35 Fine for falsely representing a design as registered.
(1) If any person falsely represents that a design applied to , or incorporated in, any product sold by him is registered . . ., he shall be liable on summary conviction to a fine not exceeding level 3 on the standard scale; and for the purposes of this provision a person who sells a product having stamped, engraved or impressed thereon or otherwise applied thereto the word “registered”, or any other word expressing or implying that the design applied to , or incorporated in, the product is registered, shall be deemed to represent that the design applied to , or incorporated in, the product is registered . . ..
(2) If any person, after the right in a registered design has expired, marks any product to which the design has been applied or in which it has been incorporated with the word “registered”, or any word or words implying that there is a subsisting right in the design under this Act, or causes any such product to be so marked, he shall be liable on summary conviction to a fine not exceeding level 1 on the standard scale
(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.
35ZA Offence of unauthorised copying etc. of design in course of business
(1) A person commits an offence if—
(a) in the course of a business, the person intentionally copies a registered design so as to make a product—
(i) exactly to that design, or
(ii) with features that differ only in immaterial details from that design, and
(b) the person does so—
(i) knowing, or having reason to believe, that the design is a registered design, and
(ii) without the consent of the registered proprietor of the design.
(2) Subsection (3) applies in relation to a product where a registered design has been intentionally copied so as to make the product—
(a) exactly to the design, or
(b) with features that differ only in immaterial details from the design.
(3) A person commits an offence if—
(a) in the course of a business, the person offers, puts on the market, imports, exports or uses the product, or stocks it for one or more of those purposes,
(b) the person does so without the consent of the registered proprietor of the design, and
(c) the person does so knowing, or having reason to believe, that—
(i) a design has been intentionally copied without the consent of the registered proprietor so as to make the product exactly to the design or with features that differ only in immaterial details from the design, and
(ii) the design is a registered design.
(4) It is a defence for a person charged with an offence under this section to show that the person reasonably believed that the registration of the design was invalid.
(5) It is also a defence for a person charged with an offence under this section to show that the person—
(a) did not infringe the right in the design, or
(b) reasonably believed that the person did not do so.
(6) The reference in subsection (3) to using a product in the course of a business does not include a reference to using it for a purpose which is merely incidental to the carrying on of the business.
(7) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(8) A person guilty of an offence under this section is liable—
(a) on conviction on indictment, to imprisonment for a term not exceeding ten years or to a fine or to both;
(b) on summary conviction in England and Wales or Northern Ireland, to imprisonment for a term not exceeding six months or to a fine not exceeding the statutory maximum or to both;
(c) on summary conviction in Scotland, to imprisonment for a term not exceeding 12 months or to a fine not exceeding the statutory maximum or to both.
(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(1A) For the investigatory powers available to a local weights and measures authority or the Department of Enterprise, Trade and Investment in Northern Ireland for the purposes of the enforcement of section 35ZA, see Schedule 5 to the Consumer Rights Act 2015.
(2) Any enactment which authorises the disclosure of information for the purpose of facilitating the enforcement of the Trade Descriptions Act 1968 applies—
(a) as if section 35ZA were a provision of that Act, and
(b) as if the functions of any person in relation to the enforcement of that section were functions under that Act.
(3) Nothing in this section is to be construed as authorising a local weights and measures authority to bring proceedings in Scotland.
35ZC Section 35ZA: forfeiture in England and Wales or Northern Ireland
(1) In England and Wales or Northern Ireland, a person who, in connection with the investigation or prosecution of an offence under section 35ZA, has come into the possession of relevant products or articles may apply under this section for an order for the forfeiture of the products or articles.
(2) “Relevant product” means a product which is made exactly to a registered design, or with features that differ only in immaterial details from a registered design, by copying that design intentionally.
(3) “Relevant article” means an article which is specifically designed or adapted for making copies of a registered design intentionally.
(4) An application under this section may be made—
(a) where proceedings have been brought in any court for an offence under section 35ZA relating to some or all of the products or articles, to that court;
(b) where no application for the forfeiture of the products or articles has been made under paragraph (a), by way of complaint to a magistrates' court.
(5) On an application under this section, the court may make an order for the forfeiture of products or articles only if it is satisfied that an offence under section 35ZA has been committed in relation to the products or articles.
(6) A court may infer for the purposes of this section that such an offence has been committed in relation to any products or articles if it is satisfied that such an offence has been committed in relation to products or articles which are representations of them (whether by reason of being of the same design or part of the same consignment or batch or otherwise).
(7) Any person aggrieved by an order made under this section by a magistrates' court, or by a decision of such a court not to make such an order, may appeal against that order or decision—
(a) in England and Wales, to the Crown Court;
(b) in Northern Ireland, to the county court.
(8) An order so made may contain such provision as appears to the court to be appropriate for delaying the coming into force of the order pending the making and determination of any appeal (including any application under section 111 of the Magistrates' Courts Act 1980 or Article 146 of the Magistrates' Courts (Northern Ireland) Order 1981).
(9) Subject to subsection (10), any products or articles forfeited under this section are to be destroyed in accordance with such directions as the court may give.
(10) On making an order under this section, the court may, if it considers it appropriate to do so, direct that the products or articles to which the order relates shall (instead of being destroyed) be released to such person and on such conditions as the court may specify.
(1) In Scotland, the court may make an order for the forfeiture of any relevant products or articles (as defined by section 35ZC).
(2) An order under this section may be made—
(a) on an application by the procurator fiscal made in the manner specified in section 134 of the Criminal Procedure (Scotland) Act 1995, or
(b) where a person is convicted of an offence under section 35ZA, in addition to any other penalty which the court may impose.
(3) On an application under subsection (2)(a), the court may make an order for the forfeiture of relevant products or articles only if it is satisfied that an offence under section 35ZA has been committed in relation to the relevant products or articles.
