Office of Public Sector Information
SCHEDULE 3 continued
38 Schedule 2 to the Registered Designs Act 1949 (enactments repealed) is repealed.
Section 273.
1 Designs registrable under Act.
2 Proprietorship of designs.
3 Proceedings for registration.
4 Registration of same design in respect of other articles.
5 Provision for secrecy of certain designs.
6 Provisions as to confidential disclosure, &c.
7 Right given by registration.
8 Duration of right in registered design.
8A Restoration of lapsed right in design.
8B Effect of order for restoration of right.
9 Exemption of innocent infringer from liability for damages.
10 Compulsory licence in respect of registered design.
11 Cancellation of registration.
11A Powers exercisable for protection of the public interest.
11B Undertaking to take licence of right in infringement proceedings.
12 Use for services of the Crown.
13 Orders in Council as to convention countries.
14 Registration of design where application for protection in convention country has been made.
15 Extension of time for applications under s.14 in certain cases.
16 Protection of designs communicated under international agreements.
17 Register of designs.
18 Certificate of registration.
19 Registration of assignments, &c.
20 Rectification of register.
21 Power to correct clerical errors.
22 Inspection of registered designs.
23 Information as to existence of right in registered design.
24 ... ... ... ... ... ... ...
25 Certificate of contested validity of registration.
26 Remedy for groundless threats of infringement proceedings.
27 The court.
28 The Appeal Tribunal.
29 Exercise of discretionary powers of registrar.
30 Costs and security for costs.
31 Evidence before registrar.
32 ... ... ... ... ... ... ...
33 Offences under s.5.
34 Falsification of register, &c.
35 Fine for falsely representing a design as registered.
35A Offence by body corporate: liability of officers.
36 General power of Secretary of State to make rules, &c.
37 Provisions as to rules and Orders.
38 ... ... ... ... ... ... ...
39 Hours of business and excluded days.
40 Fees.
41 Service of notices, &c., by post.
42 Annual report of registrar.
43 Savings.
44 Interpretation.
45 Application to Scotland.
46 Application to Northern Ireland.
47 Application to Isle of Man.
47A Territorial waters and the continental shelf.
48 Repeals, savings and transitional provisions.
49 Short title and commencement.
Schedules:
Schedule 1—Provisions as to the use of registered designs for the services of the Crown and as to rights of third parties in respect of such use.
Schedule 2—... ... ... ... ... ... ...
An Act to consolidate certain enactments relating to registered designs.
[16th December 1949]
1 (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.
2 (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.
(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.
3 (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.
(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.
4 (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:
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.
5 (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 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.
(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 the Secretary of State, and thereupon the following provisions shall have effect, that is to say:—
(a) 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, 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, 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 the Secretary of State that the publication of the design would not, or would no longer, be prejudicial to the defence of the realm, 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.
... ... ... ...
6 (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 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.
(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.
7 (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.
8 (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 had 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.).
8A (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.
8B (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.
9 (1) In proceedings for the infringement of 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 the right in a registered design.
10 (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 (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..., 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.
(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 which 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.
11A (1) Where a report of the Monopolies and Mergers 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 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 effect 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 Monopolies and Mergers Commission was made.
Copyright, Designs and Patents Act 1988