. 33(5)

F104 S. 46(5) repealed by Northern Ireland Act 1962 (c. 30), Sch. 4 Pt. IV.

[F105 47 Application to Isle of Man. U.K.

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.]

Textual Amendments

F105 S. 47 substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 34

[F106 47A Territorial waters and the Continental shelf. U.K.

(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.]

Textual Amendments

F106 S. 47A inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 35

48 Repeals, savings, and transitional provisions. U.K.

(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F107

(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 M4 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) Where, in relation to any design the time for giving notice to the registrar under section fifty-nine of the M5 Patents and Designs Act 1907, expired before the commencement of this Act and the notice was not given, subsection (2) of section six of this Act shall not apply in relation to that design or any registration of that design.

(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 [F108 section 16(1) and section 17(2)(a) of the M6 Interpretation Act 1978], (which [F108 relate] to the effect of repeals).

Textual Amendments

F107 S. 48(1) repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), ss. 272, 303(2), Sch. 3 para. 36, Sch. 8

F108 Words substituted by virtue of Interpretation Act 1978 (c. 30), s. 25(2)

Marginal Citations

M4 1907 c. 29.

M5 1907 c. 29.

M6 1978 c. 30.

49 Short title and commencement. U.K.

(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 M7 Patents and Designs Act 1949.

Marginal Citations

M7 1949 c. 87.

SCHEDULES

Valid from 09/12/2001

[F109 SCHEDULE A1 U.K. Grounds for refusal of registration in relation to emblems etc.

Textual Amendments

F109 Sch. A1 (paras. 1-5) inserted (9.12.2001) by S.I. 2001/3949, reg. 3 (with transitional provisions in regs. 10-14)

Grounds for refusal in relation to certain emblems etc. U.K.

1 (1) A design shall be refused registration under this Act if it involves the use of—

(a) the Royal arms, or any of the principal armorial bearings of the Royal arms, or any insignia or device so nearly resembling the Royal arms or any such armorial bearing as to be likely to be mistaken for them or it;

(b) a representation of the Royal crown or any of the Royal flags;

(c) a representation of Her Majesty or any member of the Royal family, or any colourable imitation thereof; or

(d) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation;

unless it appears to the registrar that consent for such use has been given by or on behalf of Her Majesty or (as the case may be) the relevant member of the Royal family.

(2) A design shall be refused registration under this Act if it involves the use of—

(a) the national flag of the United Kingdom (commonly known as the Union Jack); or

(b) the flag of England, Wales, Scotland, Northern Ireland or the Isle of Man,

and it appears to the registrar that the use would be misleading or grossly offensive.

(3) A design shall be refused registration under this Act if it involves the use of—

(a) arms to which a person is entitled by virtue of a grant of arms by the Crown; or

(b) insignia so nearly resembling such arms as to be likely to be mistaken for them;

unless it appears to the registrar that consent for such use has been given by or on behalf of the person concerned and the use is not in any way contrary to the law of arms.

(4) A design shall be refused registration under this Act if it involves the use of a controlled representation within the meaning of the Olympic Symbol etc. (Protection) Act 1995 unless it appears to the registrar that—

(a) the application is made by the person for the time being appointed under section 1(2) of the Olympic Symbol etc. (Protection) Act 1995 (power of Secretary of State to appoint a person as the proprietor of the Olympics association right); or

(b) consent for such use has been given by or on behalf of the person mentioned in paragraph (a) above.

Grounds for refusal in relation to emblems etc. of Paris Convention countries U.K.

2 (1) A design shall be refused registration under this Act if it involves the use of the flag of a Paris Convention country unless—

(a) the authorisation of the competent authorities of that country has been given for the registration; or

(b) it appears to the registrar that the use of the flag in the manner proposed is permitted without such authorisation.

(2) A design shall be refused registration under this Act if it involves the use of the armorial bearings or any other state emblem of a Paris Convention country which is protected under the Paris Convention unless the authorisation of the competent authorities of that country has been given for the registration.

(3) A design shall be refused registration under this Act if—

(a) the design involves the use of an official sign or hallmark adopted by a Paris Convention country and indicating control and warranty;

(b) the sign or hallmark is protected under the Paris Convention; and

(c) the design could be applied to or incorporated in goods of the same, or a similar, kind as those in relation to which the sign or hallmark indicates control and warranty;

unless the authorisation of the competent authorities of that country has been given for the registration.

(4) The provisions of this paragraph as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.

(5) Nothing in this paragraph prevents the registration of a design on the application of a national of a country who is authorised to make use of a state emblem, or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country.