(4) The court may infer for the purposes of this section that such an offence has been committed in relation to any relevant products or articles if it is satisfied that such an offence has been committed in relation to products or articles which are representative of them (whether by reason of being of the same design or part of the same consignment or batch or otherwise).
(5) The procurator fiscal making the application under subsection (2)(a) must serve on any person appearing to the procurator fiscal to be the owner of, or otherwise have an interest in, the products or articles to which the application relates a copy of the application, together with a notice giving the person the opportunity to appear at the hearing of the application to show cause why the products or articles should not be forfeited.
(6) Service under subsection (5) must be carried out, and such service may be proved, in the manner specified for citation of an accused in summary proceedings under the Criminal Procedure (Scotland) Act 1995.
(7) Any person upon whom notice is served under subsection (5) and any other person claiming to be the owner of, or otherwise have an interest in, products or articles to which an application under this section relates is entitled to appear at the hearing of the application to show cause why the products or articles should not be forfeited.
(8) The court must not make an order following an application under subsection (2)(a)—
(a) if any person on whom notice is served under subsection (5) does not appear, unless service of the notice on that person is proved, or
(b) if no notice under subsection (5) has been served, unless the court is satisfied that in the circumstances it was reasonable not to serve such notice.
(9) Where an order for the forfeiture of any products or articles is made following an application under subsection (2)(a), any person who appeared, or was entitled to appear, to show cause why goods, material or articles should not be forfeited may, within 21 days of making the order, appeal to the High Court of Justiciary by bill of suspension.
(10) Section 182(5)(a) to (e) of the Criminal Procedure (Scotland) Act 1995 applies to an appeal under subsection (9) as it applies to a stated case under Part 2 of that Act.
(11) An order following an application under subsection (2)(a) does not take effect—
(a) until the end of the period of 21 days beginning with the day after the day on which the order is made, or
(b) if an appeal is made under subsection (9) within that period, until the appeal is dismissed or abandoned.
(12) An order under subsection (2)(b) does not take effect—
(a) until the end of the period within which an appeal against the order could be brought under the Criminal Procedure (Scotland) Act 1995, or
(b) if an appeal is made within that period, until the appeal is determined or abandoned.
(13) Subject to subsection (14), products or articles forfeited under this section must be destroyed in accordance with such directions as the court may give.
(14) On making an order under this section, the court may, if it considers it appropriate to do so, direct that the products or articles to which the order relates shall (instead of being destroyed) be released, to such person and on such conditions as the court may specify.
(15) In this section, “the court” means—
(a) in relation to an order made on an application under subsection (2)(a), the sheriff;
(b) in relation to an order made under subsection (2)(b), the court which imposed the penalty.
35A Offence by body corporate or partnership: liability of officers or partners
(1) Where an offence under this Act committed by a body corporate is proved to have been committed with the consent or connivance of a director, manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly.
(2) In relation to a body corporate whose affairs are managed by its members “ director ” means a member of the body corporate.
(3) Proceedings for an offence under this Act alleged to have been committed by a partnership are to be brought against the partnership in the name of the firm and not in that of the partners; but without prejudice to any liability of the partners under subsection (6) or (7).
(4) The following provisions apply for the purposes of such proceedings as in relation to a body corporate—
(a) any rules of court relating to the service of documents;
(b) in England and Wales, Schedule 3 to the Magistrates' Courts Act 1980;
(c) in Northern Ireland, Schedule 4 to the Magistrates' Courts (Northern Ireland) Order 1981.
(5) A fine imposed on a partnership (other than a Scottish partnership) on its conviction in such proceedings must be paid out of the partnership assets.
(6) Where a partnership (other than a Scottish partnership) is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, is also guilty of the offence and liable to be proceeded against and punished accordingly.
(7) Where an offence under this Act committed by a Scottish partnership is proved to have been committed with the consent or connivance of a partner in the partnership, or a person purporting to act in that capacity, he as well as the partnership is guilty of the offence and liable to be proceeded against and punished accordingly.
36 General power of Board of Trade to make rules, etc.
(1) Subject to the provisions of this Act, the Secretary of State, may make such rules as he thinks expedient for regulating the business of the Patent Office in relation to designs and for regulating all matters by this Act placed under the direction or control of the registrar or the Secretary of State, . . . .
(1A) Rules may, in particular, make provision—
(a) requiring the furnishing of copies of such representations or specimens of designs or other documents as may be filed at the Patent Office;
(ab) requiring applications for registration of designs to specify—
(i) the products to which the designs are intended to be applied or in which they are intended to be incorporated;
(ii) the classification of the designs by reference to such test as may be prescribed;
(b) regulating the procedure to be followed in connection with any application or request to the registrar or in connection with any proceeding before him, and authorising the rectification of irregularities of procedure;
(c) providing for the appointment of advisers to assist the registrar in proceedings before him;
(d) regulating the keeping of the register of designs;
(e) authorising the publication and sale of copies of representations of designs and other documents in the Patent Office;
(f) prescribing anything authorised or required by this Act to be prescribed by rules.
(1B) The remuneration of an adviser appointed to assist the registrar shall be determined by the Secretary of State with the consent of the Treasury and shall be defrayed out of money provided by Parliament.
(2) Rules made under this section may provide for the establishment of branch offices for designs and may authorise any document or thing required by or under this Act to be filed or done at the Patent Office to be filed or done at the branch office at Manchester or any other branch office established in pursuance of the rules.
(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(2) Any rules made by the Secretary of State in pursuance of section 15 of this Act, and any order made, direction given, or other action taken under the rules by the registrar, may be made, given or taken so as to have effect as respects things done or omitted to be done on or after such date, whether before or after the coming into operation of the rules or of this Act, as may be specified in the rules.
