Office of Public Sector Information
PART III continued CHAPTER III continued
(4) The reference to the supply of articles for “health service purposes” are to their supply for the purpose of providing—
(a) pharmaceutical services,
(b) general medical services, or
(c) general dental services,
that is, services of those kinds under Part II of the [1977 c. 49.] National Health Service Act 1977, Part II of the [1978 c. 29.] National Health Service (Scotland) Act 1978 or the corresponding provisions of the law in force in Northern Ireland.
(5) In this Part—
“Crown use”, in relation to a design, means the doing of anything by virtue of this section which would otherwise be an infringement of design 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.
(6) The authority of a government department in respect of Crown use of a design may be given to a person either before or after the use and whether or not he is authorised, directly or indirectly, by the design right owner to do anything in relation to the design.
(7) A person acquiring anything sold in the exercise of powers conferred by this section, and any person claiming under him, may deal with it in the same manner as if the design right were held on behalf of the Crown.
(1) Where Crown use is made of a design, the government department concerned shall—
(a) notify the design right owner as soon as practicable, and
(b) give him such information as to the extent of the use as he may from time to time require,
unless it appears to the department that it would be contrary to the public interest to do so or the identity of the design right owner cannot be ascertained on reasonable inquiry.
(2) Crown use of a design shall be on such terms as, either before or after the use, are agreed between the government department concerned and the design right owner with the approval of the Treasury or, in default of agreement, are determined by the court.
In the application of this subsection to Northern Ireland the reference to the Treasury shall, where the government department referred to in that subsection is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel.
(3) Where the identity of the design right owner cannot be ascertained on reasonable inquiry, the government department concerned may apply to the court who may order that no royalty or other sum shall be payable in respect of Crown use of the design until the owner agrees terms with the department or refers the matter to the court for determination.
(1) The provisions of any licence, assignment or agreement made between the design right owner (or anyone deriving title from him or from whom he derives title) and any person other than a government department are of no effect in relation to Crown use of a design, or any act incidental to Crown use, so far as they—
(a) restrict or regulate anything done in relation to the design, or the use of any model, document or other information relating to it, or
(b) provide for the making of payments in respect of, or calculated by reference to such use;
and the copying or issuing to the public of copies of any such model or document in connection with the thing done, or any such use, shall be deemed not to be an infringement of any copyright in the model or document.
(2) Subsection (1) shall not be construed as authorising the disclosure of any such model, document or information in contravention of the licence, assignment or agreement.
(3) Where an exclusive licence is in force in respect of the design—
(a) if the licence was granted for royalties—
(i) any agreement between the design right owner and a government department under section 241 (settlement of terms for Crown use) requires the consent of the licensee, and
(ii) the licensee is entitled to recover from the design right owner such part of the payment for Crown use as may be agreed between them or, in default of agreement, determined by the court;
(b) if the licence was granted otherwise than for royalties—
(i) section 241 applies in relation to anything done which but for section 240 (Crown use) and subsection (1) above would be an infringement of the rights of the licensee with the substitution for references to the design right owner of references to the licensee, and
(ii) section 241 does not apply in relation to anything done by the licensee by virtue of an authority given under section 240.
(4) Where the design right has been assigned to the design right owner in consideration of royalties—
(a) section 241 applies in relation to Crown use of the design as if the references to the design right owner included the assignor, and any payment for Crown use shall be divided between them in such proportion as may be agreed or, in default of agreement, determined by the court; and
(b) section 241 applies in relation to any act incidental to Crown use as it applies in relation to Crown use of the design.
(5) Where any model, document or other information relating to a design is used in connection with Crown use of the design, or any act incidental to Crown use, section 241 applies to the use of the model, document or other information with the substitution for the references to the design right owner of references to the person entitled to the benefit of any provision of an agreement rendered inoperative by subsection (1) above.
(6) In this section—
“act incidental to Crown use” means anything done for the services of the Crown to the order of a government department by the design right owner in respect of a design;
“payment for Crown use” means such amount as is payable by the government department concerned by virtue of section 241; and
“royalties” includes any benefit determined by reference to the use of the design.
(1) Where Crown use is made of a design, the government department concerned shall pay—
(a) to the design right owner, 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 made to the design.
(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 under-used.
(4) No compensation is payable in respect of any failure to secure contracts for the supply of articles made to the design otherwise than for the services of the Crown.
(5) The amount payable shall, if not agreed between the design right owner or licensee and the government department concerned with the approval of the Treasury, be determined by the court on a reference under section 252; and it is in addition to any amount payable under section 241 or 242.
(6) In the application of this section to Northern Ireland, the reference in subsection (5) to the Treasury shall, where the government department concerned is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel.