Grounds for refusal in relation to emblems etc. of certain international organisations U.K.

3 (1) This paragraph applies to—

(a) the armorial bearings, flags or other emblems; and

(b) the abbreviations and names,

of international intergovernmental organisations of which one or more Paris Convention countries are members.

(2) A design shall be refused registration under this Act if it involves the use of any such emblem, abbreviation or name which is protected under the Paris Convention unless—

(a) the authorisation of the international organisation concerned has been given for the registration; or

(b) it appears to the registrar that the use of the emblem, abbreviation or name in the manner proposed—

(i) is not such as to suggest to the public that a connection exists between the organisation and the design; or

(ii) is not likely to mislead the public as to the existence of a connection between the user and the organisation.

(3) The provisions of this paragraph as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.

(4) Nothing in this paragraph affects the rights of a person whosebona fide use of the design in question began before 4th January 1962 (when the relevant provisions of the Paris Convention entered into force in relation to the United Kingdom).

Paragraphs 2 and 3: supplementary U.K.

4 (1) For the purposes of paragraph 2 above state emblems of a Paris Convention country (other than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris Convention only if, or to the extent that— U.K.

(a) the country in question has notified the United Kingdom in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, sign or hallmark;

(b) the notification remains in force; and

(c) the United Kingdom has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn.

(2) For the purposes of paragraph 3 above the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention only if, or to the extent that—

(a) the organisation in question has notified the United Kingdom in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, abbreviation or name;

(b) the notification remains in force; and

(c) the United Kingdom has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn.

(3) Notification under Article 6ter(3) of the Paris Convention shall have effect only in relation to applications for the registration of designs made more than two months after the receipt of the notification.

Interpretation U.K.

5 U.K. In this Schedule—

• “a Paris Convention country” means a country, other than the United Kingdom, which is a party to the Paris Convention; and

• “the Paris Convention” means the Paris Convention for the Protection of Industrial Property of 20th March 1883.]

Section 12.

FIRST SCHEDULE U.K. Provisions as to the use of Registered Designs for the services of the Crown and as to the Rights of Third Parties in respect of such use

Use of registered designs for services of the Crown. U.K.

1 (1) Notwithstanding anything in this Act, any Government department, and any person authorised in writing by a Government department, may use any registered design for the services of the Crown in accordance with the following provisions of this paragraph.

(2) If and so far as the design has before the date of registration thereof been duly recorded by or applied by or on behalf of a Government department otherwise than in consequence of the communication of the design directly or indirectly by the registered proprietor or any person from whom he derives title, any use of the design by virtue of this paragraph may be made free of any royalty or other payment to the registered proprietor.

(3) If and so far as the design has not been so recorded or applied as aforesaid, any use of the design made by virtue of this paragraph at any time after the date of registration thereof, or in consequence of any such communication as aforesaid, shall be made upon such terms as may be agreed upon, either before or after the use, between the Government department and the registered proprietor with the approval of the Treasury, or as may in default of agreement be determined by the court on a reference under paragraph 3 of this Schedule.

(4) The authority of a Government department in respect of a design may be given under this paragraph either before or after the design is registered and either before or after the acts in respect of which the authority is given are done, and may be given to any person whether or not he is authorised directly or indirectly by the registered proprietor to use the design.

(5) Where any use of a design is made by or with the authority of a Government department under this paragraph, then, unless it appears to the department that it would be contrary to the public interest so to do, the department shall notify the registered proprietor as soon as practicable after the use is begun, and furnish him with such information as to the extent of the use as he may from time to time require.

[F110 (6) For the purposes of this and the next following paragraph “the services of the Crown” shall be deemed to include—

(a) the supply to the government of any country outside the United Kingdom, in pursuance of an agreement or arrangement between Her Majesty’s Government in the United Kingdom and the government of that country, of articles required—

(i) for the defence of that country; or

(ii) for the defence of any other country whose government is party to any agreement or arrangement with Her Majesty’s said Government in respect of defence matters;

(b) the supply to the United Nations, or to the government of any country belonging to that organisation, in pursuance of an agreement or arrangement between Her Majesty’s Government and that organisation or government, of articles required for any armed forces operating in pursuance of a resolution of that organisation or any organ of that organisation;

and the power of a Government department or a person authorised by a Government department under this paragraph to use a design shall include power to sell to any such government or to the said organisation any articles the supply of which is authorised by this sub-paragraph, and to sell to any person any articles made in the exercise of the powers conferred by this paragraph which are no longer required for the purpose for which they were made.]