(3) Any power to make rules conferred by this Act on the Secretary of State ... and the power to make an order under section 15ZA and the power to make regulations under section 28A shall be exercisable by statutory instrument ....
(4) Any statutory instrument containing rules made by the Secretary of State under this Act or regulations under section 28A shall be subject to annulment in pursuance of a resolution of either House of Parliament.
(4A) Subsection (4) does not apply to the first regulations to be made under section 28A, but the Secretary of State may not make those regulations unless a draft of the statutory instrument containing them has been laid before, and approved by a resolution of, each House of Parliament.
(4B) The Secretary of State may not make an order under section 15ZA unless a draft of the statutory instrument containing the order has been laid before, and approved by a resolution of, each House of Parliament.
(5) Any Order in Council made under this Act may be revoked or varied by a subsequent Order in Council.
(1) The registrar may give directions as to the form and manner in which documents to be delivered to the registrar—
(a) in electronic form; or
(b) using electronic communications,
are to be delivered to him.
(2) A direction under subsection (1) may provide that in order for a document to be delivered in compliance with the direction it shall be accompanied by one or more additional documents specified in the direction.
(3) Subject to subsections (11) and (12), if a document to which a direction under subsection (1) or (2) applies is delivered to the registrar in a form or manner which does not comply with the direction the registrar may treat the document as not having been delivered.
(4) Subsection (5) applies in relation to a case where—
(a) a document is delivered using electronic communications, and
(b) there is a requirement for a fee to accompany the document.
(5) The registrar may give directions specifying—
(a) how the fee shall be paid; and
(b) when the fee shall be deemed to have been paid.
(6) The registrar may give directions specifying that a person who delivers a document to the registrar in electronic form or using electronic communications cannot treat the document as having been delivered unless its delivery has been acknowledged.
(7) The registrar may give directions specifying how a time of delivery is to be accorded to a document delivered to him in electronic form or using electronic communications.
(8) A direction under this section may be given—
(a) generally;
(b) in relation to a description of cases specified in the direction;
(c) in relation to a particular person or persons.
(9) A direction under this section may be varied or revoked by a subsequent direction under this section.
(10) The delivery using electronic communications to any person by the registrar of any document is deemed to be effected, unless the registrar has otherwise specified, by transmitting an electronic communication containing the document to an address provided or made available to the registrar by that person as an address of his for the receipt of electronic communications; and unless the contrary is proved such delivery is deemed to be effected immediately upon the transmission of the communication.
(11) A requirement of this Act that something must be done in the prescribed manner is satisfied in the case of something that is done—
(a) using a document in electronic form, or
(b) using electronic communications,
only if the directions under this section that apply to the manner in which it is done are complied with.
(12) In the case of an application made as mentioned in subsection (11)(a) or (b) above, a reference in this Act to the application not having been made in accordance with rules under this Act includes a reference to its not having been made in accordance with any applicable directions under this section.
(13) This section applies—
(a) to delivery at the Patent Office as it applies to delivery to the registrar; and
(b) to delivery by the Patent Office as it applies to delivery by the registrar.
(1) The registrar may give directions specifying the hour at which the Patent Office shall be deemed to be closed on any day for purposes of the transaction by the public of business under this Act or of any class of such business, and specifying days as excluded days for any such purposes.
(2) Any business done under this Act on any day after the hour specified as aforesaid in relation to business of that class, or on a day which is an excluded day in relation to business of that class, shall be deemed to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act expires on an excluded day, that time shall be extended to the next following day not being an excluded day.
There shall be paid in respect of the registration of designs and applications therefor, and in respect of other matters relating to designs arising under this Act, such fees as may be prescribed by rules made by the Secretary of State with the consent of the Treasury.
Any notice required or authorised to be given by or under this Act, and any application or other document so authorised or required to be made or filed, may be given, made or filed by post.
The Comptroller—General of Patents, Designs and Trade Marks shall, in his annual report with respect to the execution of the Patents Act 1977, include a report with respect to the execution of this Act as if it formed a part of or was included in that Act.
(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(2) Nothing in this Act shall affect the right of the Crown or of any person deriving title directly or indirectly from the Crown to sell or use products forfeited under the laws relating to customs or excise.
(1) In this Act, except where the context otherwise requires, the following expressions have the meanings hereby respectively assigned by them, that is to say
. . .
. . .
. . .
“assignee” includes the personal representative of a deceased assignee, and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person;
“ author ”in relation to a design, has the meaning given by section 2(3) and (4);
. . .
. . .
“ the court ” shall be construed in accordance with section 27 of this Act;
. . .
“complex product” has the meaning assigned to it by section 1(3) of this Act;
“design” has the meaning assigned to it by section 1(2) of this Act;
“electronic communication” has the same meaning as in the Electronic Communications Act 2000;
“ employee ”, “ employment ”, and “ employer ” refer to employment under a contract of service or of apprenticeship,
“national unregistered design right” means design right within the meaning of Part III of the Copyright, Designs and Patents Act 1988;
. . .
“prescribed” means prescribed by rules made by the Secretary of State under this Act;
“product” has the meaning assigned to it by section 1(3) of this Act;
“proprietor” has the meaning assigned to it by section two of this Act;
. . .
“registered proprietor” means the person or persons for the time being entered in the register of designs as proprietor of the design;
“registrar” means the Comptroller-General of Patents Designs and Trade Marks;
. . .
(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(4) For the purposes of subsection (1) of section 14 of this Act, the expression “personal representative”, in relation to a deceased person, includes the legal representative of the deceased appointed in any country outside the United Kingdom.
(1) In the application of this Act to Scotland—
“account of profits” means accounting and payment of profits;
“accounts” means count, reckoning and payment;
“arbitrator” means arbiter;
“assignment” means assignation;
“claimant” means pursuer;
“costs” means expenses;
“defendant” means defender;
“delivery up” means delivery;
“injunction” means interdict;
“interlocutory relief” means interim remedy.
