The Registered Designs (Amendment) Rules 1999

Statutory Instruments

1999 No. 3196

DESIGNS

The Registered Designs (Amendment) Rules 1999

Made

29th November 1999

Laid before Parliament

30th November 1999

Coming into force

22nd December 1999

The Secretary of State, in exercise of the powers conferred upon him by sections 3(1), 17(1), (5) and (6), 18(1), 29, 31, 36(1) and (1A), 39(1) and 44(1) of the Registered Designs Act 1949(1) and after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 1992(2), hereby makes the following Rules:—

Citation, commencement and transitional

1.—(1) These Rules may be cited as the Registered Designs (Amendment) Rules 1999 and subject to paragraph (2) shall come into force on 22nd December 1999.

(2) Rules 12, 13 and 14 of these Rules shall not apply to any proceeding commenced before the registrar before the entry into force of these Rules but shall apply to such proceedings as from 26th April 2000.

2.  The Registered Designs Rules 1995(3) shall be amended as follows.

3.  In rule 2 (interpretation), in the definition of “Journal”, for the words “Official Journal (Patents)” substitute the word “journal”.

4.  In rule 5 (size and presentation of documents), after the word “paper” in the third line for the remainder of the rule substitute “of a size approximately A4 and on one side only”.

5.  In rule 17 (supply of representations and specimens), for the word “four” where it appears in the second and third lines, substitute the word “two”.

6.  In rule 18 (representations and specimens for sets of articles), for the word “five” where it appears in the second and third lines, substitute the word “two”.

7.  For rule 19 (size and presentation of representations) substitute—

“19.   Each representation of the design, whether to be applied to a single article or to a set of articles, shall:

(a) be upon strong paper of approximately A4 size;

(b) appear on one side only of the paper;

(c) have the figure or figures, wherever possible, placed in an upright position on the sheet and each figure designated appropriately (e.g. perspective view, front view, side view, plan or otherwise); and

(d) bear on the first sheet the name of the applicant and the number of sheets comprising the representation and the consecutive number of each sheet (e.g. Page 1 of 3, Page 2 of 3, Page 3 of 3 etc.).”.

8.  In rule 23 (repeating surface patterns) after the word “width” omit the words “and shall not be of less size than 180 mm by 130 mm”.

9.  In rule 28(2) (copies and translations) after the word “translation” insert “of such parts” and again after the word “thereof” insert the words “, as the registrar directs as necessary,”.

10.  In rule 32 (form of certificate), for the words “be in the form set out in Schedule 2 to these Rules” substitute the words “include the name of the registered proprietor and date of registration”.

11.  In rule 38(2) (extensions for further periods of five years), the words “accompanied by Designs Form 9A, duly completed” are omitted.

12.  In rule 48 (exercise of discretionary powers of registrar)—

(a) in paragraph (2), for the words “that party consents to shorter notice” substitute the words “he considers a different period is appropriate;”

(b) after paragraph (2), insert—

“(3) At any stage of any proceedings before the registrar, he may direct that the party or parties to the proceedings attend a case management conference at which he may give such directions as he may think fit with regard to the management of the proceedings. The registrar shall give the party or parties at least fourteen days notice of the date of the case management conference.

(4) Before hearing any party or parties that desire to be heard, the registrar may direct that the party or parties to any proceedings attend a pre-hearing review at which he may give such directions as to the management of the hearing as he may think fit. The registrar shall give the party or parties at least fourteen days notice of the date of the pre-hearing review.”.

13.  In rule 57(1) (procedure for hearing) after the word “thereof” insert the words “unless he considers a different period is appropriate”.

14.  In rule 59 (application to settle terms of licence of right)—

(a) in paragraph (3), after the word “above” insert the words “, or such other period as the registrar may specify,”;

(b) in paragraph (4), after the word “objection” insert the words “, or such other period as the registrar may specify,”.

15.  In rule 62 (evidence)—

(a) in paragraph (1) after the words “statutory declaration” insert the words “, witness statement”;

(b) in paragraph (2) after the word “affidavit” insert the words “, witness statement”;

(c) after paragraph (4) insert—

“(5) The registrar may give a direction as he thinks fit in any particular case that evidence shall be given by affidavit or statutory declaration instead of or in addition to a witness statement.

(6) Where in proceedings before the registrar, a party adduces evidence of a statement made by a person otherwise than while giving oral evidence in the proceedings and does not call that person as a witness, the registrar may, if he thinks fit, permit any other party to the proceedings to call that person as a witness and cross-examine him on the statement as if he had been called by the first-mentioned party and as if the statement were his evidence in chief.”.

16.  In rule 63 (form and content of statutory declaration or affidavit)—

(a) in the heading after the word “declaration” insert the words “, witness statement”;

(b) in paragraph (1) after the word “declarations” insert the words “, witness statements”;

(c) in paragraph (2) after the word “declaration” insert the words “, witness statement”.

17.  After rule 64 (making and subscription of statutory declaration or affidavit) insert—

“Making of witness statement

64A.   —Any witness statement filed under these Rules shall—

(a) be a written statement signed and dated by a person which contains the evidence which the person signing it would be allowed to give orally; and

(b) include a statement by the intended witness that he believes the facts in it are true.”.

18.  In rule 67 (inspection by public), for the words “between the hours of ten a.m. and four p.m.” substitute “between the hours of nine a.m. and five p.m.”.

19.  In rule 74 (hours of business), for the words “and at four p.m. for all other business” substitute “and at five p.m. for all other business”.

20.  In rule 75 (excluded days), after paragraph (2) insert—

“(3) Tuesday 4th January 2000 shall be an excluded day for all purposes under the Act.”.

21.  Schedule 2 is omitted.

Kim Howells,

Parliamentary Under Secretary of State for Consumers and Corporate Affairs,

Department of Trade and Industry

29th November 1999

Explanatory Note

(This note is not part of the Rules)

These Rules amend the Registered Designs Rules 1995 (S.I. 1995/2912). In addition to minor and drafting amendments, these Rules:—

(a) make provision for the particular size and number of documents and representations of designs filed before the registrar (rules 4, 5, 6, 7, 8 and 9);

(b) make provision for the form of certificate and omit Schedule 2 (rules 10 and 21);

(c) make provision for the registrar to vary time limits where he considers it appropriate and to call case management conferences or set pre-hearing reviews in relation to the exercise of his discretionary powers (rules 12, 13 and 14);

(d) make provision for the giving of evidence by witness statement and the calling of witnesses in certain circumstances (rules 15, 16 and 17);

(e) extend the hours during which public inspection of the register is permitted, to between 9 a.m. and 5 p.m. on business days (rule 18);

(f) extend the hours for certain transactions of business of the Patent Office from 4 p.m. to 5 p.m. (rule 19);

(g) make Tuesday 4th January 2000 an excluded day; that is to say a day on which the Patent Office is closed for the purposes of the transaction by the public of business with that Office (rule 20); and

(h) omit the requirement to use Designs Form 9A in relation to extensions for further periods of five years (rule 11).

These Rules take effect on 22nd December 1999 save that Rules 12, 13 and 14 shall not apply to any proceeding already begun before the registrar at the time of entry into force of these Rules but that they should apply to such proceedings after 26th April 2000.

A Regulatory Impact assessment is available, copies of which have been placed in the libraries of both Houses of Parliament. Copies of the assessment are also available from the Patents and Designs Directorate, Concept House, Cardiff Road, Newport NP9 1RH.

(1)

1949 c. 88.

(2)

1992 c. 53.

(3)

S.I. 1995/2912.