(7) The purchaser of any articles sold in the exercise of powers conferred by this paragraph, and any person claiming through him, shall have power to deal with them in the same manner as if the rights in the registered design were held on behalf of His Majesty.

Textual Amendments

F110 Para. 1(6) substituted by Defence Contracts Act 1958 (c. 38), s. 1(1)(4)

Modifications etc. (not altering text)

C9 Paras. 1?3 extended by S.I. 1965/1536, Sch. 3

C10 Para. 1(3) modified by Atomic Energy Authority (Weapons Group) Act 1973 (c. 4), s. 5(2)

Rights of third parties in respect of Crown use. U.K.

2 (1) In relation to any use of a registered design, or a design in respect of which an application for registration is pending, made for the services of the Crown—

(a) by a Government department or a person authorised by a Government department under the last foregoing paragraph; or

(b) by the registered proprietor or applicant for registration to the order of a Government department,

the provisions of any licence, assignment or agreement made, whether before or after the commencement of this Act, between the registered proprietor or applicant for registration or any person who derives title from him or from whom he derives title and any person other than a Government department shall be of no effect so far as those provisions restrict or regulate the use of the design, or any model, document or information relating thereto, or provide for the making of payments in respect of any such use, or calculated by reference thereto; and the reproduction or publication of any model or document in connection with the said use shall not be deemed to be an infringement of any copyright [F111 or design right] subsisting in the model or document.

(2) Where an exclusive licence granted otherwise than for royalties or other benefits determined by reference to the use of the design is in force under the registered design then—

(a) in relation to any use of the design which, but for the provisions of this and the last foregoing paragraph, would constitute an infringement of the rights of the licensee, sub-paragraph (3) of the last foregoing paragraph shall have effect as if for the reference to the registered proprietor there were substituted a reference to the licensee; and

(b) in relation to any use of the design by the licensee by virtue of an authority given under the last foregoing paragraph, that paragraph shall have effect as if the said sub-paragraph (3) were omitted.

(3) Subject to the provisions of the last foregoing sub-paragraph, where the registered design or the right to apply for or obtain registration of the design has been assigned to the registered proprietor in consideration of royalties or other benefits determined by reference to the use of the design, then—

(a) in relation to any use of the design by virtue of paragraph 1 of this Schedule, sub-paragraph (3) of that paragraph shall have effect as if the reference to the registered proprietor included a reference to the assignor, and any sum payable by virtue of that sub-paragraph shall be divided between the registered proprietor and the assignor in such proportion as may be agreed upon between them or as may in default of agreement be determined by the court on a reference under the next following paragraph; and

(b) in relation to any use of the design made for the services of the Crown by the registered proprietor to the order of a Government department, sub-paragraph (3) of paragraph 1 of this Schedule shall have effect as if that use were made by virtue of an authority given under that paragraph.

(4) Where, under sub-paragraph (3) of paragraph 1 of this Schedule, payments are required to be made by a Government department to a registered proprietor in respect of any use of a design, any person being the holder of an exclusive licence under the registered design (not being such a licence as is mentioned in sub-paragraph (2) of this paragraph) authorising him to make that use of the design shall be entitled to recover from the registered proprietor such part (if any) of those payments as may be agreed upon between that person and the registered proprietor, or as may in default of agreement be determined by the court under the next following paragraph to be just having regard to any expenditure incurred by that person—

(a) in developing the said design; or

(b) in making payments to the registered proprietor, other than royalties or other payments determined by reference to the use of the design, in consideration of the licence;

and if, at any time before the amount of any such payment has been agreed upon between the Government department and the registered proprietor, that person gives notice in writing of his interest to the department, any agreement as to the amount of that payment shall be of no effect unless it is made with his consent.

(5) In this paragraph “exclusive licence” means a licence from a registered proprietor which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the registered proprietor), any right in respect of the registered design.

Textual Amendments

F111 Words inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 37(2)

Modifications etc. (not altering text)

C11 Para. 2 amended by Defence Contracts Act 1958 (c. 38), s. 1(3)(4)

C12 Paras. 1-3 extended by S.I. 1965/1536, Sch. 3

C13 By S.I. 1987/1497, reg. 9(2) para. 2 Table B it is provided that Sch. 1 para. 2(1) shall apply as if there were inserted at the end thereof the words, “or of any topography right”

Compensation for loss of profit. U.K.

2A (1) Where Crown use is made of a registered design, the government department concerned shall pay—

(a) to the registered proprietor, or

(b) if there is an exclusive licence in force in respect of the design, to the exclusive licensee,

compensation for any loss resulting from his not being awarded a contract to supply the articles to which the design is applied.