(1A) In the application of section 26C(1)(a) (remedy for unjustified threat of infringement proceedings) to Scotland, “declaration” means “declarator”.
(2) References to the Crown shall be construed as including references to the Crown in right of the Scottish Administration.
In the application of this Act to Northern Ireland—
(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(3) References to enactments include enactments comprised in Northern Ireland legislation:
(3A) References to the Crown include the Crown in right of Her Majesty’s Government in Northern Ireland:
(4) References to a Government department shall be construed as including references to a Northern Ireland departmentand in relation to a Northern Ireland department references to the Treasury shall be construed as references to the Department of Finance and Personnel:
(4A) Any reference to a claimant includes a reference to a plaintiff.
(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
This Act extends to the Isle of Man, subject to any modifications contained in an Order made by Her Majesty in Council, and accordingly, subject to any such Order, references in this Act to the United Kingdom shall be construed as including the Isle of Man.
(1) For the purposes of this Act the territorial waters of the United Kingdom shall be treated as part of the United Kingdom.
(2) This Act 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 Continental Shelf Act 1964.
(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(2) Subject to the provisions of this section, any Order in Council, rule, order, requirement, certificate, notice, decision, direction, authorisation, consent, application, request or thing made, issued, given or done under any enactment repealed by this Act shall, if in force at the commencement of this Act, and so far as it could have been made, issued, given or done under this Act, continue in force and have effect as if made, issued, given or done under the corresponding enactment of this Act.
(3) Any register kept under the Patents and Designs Act 1907, shall be deemed to form part of the corresponding register under this Act.
(4) Any design registered before the commencement of this Act shall be deemed to be registered under this Act in respect of articles of the class in which it is registered.
(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(6) Any document referring to any enactment repealed by this Act shall be construed as referring to the corresponding enactment of this Act.
(7) Nothing in the foregoing provisions of this section shall be taken as prejudicing the operation of section 16(1) and section 17(2)(a) of the Interpretation Act 1978, (which relate to the effect of repeals).
(1) This Act may be cited as the Registered Designs Act 1949.
(2) This Act shall come into operation on the first day of January, nineteen hundred and fifty, immediately after the coming into operation of the Patents and Designs Act 1949.
SCHEDULE A1 Grounds for refusal of registration in relation to emblems etc.
Grounds for refusal in relation to certain emblems etc.
1 (1) A design shall be refused registration under this Act if it involves the use of—
(a) the Royal arms, or any of the principal armorial bearings of the Royal arms, or any insignia or device so nearly resembling the Royal arms or any such armorial bearing as to be likely to be mistaken for them or it;
(b) a representation of the Royal crown or any of the Royal flags;
(c) a representation of Her Majesty or any member of the Royal family, or any colourable imitation thereof; or
(d) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation;
unless it appears to the registrar that consent for such use has been given by or on behalf of Her Majesty or (as the case may be) the relevant member of the Royal family.
(2) A design shall be refused registration under this Act if it involves the use of—
(a) the national flag of the United Kingdom (commonly known as the Union Jack); or
(b) the flag of England, Wales, Scotland, Northern Ireland or the Isle of Man,
and it appears to the registrar that the use would be misleading or grossly offensive.
(3) A design shall be refused registration under this Act if it involves the use of—
(a) arms to which a person is entitled by virtue of a grant of arms by the Crown; or
(b) insignia so nearly resembling such arms as to be likely to be mistaken for them;
unless it appears to the registrar that consent for such use has been given by or on behalf of the person concerned and the use is not in any way contrary to the law of arms.
(4) A design shall be refused registration under this Act if it involves the use of a controlled representation within the meaning of the Olympic Symbol etc. (Protection) Act 1995 unless it appears to the registrar that—
(a) the application is made by the person for the time being appointed under section 1(2) of the Olympic Symbol etc. (Protection) Act 1995 (power of Secretary of State to appoint a person as the proprietor of the Olympics association right); or
(b) consent for such use has been given by or on behalf of the person mentioned in paragraph (a) above.
Grounds for refusal in relation to emblems etc. of Paris Convention countries
2 (1) A design shall be refused registration under this Act if it involves the use of the flag of a Paris Convention country unless—
(a) the authorisation of the competent authorities of that country has been given for the registration; or
(b) it appears to the registrar that the use of the flag in the manner proposed is permitted without such authorisation.
(2) A design shall be refused registration under this Act if it involves the use of the armorial bearings or any other state emblem of a Paris Convention country which is protected under the Paris Convention unless the authorisation of the competent authorities of that country has been given for the registration.
(3) A design shall be refused registration under this Act if—
(a) the design involves the use of an official sign or hallmark adopted by a Paris Convention country and indicating control and warranty;
(b) the sign or hallmark is protected under the Paris Convention; and
(c) the design could be applied to or incorporated in goods of the same, or a similar, kind as those in relation to which the sign or hallmark indicates control and warranty;
unless the authorisation of the competent authorities of that country has been given for the registration.
(4) The provisions of this paragraph as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.
(5) Nothing in this paragraph prevents the registration of a design on the application of a national of a country who is authorised to make use of a state emblem, or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country.
Grounds for refusal in relation to emblems etc. of certain international organisations
3 (1) This paragraph applies to—
(a) the armorial bearings, flags or other emblems; and
(b) the abbreviations and names,
of international intergovernmental organisations of which one or more Paris Convention countries are members.
(2) A design shall be refused registration under this Act if it involves the use of any such emblem, abbreviation or name which is protected under the Paris Convention unless—
(a) the authorisation of the international organisation concerned has been given for the registration; or
(b) it appears to the registrar that the use of the emblem, abbreviation or name in the manner proposed—
(i) is not such as to suggest to the public that a connection exists between the organisation and the design; or
(ii) is not likely to mislead the public as to the existence of a connection between the user and the organisation.
