Textual Amendments
F1Schs. 1A, 1B inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 3 para. 3 (with Sch. 5 Pt. 1) (as amended by S.I. 2020/1050, regs. 1(2), 23); 2020 c. 1, Sch. 5 para. 1(1)
Textual Amendments
F2Words in Sch. 1B substituted in earlier amending provision S.I. 2019/638, Sch. 3 para. 3 (31.12.2020) by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 21(d)(i)
13(1)This Part applies to a design which met the requirements set out in paragraph 1(2)(b) to (d) in respect of which the conditions in sub-paragraph (2) are satisfied (an “expired international design”).
(2)The conditions referred to in sub-paragraph (1) are that—
(a)immediately before the transitional period, the design was the subject of an international registration which designated the European Union,
(b)the international registration expired during the transitional period (such that the design did not fall within paragraph 1(1)), and
(c)the renewal of the international registration would have been capable of being effected for the European Union in accordance with Article 17 of the Geneva Act for at least one further period of five years had a request for renewal been made in accordance with Article 17(2) prior to that expiry.
(3)An expired international design is to be treated as if it were a protected international registered design (EU).
(4)The provisions of Part 1 of this Schedule apply to an expired international design as they apply to a protected international registered design (EU) subject to the provisions of this Part of the Schedule.
(5)Notwithstanding the entry in the register of designs (under paragraph 2, as applied by sub-paragraph (4)) of a re-registered international design which derives from an expired international design, the right in the re-registered international design is expired until it is extended in accordance with paragraph 14 (or the re-registered design is removed from the register in accordance with paragraph 14(3)).
(6)In this paragraph, “transitional period” means the period of six months ending with [F2IP completion day].
14(1)Where within the period beginning with [F2IP completion day] and ending with the end of the relevant period—
(a)the international registration to which an expired international design was subject is renewed in accordance with Article 17(2) of the Geneva Act,
(b)the renewal has effect in respect of the European Union and the expired international design, and
(c)the holder of that international registration notifies the registrar of such renewal, the registrar must, as soon as reasonably practicable after the date of notification, record in the register of designs the extension of the period for which subsists the right in the re-registered international design which derives from the expired international design.
(2)Where the period for which the right in a re-registered international design subsists is extended under sub-paragraph (1), the right is to be treated as if it had never expired, with the result that—
(a)anything done under or in relation to the right in the period beginning with [F2IP completion day] and ending with the extension under sub-paragraph (1) is to be treated as valid,
(b)an act which would have constituted an infringement of the right if it had not expired is to 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 is to be treated as such use.
(3)If within the period referred to in sub-paragraph (1) the holder fails to notify the registrar in accordance with sub-paragraph (1)(c)—
(a)the registrar must remove from the register of designs the re-registered international design which derives from the expired international design, and
(b)the re-registered international design ceases with effect from [F2IP completion day] to be treated as if it had been registered under this Act.
(4)In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which [F2IP completion day] falls.]