(2) Compensation is payable only to the extent that such a contract could have been fulfilled from his existing manufacturing capacity; but is payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract.

(3) In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing capacity was underused.

(4) No compensation is payable in respect of any failure to secure contracts for the supply of articles to which the design is applied otherwise than for the services of the Crown.

(5) The amount payable under this paragraph shall, if not agreed between the registered proprietor or licensee and the government department concerned with the approval of the Treasury, be determined by the court on a reference under paragraph 3; and it is in addition to any amount payable under paragraph 1 or 2 of this Schedule.

(6) In this paragraph—

“Crown use”, in relation to a design, means the doing of anything by virtue of paragraph 1 which would otherwise be an infringement of the right in the design; and

“the government department concerned”, in relation to such use, means the government department by whom or on whose authority the act was done.

Reference of disputes as to Crown use. U.K.

3 [F112 (1) Any dispute as to—

(a) the exercise by a Government department, or a person authorised by a Government department, of the powers conferred by paragraph 1 of this Schedule,

(b) terms for the use of a design for the services of the Crown under that paragraph,

(c) the right of any person to receive any part of a payment made under paragraph 1(3), or

(d) the right of any person to receive a payment under paragraph 2A,

may be referred to the court by either party to the dispute.]

(2) In any proceedings under this paragraph to which a Government department are a party, the department may—

(a) if the registered proprietor is a party to the proceedings, apply for cancellation of the registration of the design upon any ground upon which the registration of a design may be cancelled on an application to the court under section twenty of this Act;

(b) in any case, put in issue the validity of the registration of the design without applying for its cancellation.

(3) If in such proceedings as aforesaid any question arises whether a design has been recorded or applied as mentioned in paragraph 1 of this Schedule, and the disclosure of any document recording the design, or of any evidence of the application thereof, would in the opinion of the department be prejudicial to the public interest, the disclosure may be made confidentially to counsel for the other party or to an independent expert mutually agreed upon.

(4) In determining under this paragraph any dispute between a Government department and any person as to terms for the use of a design for the services of the Crown, the court shall have regard to any benefit or compensation which that person or any person from whom he derives title may have received, or may be entitled to receive, directly or indirectly from any Government department in respect of the design in question.

(5) In any proceedings under this paragraph the court may at any time order the whole proceedings or any question or issue of fact arising therein to be referred to a special or official referee or an arbitrator on such terms as the court may direct; and references to the court in the foregoing provisions of this paragraph shall be construed accordingly.

Textual Amendments

F112 Sch. 1 para. 3(1) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 271(2)

Modifications etc. (not altering text)

C14 Paras. 1-3 extended by S.I. 1965/1536, Sch. 3

C15 Sch. 1 para. 3(2)–(5) extended by British Telecommunications Act 1981 (c. 38, SIF 96), s. 88, Sch. 5 para. 20(2)

C16 Reference to official referee to be construed (E.W.) as reference to Circuit judge discharging functions of official referee: Courts Act 1971 (c. 23), s. 25(3)

Special provisions as to Crown use during emergency. U.K.

4 (1) During any period of emergency within the meaning of this paragraph, the powers exercisable in relation to a design by a Government department, or a person authorised by a Government department under paragraph 1 of this Schedule shall include power to use the design for any purpose which appears to the department necessary or expedient—

(a) for the efficient prosecution of any war in which His Majesty may be engaged;

(b) for the maintenance of supplies and services essential to the life of the community;

(c) for securing a sufficiency of supplies and services essential to the well-being of the community;

(d) for promoting the productivity of industry, commerce and agriculture;

(e) for fostering and directing exports and reducing imports, or imports of any classes, from all or any countries and for redressing the balance of trade;

(f) generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community; or

(g) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any part of His Majesty’s dominions or any foreign countries that are in grave distress as the result of war;

and any reference in this Schedule to the services of the Crown shall be construed as including a reference to the purposes aforesaid.

(2) In this paragraph the expression “period of emergency” means [F113 a period] beginning on such date as may be declared by Order in Council to be the commencement, and ending on such date as may be so declared to be the termination, of a period of emergency for the purposes of this paragraph.

[F114 (3) No Order in Council under this paragraph shall be submitted to Her Majesty unless a draft of it has been laid before and approved by a resolution of each House of Parliament.]

Textual Amendments

F113 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 37(4)

F114 Sch. 1 para. 4(3) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 37(5)

F115 SECOND SCHEDULEF115 U.K.

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Textual Amendments

F115 Sch. 2 repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A) ss. 272, 303(2), Sch. 3 para. 38, Sch. 8