(3) The provisions of this paragraph as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.
(4) Nothing in this paragraph affects the rights of a person whosebona fide use of the design in question began before 4th January 1962 (when the relevant provisions of the Paris Convention entered into force in relation to the United Kingdom).
Paragraphs 2 and 3: supplementary
4 (1) For the purposes of paragraph 2 above state emblems of a Paris Convention country (other than the national flag), and official signs or hallmarks, shall be regarded as protected under the Paris Convention only if, or to the extent that—
(a) the country in question has notified the United Kingdom in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, sign or hallmark;
(b) the notification remains in force; and
(c) the United Kingdom has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn.
(2) For the purposes of paragraph 3 above the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention only if, or to the extent that—
(a) the organisation in question has notified the United Kingdom in accordance with Article 6ter(3) of the Convention that it desires to protect that emblem, abbreviation or name;
(b) the notification remains in force; and
(c) the United Kingdom has not objected to it in accordance with Article 6ter(4) or any such objection has been withdrawn.
(3) Notification under Article 6ter(3) of the Paris Convention shall have effect only in relation to applications for the registration of designs made more than two months after the receipt of the notification.
Interpretation
5 In this Schedule—
“a Paris Convention country” means a country, other than the United Kingdom, which is a party to the Paris Convention; and
“the Paris Convention” means the Paris Convention for the Protection of Industrial Property of 20th March 1883.
FIRST SCHEDULE Provisions as to the use of Registered Designs for the services of the Crown and as to the Rights of Third Parties in respect of such use
Section 12.
Use of registered designs for services of the Crown.
1 (1) Notwithstanding anything in this Act, any Government department, and any person authorised in writing by a Government department, may use any registered design for the services of the Crown in accordance with the following provisions of this paragraph.
(2) If and so far as the design has before the date of registration thereof been duly recorded by or applied by or on behalf of a Government department otherwise than in consequence of the communication of the design directly or indirectly by the registered proprietor or any person from whom he derives title, any use of the design by virtue of this paragraph may be made free of any royalty or other payment to the registered proprietor.
(3) If and so far as the design has not been so recorded or applied as aforesaid, any use of the design made by virtue of this paragraph at any time after the date of registration thereof, or in consequence of any such communication as aforesaid, shall be made upon such terms as may be agreed upon, either before or after the use, between the Government department and the registered proprietor with the approval of the Treasury, or as may in default of agreement be determined by the court on a reference under paragraph 3 of this Schedule.
(4) The authority of a Government department in respect of a design may be given under this paragraph either before or after the design is registered and either before or after the acts in respect of which the authority is given are done, and may be given to any person whether or not he is authorised directly or indirectly by the registered proprietor to use the design.
(5) Where any use of a design is made by or with the authority of a Government department under this paragraph, then, unless it appears to the department that it would be contrary to the public interest so to do, the department shall notify the registered proprietor as soon as practicable after the use is begun, and furnish him with such information as to the extent of the use as he may from time to time require.
(6) For the purposes of this and the next following paragraph “the services of the Crown” shall be deemed to include—
(a) the supply to the government of any country outside the United Kingdom, in pursuance of an agreement or arrangement between Her Majesty’s Government in the United Kingdom and the government of that country, of products required—
(i) for the defence of that country; or
(ii) for the defence of any other country whose government is party to any agreement or arrangement with Her Majesty’s said Government in respect of defence matters;
(b) the supply to the United Nations, or to the government of any country belonging to that organisation, in pursuance of an agreement or arrangement between Her Majesty’s Government and that organisation or government, of products required for any armed forces operating in pursuance of a resolution of that organisation or any organ of that organisation;
and the power of a Government department or a person authorised by a Government department under this paragraph to use a design shall include power to sell to any such government or to the said organisation any products the supply of which is authorised by this sub-paragraph, and to sell to any person any products made in the exercise of the powers conferred by this paragraph which are no longer required for the purpose for which they were made.
(7) The purchaser of any products sold in the exercise of powers conferred by this paragraph, and any person claiming through him, shall have power to deal with them in the same manner as if the rights in the registered design were held on behalf of His Majesty.
Rights of third parties in respect of Crown use.
2 (1) In relation to any use of a registered design, or a design in respect of which an application for registration is pending, made for the services of the Crown—
(a) by a Government department or a person authorised by a Government department under the last foregoing paragraph; or
(b) by the registered proprietor or applicant for registration to the order of a Government department,
the provisions of any licence, assignment or agreement made, whether before or after the commencement of this Act, between the registered proprietor or applicant for registration or any person who derives title from him or from whom he derives title and any person other than a Government department shall be of no effect so far as those provisions restrict or regulate the use of the design, or any model, document or information relating thereto, or provide for the making of payments in respect of any such use, or calculated by reference thereto; and the reproduction or publication of any model or document in connection with the said use shall not be deemed to be an infringement of any copyright or national unregistered design right subsisting in the model or document.
(2) Where an exclusive licence granted otherwise than for royalties or other benefits determined by reference to the use of the design is in force under the registered design then—
(a) in relation to any use of the design which, but for the provisions of this and the last foregoing paragraph, would constitute an infringement of the rights of the licensee, sub-paragraph (3) of the last foregoing paragraph shall have effect as if for the reference to the registered proprietor there were substituted a reference to the licensee; and
(b) in relation to any use of the design by the licensee by virtue of an authority given under the last foregoing paragraph, that paragraph shall have effect as if the said sub-paragraph (3) were omitted.
