The Community Design Regulations 2005

Introductory and interpretation

1.—(1) These Regulations may be cited as the Community Design Regulations 2005 and shall come into force on 1st October 2005.

(2) In these Regulations—

“the Community Design Regulation” means Council Regulation (EC) 6/2002 of 12th December 2001 on Community Designs; and

“Community design”, “registered Community design” and “unregistered Community design” have the same meanings as in the Community Design Regulation.

Remedy for groundless threats of infringement proceedings

2.—(1) Where any person (whether entitled to or interested in a Community design or not) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of a Community design, any person aggrieved thereby may bring an action against him for any such relief as is mentioned in paragraph (2).

(2) Subject to paragraphs (3) and (4), the claimant shall be entitled to the following relief—

(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 by reason of the threats.

(3) If the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a registered Community design the claimant shall be entitled to the relief claimed only if he shows that the registration is invalid.

(4) If the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of an unregistered Community design the claimant shall not be entitled to the relief claimed.

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

(6) Mere notification that a design is—

(a) a registered Community design; or

(b) protected as an unregistered Community design,

does not constitute a threat of proceedings for the purpose of this regulation.

(7) In the application of this regulation—

(a) to Scotland, the expression “injunction” shall be construed as “interdict”, “claimant” shall be construed as “pursuer”, and “defendant” shall be construed as “defender”;

(b) to Northern Ireland, any reference to “claimant” includes a reference to a plaintiff.

Falsely representing a design as a registered Community design

3.—(1) It is an offence for a person falsely to represent that a design applied to, or incorporated in, any product sold by him is a registered Community design.

(2) It is an offence for a person, after a registered Community design has expired, to represent (expressly or by implication) that a design applied to, or incorporated in, any product sold is still registered in the manner provided for in the Community Design Regulation.

(3) A person guilty of an offence under paragraph (1) is liable on summary conviction to a fine not exceeding level 3 on the standard scale.

(4) A person guilty of an offence under paragraph (2) is liable on summary conviction to a fine not exceeding level 1 on the standard scale.

Privilege for communications with those on the special list of professional design representatives

4.—(1) This regulation applies to communications as to any matter relating to the protection of any design.

(2) Any such communication—

(a) between a person and his professional designs representative, or

(b) for the purposes of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his professional designs representative,

is privileged from, or in Scotland protected against, disclosure in legal proceedings in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his solicitor.

(3) In paragraph (2) “professional designs representative” means a person who is on the special list of professional representatives for design matters referred to in Article 78 of the Community Design Regulation.

Use of Community design for services of the Crown

5.  The provisions of the Schedule to these Regulations shall have effect with respect to the use of registered Community designs and unregistered Community designs for the services of the Crown and the rights of third parties in respect of such use.

Amendment of section 35 of the Registered Designs Act 1949

6.  In section 35 of the Registered Designs Act 1949(1) (fine for falsely representing a design as registered), after subsection (2) there shall be inserted—

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

(a) of the word “registered”, or

(b) of any other word or symbol importing a reference (express or implied) to registration,

shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in the United Kingdom and that the design is in fact so registered.”.

Gerry Sutcliffe

Parliamentary Under Secretary of State for Employment Relations and Consumer Affairs

Department of Trade and Industry

15th August 2005