(1) During a period of emergency the powers exercisable in relation to a design by virtue of section 240 (Crown use) include power to do any act which would otherwise be an infringement of design right for any purpose which appears to the government department concerned necessary or expedient—
(a) for the efficient prosecution of any war in which Her 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 country outside the United Kingdom which is in grave distress as the result of war.
(2) References in this Part to the services of the Crown include, as respects a period of emergency, those purposes; and references to “Crown use” include any act which would apart from this section be an infringement of design right.
(3) In this section “period of emergency” means a period beginning with such date as may be declared by Order in Council to be the beginning, and ending with such date as may be so declared to be the end, of a period of emergency for the purposes of this section.
(4) No Order in Council under this section 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.
(1) The Secretary of State may if it appears to him necessary in order to—
(a) comply with an international obligation of the United Kingdom, or
(b) secure or maintain reciprocal protection for British designs in other countries,
by order provide that acts of a description specified in the order do not infringe design right.
(2) An order may make different provision for different descriptions of design or article.
(3) An order shall be made by statutory instrument and no order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.
(1) A party to a dispute as to any of the following matters may refer the dispute to the comptroller for his decision—
(a) the subsistence of design right,
(b) the term of design right, or
(c) the identity of the person in whom design right first vested;
and the comptroller’s decision on the reference is binding on the parties to the dispute.
(2) No other court or tribunal shall decide any such matter except—
(a) on a reference or appeal from the comptroller,
(b) in infringement or other proceedings in which the issue arises incidentally, or
(c) in proceedings brought with the agreement of the parties or the leave of the comptroller.
(3) The comptroller has jurisdiction to decide any incidental question of fact or law arising in the course of a reference under this section.
(1) A person requiring a licence which is available as of right by virtue of—
(a) section 237 (licences available in last five years of design right), or
(b) an order under section 238 (licences made available in the public interest),
may apply to the comptroller to settle the terms of the licence.
(2) No application for the settlement of the terms of a licence available by virtue of section 237 may be made earlier than one year before the earliest date on which the licence may take effect under that section.
(3) The terms of a licence settled by the comptroller shall authorise the licensee to do—
(a) in the case of licence available by virtue of section 237, everything which would be an infringement of the design right in the absence of a licence;
(b) in the case of a licence available by virtue of section 238, everything in respect of which a licence is so available.
(4) In settling the terms of a licence the comptroller shall have regard to such factors as may be prescribed by the Secretary of State by order made by statutory instrument.
(5) No such order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.
(6) Where the terms of a licence are settled by the comptroller, the licence has effect—
(a) in the case of an application in respect of a licence available by virtue of section 237 made before the earliest date on which the licence may take effect under that section, from that date;
(b) in any other case, from the date on which the application to the comptroller was made.
(1) This section applies where a person making an application under section 247 (settlement of terms of licence of right) is unable on reasonable inquiry to discover the identity of the design right owner.
(2) The comptroller may in settling the terms of the licence order that the licence shall be free of any obligation as to royalties or other payments.
(3) If such an order is made the design right owner may apply to the comptroller to vary the terms of the licence with effect from the date on which his application is made.
(4) If the terms of a licence are settled by the comptroller and it is subsequently established that a licence was not available as of right, the licensee shall not be liable in damages for, or for an account of profits in respect of, anything done before he was aware of any claim by the design right owner that a licence was not available.
(1) An appeal lies from any decision of the comptroller under section 247 or 248 (settlement of terms of licence of right) to the Appeal Tribunal constituted under section 28 of the [1949 c. 88.] Registered Designs Act 1949.
(2) Section 28 of that Act applies to appeals from the comptroller under this section as it applies to appeals from the registrar under that Act; but rules made under that section may make different provision for appeals under this section.
(1) The Secretary of State may make rules for regulating the procedure to be followed in connection with any proceeding before the comptroller under this Part.
(2) Rules may, in particular, make provision—
(a) prescribing forms;
(b) requiring fees to be paid;
(c) authorising the rectification of irregularities of procedure;
(d) regulating the mode of giving evidence and empowering the comptroller to compel the attendance of witnesses and the discovery of and production of documents;
(e) providing for the appointment of advisers to assist the comptroller in proceedings before him;
(f) prescribing time limits for doing anything required to be done (and providing for the alteration of any such limit); and
(g) empowering the comptroller to award costs and to direct how, to what party and from what parties, costs are to be paid.
(3) Rules prescribing fees require the consent of the Treasury.
(4) The remuneration of an adviser appointed to assist the comptroller shall be determined by the Secretary of State with the consent of the Treasury and shall be defrayed out of money provided by Parliament.
(5) Rules shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.
(1) In any proceedings before him under section 246 (reference of matter relating to design right), the comptroller may at any time order the whole proceedings or any question or issue (whether of fact or law) to be referred, on such terms as he may direct, to the High Court or, in Scotland, the Court of Session.