(3) Subject to the provisions of the last foregoing sub-paragraph, where the registered design or the right to apply for or obtain registration of the design has been assigned to the registered proprietor in consideration of royalties or other benefits determined by reference to the use of the design, then—
(a) in relation to any use of the design by virtue of paragraph 1 of this Schedule, sub-paragraph (3) of that paragraph shall have effect as if the reference to the registered proprietor included a reference to the assignor, and any sum payable by virtue of that sub-paragraph shall be divided between the registered proprietor and the assignor in such proportion as may be agreed upon between them or as may in default of agreement be determined by the court on a reference under the next following paragraph; and
(b) in relation to any use of the design made for the services of the Crown by the registered proprietor to the order of a Government department, sub-paragraph (3) of paragraph 1 of this Schedule shall have effect as if that use were made by virtue of an authority given under that paragraph.
(4) Where, under sub-paragraph (3) of paragraph 1 of this Schedule, payments are required to be made by a Government department to a registered proprietor in respect of any use of a design, any person being the holder of an exclusive licence under the registered design (not being such a licence as is mentioned in sub-paragraph (2) of this paragraph) authorising him to make that use of the design shall be entitled to recover from the registered proprietor such part (if any) of those payments as may be agreed upon between that person and the registered proprietor, or as may in default of agreement be determined by the court under the next following paragraph to be just having regard to any expenditure incurred by that person—
(a) in developing the said design; or
(b) in making payments to the registered proprietor, other than royalties or other payments determined by reference to the use of the design, in consideration of the licence;
and if, at any time before the amount of any such payment has been agreed upon between the Government department and the registered proprietor, that person gives notice in writing of his interest to the department, any agreement as to the amount of that payment shall be of no effect unless it is made with his consent.
(5) In this paragraph “exclusive licence” means a licence from a registered proprietor which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the registered proprietor), any right in respect of the registered design.
Compensation for loss of profit.
2A (1) Where Crown use is made of a registered design, the government department concerned shall pay—
(a) to the registered proprietor, 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 products to which the design is or in which it is incorporated.
(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 underused.
(4) No compensation is payable in respect of any failure to secure contracts for the supply of products to which the design is or in which it is incorporated otherwise than for the services of the Crown.
(5) The amount payable under this paragraph shall, if not agreed between the registered proprietor or licensee and the government department concerned with the approval of the Treasury, be determined by the court on a reference under paragraph 3; and it is in addition to any amount payable under paragraph 1 or 2 of this Schedule.
(6) In this paragraph—
“Crown use”, in relation to a design, means the doing of anything by virtue of paragraph 1 which would otherwise be an infringement of the 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.
Reference of disputes as to Crown use.
3 (1) Any dispute as to—
(a) the exercise by a Government department, or a person authorised by a Government department, of the powers conferred by paragraph 1 of this Schedule,
(b) terms for the use of a design for the services of the Crown under that paragraph,
(c) the right of any person to receive any part of a payment made under paragraph 1(3), or
(d) the right of any person to receive a payment under paragraph 2A,
may be referred to the court by either party to the dispute.
(2) In any proceedings under this paragraph to which a Government department are a party, the department may—
(a) if the registered proprietor is a party to the proceedings and the department are a relevant person within the meaning of section 20 of this Act, apply for invalidation of the registration of the design upon any ground upon which the registration of a design may be declared invalid on an application to the court under section twenty of this Act;
(b) in any case and provided that the department would be the relevant person within the meaning of section 20 of this Act if they had made an application on the grounds for invalidity being raised, put in issue the validity of the registration of the design without applying for its invalidation.
(3) If in such proceedings as aforesaid any question arises whether a design has been recorded or applied as mentioned in paragraph 1 of this Schedule, and the disclosure of any document recording the design, or of any evidence of the application thereof, would in the opinion of the department be prejudicial to the public interest, the disclosure may be made confidentially to counsel for the other party or to an independent expert mutually agreed upon.
(4) In determining under this paragraph any dispute between a Government department and any person as to terms for the use of a design for the services of the Crown, the court shall have regard to any benefit or compensation which that person or any person from whom he derives title may have received, or may be entitled to receive, directly or indirectly from any Government department in respect of the design in question.
(5) In any proceedings under this paragraph the court may at any time order the whole proceedings or any question or issue of fact arising therein to be referred to a special or official referee or an arbitrator on such terms as the court may direct; and references to the court in the foregoing provisions of this paragraph shall be construed accordingly.
Special provisions as to Crown use during emergency.
4 (1) During any period of emergency within the meaning of this paragraph, the powers exercisable in relation to a design by a Government department, or a person authorised by a Government department under paragraph 1 of this Schedule shall include power to use the design for any purpose which appears to the department necessary or expedient—
(a) for the efficient prosecution of any war in which His 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 part of His Majesty’s dominions or any foreign countries that are in grave distress as the result of war;
and any reference in this Schedule to the services of the Crown shall be construed as including a reference to the purposes aforesaid.
(2) In this paragraph the expression “period of emergency” means a period beginning on such date as may be declared by Order in Council to be the commencement, and ending on such date as may be so declared to be the termination, of a period of emergency for the purposes of this paragraph.
(3) No Order in Council under this paragraph 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.
Section 12A
PART 1 Existing registered Community designs
Designs registered as Community designs to be treated as registered under the Act
1 (1) A design which, immediately before IP completion day, is entered in the RCD register and has been published in the Community Designs Bulletin as mentioned in Article 73(1) (an “existing registered Community design”) is to be treated on and after IP completion day as if an application for its registration had been made, and it had been registered, under this Act.
(2) A registered design which comes into being by virtue of sub-paragraph (1) is referred to in this Schedule as a “re-registered design”.
(3) This Act applies to a re-registered design as it applies to other registered designs except as otherwise provided in this Schedule.
(4) For the purposes of this Act—
(a) the date of registration of a re-registered design is the date on which the existing registered Community design from which the re-registered design derives was treated as registered under the Community Design Regulation, and
(b) the date of the application of a re-registered design is the date treated, under Article 38, as the date of filing of the application for the registration of the existing registered Community design from which the re-registered design derives.
(5) Nothing in this Act authorises the imposition of a fee, or the making of provision by rules or regulations which authorises the imposition of a fee, in respect of any matter relating to a re-registered design (see instead provision made by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018).
(6) The following provisions of this Act do not apply to a re-registered design—
(a) section 7A(6);
(b) section 18.
(7) In this Schedule—
(a) “the RCD register” means the register of registered Community designs maintained under Article 72;
(b) “the Community Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as it had effect immediately before IP completion day.
Entries to be made in the register in relation to designs treated as registered under this Act
2 (1) The registrar must as soon as reasonably practicable on or after IP completion day enter a re-registered design in the register of designs.
(2) The obligation under section 22(1) (inspection of registered designs) applies to a re-registered design on and after the day on which the re-registered design is entered in the register (notwithstanding that no certificate of registration has been granted).
Opt out
3 (1) Subject to sub-paragraph (2), the proprietor of an existing registered Community design may at any time on or after IP completion day serve a notice on the registrar that the design is not to be treated as if it had been registered under this Act.
(2) A notice under sub-paragraph (1) may not be served where on or after IP completion day—
(a) the re-registered design which derives from the existing registered Community design (or any interest in it)—
(i) has been assigned or otherwise transferred except by an assent by personal representatives, or
(ii) has had an interest created in it by a mortgage, licence or other instrument; or
(b) proceedings based on the re-registered design have been initiated by the proprietor or with the proprietor's consent.
(3) A notice served under sub-paragraph (1) must—
(a) identify the existing registered Community design; and
(b) include the name and address of any person having an interest in the existing registered Community design which had effect before IP completion day in the United Kingdom and in respect of which an entry was recorded in the RCD register.
(4) A notice under sub-paragraph (1) is of no effect unless the proprietor in that notice certifies that any such person—
(a) has been given not less than three months' notice of the proprietor's intention to serve such a notice; or
(b) is not affected by, or if affected consents to, the notice.
(5) Where a notice has been served under sub-paragraph (1)—
(a) the design ceases with effect from IP completion day to be treated as if it had been registered under this Act,
(b) the obligation imposed on the registrar under paragraph 2 (entries to be made in the register in relation to designs treated as registered under this Act) ceases to have effect, and
(c) the registrar must make any necessary amendments to the register.
Effect of claim of priority
4 (1) This paragraph applies where a right of priority has been claimed in accordance with Article 42 in respect of an existing registered Community design.
(2) The proprietor of the re-registered design which derives from the existing registered Community design is to be treated on and after IP completion day as having the same claim of priority.
(3) Accordingly, the relevant date for the purposes of establishing whether (or to what extent) the re-registered design is new or has individual character is the date of filing of the application for registration of a design in a convention country which formed the basis for the claim of priority.
Unregistered pre-exit transfers
5 (1) This paragraph applies where immediately before IP completion day there is a transfer of an existing registered Community design that has not been entered in the RCD register (a “relevant transfer”).
(2) Section 19 (registration of assignments, etc.) applies in relation to a relevant transfer as if it were an assignment of the re-registered design which derives from the existing registered Community design which has been transferred.
Pre-exit licences to continue to have effect in the United Kingdom
6 (1) This paragraph applies where immediately before IP completion day an existing registered Community design is the subject of a licence which—
(a) authorises the doing of acts in the United Kingdom which would otherwise infringe an existing registered Community design, and
(b) does not expire on IP completion day (a “relevant licence”).
(2) Subject to any agreement to the contrary between the licensee and the licensor, a relevant licence continues to authorise the doing of acts which would otherwise infringe the right in the re-registered design which derives from the existing registered Community design.
(3) Sub-paragraph (2) is subject to the terms on which the relevant licence was granted, subject to such modifications as are necessary for their application in the United Kingdom.
(4) Section 19 (registration of assignments, etc.) applies in relation to a relevant licence as if it were a licence of the re-registered design deriving from the existing registered Community design which is subject to the relevant licence, subject to the following modification.
(5) Where immediately before IP completion day there is an entry in the RCD register relating to the relevant licence, section 19(5) does not apply to the licence until after the expiry of the period of 12 months beginning with the day after that on which IP completion day falls.
Security interests in existing registered Community designs
7 (1) This paragraph applies where immediately before IP completion day an existing registered Community design is the subject of an interest which has been granted as security and does not expire on IP completion day (a “relevant security interest”).
(2) References to the existing registered Community design in any document which grants or refers to the relevant security interest are to be read as including references to the re-registered design which derives from the existing registered Community design.
(3) Section 19 (registration of assignments, etc.) applies in relation to a relevant security interest as if it were a security interest granted in respect of the re-registered design deriving from the existing registered Community design which is subject to the relevant security interest, subject to the following modification.
(4) Where immediately before IP completion day there is an entry in the RCD register relating to the relevant security interest, section 19(5) does not apply to the document granting the interest until after the expiry of the period of 12 months beginning with the day after that on which IP completion day falls.
Continuity of rights in relation to an existing registered Community design
8 (1) References to an existing registered Community design or the registration of an existing registered Community design in any document entered into before IP completion day shall, unless there is evidence that the document was not intended to have effect in the United Kingdom, be read on and after IP completion day as including references to the re-registered design or the registration of the re-registered design which derives from the existing registered Community design.
(2) Subject to any agreement to the contrary, a consent granted before IP completion day by the proprietor of an existing registered Community design to the doing on or after IP completion day of an act in the United Kingdom which would otherwise infringe the right in the re-registered design which derives from the existing registered Community design is to be treated for the purposes of section 7A as a consent to the doing of that act granted by the registered proprietor of the re-registered design.