(2) The comptroller shall make such an order if the parties to the proceedings agree that he should do so.
(3) On a reference under this section the court may exercise any power available to the comptroller by virtue of this Part as respects the matter referred to it and, following its determination, may refer any matter back to the comptroller.
(4) An appeal lies from any decision of the comptroller in proceedings before him under section 246 (decisions on matters relating to design right) to the High Court or, in Scotland, the Court of Session.
(1) A dispute as to any matter which falls to be determined by the court in default of agreement under—
(a) section 241 (settlement of terms for Crown use),
(b) section 242 (rights of third parties in case of Crown use), or
(c) section 243 (Crown use: compensation for loss of profit),
may be referred to the court by any party to the dispute.
(2) In determining a dispute between a government department and any person as to the terms for Crown use of a design the court shall have regard to—
(a) any sums which that person or a person from whom he derives title has received or is entitled to receive, directly or indirectly, from any government department in respect of the design; and
(b) whether that person or a person from whom he derives title has in the court’s opinion without reasonable cause failed to comply with a request of the department for the use of the design on reasonable terms.
(3) One of two or more joint owners of design right may, without the concurrence of the others, refer a dispute to the court under this section, but shall not do so unless the others are made parties; and none of those others is liable for any costs unless he takes part in the proceedings.
(4) Where the consent of an exclusive licensee is required by section 242(3)(a)(i) to the settlement by agreement of the terms for Crown use of a design, a determination by the court of the amount of any payment to be made for such use is of no effect unless the licensee has been notified of the reference and given an opportunity to be heard.
(5) On the reference of a dispute as to the amount recoverable as mentioned in section 242(3)(a)(ii) (right of exclusive licensee to recover part of amount payable to design right owner) the court shall determine what is just having regard to any expenditure incurred by the licensee—
(a) in developing the design, or
(b) in making payments to the design right owner in consideration of the licence (other than royalties or other payments determined by reference to the use of the design).
(6) In this section “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 this Act,
(b) in Scotland, the Court of Session, and
(c) in Northern Ireland, the High Court.
(1) Where a person threatens another person with proceedings for infringement of design right, a person aggrieved by the threats may bring an action against him claiming—
(a) a declaration to the effect that the threats are unjustifiable;
(b) an injunction against the continuance of the threats;
(c) damages in respect of any loss which he has sustained by the threats.
(2) If the plaintiff proves that the threats were made and that he is a person aggrieved by them, he is entitled to the relief claimed unless the defendant shows that the acts in respect of which proceedings were threatened did constitute, or if done would have constituted, an infringement of the design right concerned.
(3) Proceedings may not be brought under this section in respect of a threat to bring proceedings for an infringement alleged to consist of making or importing anything.
(4) Mere notification that a design is protected by design right does not constitute a threat of proceedings for the purposes of this section.
(1) A person who has a licence in respect of a design by virtue of section 237 or 238 (licences of right) shall not, without the consent of the design right owner—
(a) apply to goods which he is marketing, or proposes to market, in reliance on that licence a trade description indicating that he is the licensee of the design right owner, or
(b) use any such trade description in an advertisement in relation to such goods.
(2) A contravention of subsection (1) is actionable by the design right owner.
(3) In this section “trade description”, the reference to applying a trade description to goods and “advertisement” have the same meaning as in the [1968 c. 29.] Trade Descriptions Act 1968.
(1) This Part extends to England and Wales, Scotland and Northern Ireland.
(2) Her Majesty may by Order in Council direct that this Part shall extend, subject to such exceptions and modifications as may be specified in the Order, to—
(a) any of the Channel Islands,
(b) the Isle of Man, or
(c) any colony.
(3) That power includes power to extend, subject to such exceptions and modifications as may be specified in the Order, any Order in Council made under section 221 (further provision as to qualification for design right protection) or section 256 (countries enjoying reciprocal protection).
(4) The legislature of a country to which this Part has been extended may modify or add to the provisions of this Part, in their operation as part of the law of that country, as the legislature may consider necessary to adapt the provisions to the circumstances of that country; but not so as to deny design right protection in a case where it would otherwise exist.
(5) Where a country to which this Part extends ceases to be a colony of the United Kingdom, it shall continue to be treated as such a country for the purposes of this Part until—
(a) an Order in Council is made under section 256 designating it as a country enjoying reciprocal protection, or
(b) an Order in Council is made declaring that it shall cease to be so treated by reason of the fact that the provisions of this Part as part of the law of that country have been amended or repealed.
(6) A statutory instrument containing an Order in Council under subsection (5)(b) shall be subject to annulment in pursuance of a resolution of either House of Parliament.
(1) Her Majesty may, if it appears to Her that the law of a country provides adequate protection for British designs, by Order in Council designate that country as one enjoying reciprocal protection under this Part.
(2) If the law of a country provides adequate protection only for certain classes of British design, or only for designs applied to certain classes of article, any Order designating that country shall contain provision limiting, to a corresponding extent, the protection afforded by this Part in relation to designs connected with that country.
(3) An Order under this section shall be subject to annulment in pursuance of a resolution of either House of Parliament.
(1) For the purposes of this Part the territorial waters of the United Kingdom shall be treated as part of the United Kingdom.
(2) This Part 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 [1964 c. 29.] Continental Shelf Act 1964.
(1) Where different persons are (whether in consequence of a partial assignment or otherwise) entitled to different aspects of design right in a work, the design right owner for any purpose of this Part is the person who is entitled to the right in the respect relevant for that purpose.
(2) Where design right (or any aspect of design right) is owned by more than one person jointly, references in this Part to the design right owner are to all the owners, so that, in particular, any requirement of the licence of the design right owner requires the licence of all of them.
(1) In this Part a “joint design” means a design produced by the collaboration of two or more designers in which the contribution of each is not distinct from that of the other or others.
(2) References in this Part to the designer of a design shall, except as otherwise provided, be construed in relation to a joint design as references to all the designers of the design.
(1) The provisions of this Part apply in relation to a kit, that is, a complete or substantially complete set of components intended to be assembled into an article, as they apply in relation to the assembled article.
(2) Subsection (1) does not affect the question whether design right subsists in any aspect of the design of the components of a kit as opposed to the design of the assembled article.
The requirement in the following provisions that an instrument be signed by or on behalf of a person is also satisfied in the case of a body corporate by the affixing of its seal—
section 222(3) (assignment of design right),
section 223(1) (assignment of future design right),
section 225(1) (grant of exclusive licence).
In the application of this Part to Scotland—
“account of profits” means accounting and payment of profits;
“accounts” means count, reckoning and payment;
“assignment” means assignation;
“costs” means expenses;
“defendant” means defender;
“delivery up” means delivery;
“injunction” means interdict;
“interlocutory relief” means interim remedy; and
“plaintiff” means pursuer.
(1) In this Part—
“British design” means a design which qualifies for design right protection by reason of a connection with the United Kingdom of the designer or the person by whom the design is commissioned or the designer is employed;
“business” includes a trade or profession;
“commission” means a commission for money or money’s worth;
“the comptroller” means the Comptroller-General of Patents, Designs and Trade Marks;
“computer-generated”, in relation to a design, means that the design is generated by computer in circumstances such that there is no human designer,
“country” includes any territory;
“the Crown” includes the Crown in right of Her Majesty’s Government in Northern Ireland;
“design document” means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise;
“employee”, “employment” and “employer” refer to employment under a contract of service or of apprenticeship;
“government department” includes a Northern Ireland department.
(2) References in this Part to “marketing”, in relation to an article, are to its being sold or let for hire, or offered or exposed for sale or hire, in the course of a business, and related expressions shall be construed accordingly; but no account shall be taken for the purposes of this Part of marketing which is merely colourable and not intended to satisfy the reasonable requirements of the public.
(3) References in this Part to an act being done in relation to an article for “commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business.
The following Table shows provisions defining or otherwise explaining expressions used in this Part (other than provisions defining or explaining an expression used only in the same section)—
| account of profits and accounts (in Scotland) | section 262 |
| assignment (in Scotland) | section 262 |
| British designs | section 263(1) |
| business | section 263(1) |
| commercial purposes | section 263(3) |
| commission | section 263(1) |
| the comptroller | section 263(1) |
| computer-generated | section 263(1) |
| costs (in Scotland) | section 262 |
| country | section 263(1) |
| the Crown | section 263(1) |
| Crown use | sections 240(5) and 244(2) |
| defendant (in Scotland) | section 262 |
| delivery up (in Scotland) | section 262 |
| design | section 213(2) |
| design document | section 263(1) |
| designer | sections 214 and 259(2) |
| design right | section 213(1) |
| design right owner | sections 234(2) and 258 |
| employee, employment and employer | section 263(1) |
| exclusive licence | section 225(1) |
| government department | section 263(1) |
| government department concerned (in relation to Crown use) | section 240(5) |
| infringing article | section 228 |
| injunction (in Scotland) | section 262 |
| interlocutory relief (in Scotland) | section 262 |
| joint design | section 259(1) |
| licence (of the design right owner) | sections 222(4), 223(3) and 258 |
| making articles to a design | section 226(2) |
| marketing (and related expressions) | section 263(2) |
| original | section 213(4) |
| plaintiff (in Scotland) | section 262 |
| qualifying individual | section 217(1) |
| qualifying person | sections 217(1) and (2) |
| signed | section 261 |
Copyright, Designs and Patents Act 1988