Pending proceedings concerning an existing registered Community design
9 (1) This paragraph applies where on IP completion day an existing registered Community design is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 80 (“a Community design court”).
(2) Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Title IX of the Community Design Regulation (with the exception of Articles 86(2), (4), (5) and 91) shall continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from IP completion day.
(3) Where the pending proceedings involve a claim for infringement or for threatened infringement of an existing registered Community design, without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the existing registered Community design, the Community design court may grant an injunction to prohibit unauthorised use of the re-registered design which derives from the existing registered Community design.
(4) Where the pending proceedings involve a counterclaim for a declaration of invalidity in relation to an existing registered Community design, the Community design court may declare the registration of the re-registered design which derives from the existing registered Community design to be invalid (wholly or in part).
(5) Where the registration of a re-registered design is declared invalid to any extent, the registration shall to that extent be treated as having been invalid from the date of registration or from such other date as the court may direct.
(6) For the purposes of this paragraph proceedings are treated as pending on IP completion day if they were instituted but not finally determined before IP completion day.
Existing registered Community design: effect of invalidity
9A. (1) This paragraph applies where, on IP completion day, an existing registered Community design is the subject of proceedings under Article 25 (Grounds for invalidity) which have been instituted but not finally determined before IP completion day (“invalidation proceedings”).
(2) Subject to sub-paragraph (4) where—
(a) the existing registered Community design is declared invalid (whether wholly or partly) pursuant to a decision which is finally determined, and
(b) the registrar has either—
(i) received notice of the situation referred to in paragraph (a) (“an invalidation notice”), or
(ii) otherwise become aware of the situation referred to in paragraph (a),
the registration of the re-registered design which derives from the existing registered Community design must be declared invalid to the same extent as the existing registered Community design.
(3) Where (by virtue of sub-paragraph (2)) the registration of a re-registered design is declared invalid, the registrar must—
(a) where there is a partial declaration of invalidity, amend the entry in the register of designs;
(b) otherwise, remove the re-registered design from the register.
(4) The registration of a re-registered design must not be declared invalid under sub-paragraph (2) where the grounds on which the existing registered Community design was declared invalid (whether wholly or partly) would not apply or would not have been satisfied in relation to the re-registered Community design if—
(a) the re-registered design had been the subject of an entry on the register as at the date the invalidation proceedings were instituted, and
(b) an application for a declaration of invalidity of the re-registered design based on those grounds had been made on that date under section 11ZA.
(5) Where the registration of a re-registered design is declared invalid to any extent pursuant to this paragraph—
(a) it shall to that extent be treated as having been invalid from the date on which the rights of the proprietor of the existing registered Community design from which it derives are deemed to have ceased under the Community Design Regulation;
(b) subject to any claim for compensation for damage caused by negligence or lack of good faith on the part of the proprietor or a claim for restitution based upon the unjust enrichment of the proprietor, the invalidity of the registration of the re-registered design does not affect—
(i) a decision arising from infringement proceedings which has been finally determined and which has been enforced prior to the date of the declaration of invalidity made pursuant to sub-paragraph (2) (“the invalidity declaration date”);
(ii) any contract entered into prior to the invalidity declaration date to the extent that it has been performed prior to that date, subject to the right of a party to the contract to claim the repayment of any consideration paid under the contract where, having regard to the circumstances, it is fair and equitable for such repayment to be made.
(6) Where a declaration is made under sub-paragraph (2), section 11ZE(2) does not apply.
(7) An invalidation notice may be sent by any person.
(8) For the purposes of this paragraph—
(a) proceedings are instituted if an application or counterclaim for a declaration of invalidity—
(i) has been filed (and not subsequently withdrawn) with the European Union Intellectual Property Office or a court designated for the purposes of Article 80, and
(ii) meets the requirements for being accorded a filing date under the Community Design Regulation and Commision Regulation (EC) No 2245/2002 of 21 October 2002;
(b) a decision is finally determined when—
(i) it has been determined; and
(ii) there is no further possibility of the determination being varied or set aside (disregarding any power to grant permission to appeal out of time).
(9) An appeal lies from a declaration of invalidity under sub-paragraph (2).
Effect of injunction protecting an existing registered Community design
10 (1) This paragraph applies where immediately before IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe an existing registered Community design (a “relevant injunction”).
(2) Subject to any order of the court to the contrary, a relevant injunction will have effect and be enforceable to prohibit the performance of acts which infringe or would infringe the right in a re-registered design to the same extent as in relation to the existing registered Community design from which the re-registered design derives as if it were an injunction granted by the court.
PART 2 Applications for registered Community designs which are pending at IP completion day
Applications for registration pending immediately before IP completion day
11 (1) In this Part references to an existing EU application are to an application for registration of a design under the Community Design Regulation in respect of which the conditions in sub-paragraph (2) are satisfied.
(2) The conditions referred to in sub-paragraph (1) are that immediately before IP completion day—
(a) the application has been accorded a filing date pursuant to Article 38; and
(b) the application has been neither granted nor refused by the European Union Intellectual Property Office.
12 (1) Where a person who has filed an existing EU application or a successor in title of that person applies for registration of the same design under this Act within a period beginning with IP completion day and ending with the end of the relevant period, the relevant date for the purposes of establishing whether (or to what extent) the design which is the subject of the application under this Act is new or has individual character is the earliest of—
(a) the filing date accorded pursuant to Article 38 to the existing EU application;
(b) the date of priority (if any) claimed under Article 42 in respect of the existing EU application.
(2) In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which IP completion day falls.
(3) For the purposes of this Act—
(a) where an application is made of the type referred to in sub-paragraph (1) within the period referred to in that sub-paragraph, the date of the application is the filing date accorded pursuant to Article 38 to the existing EU application, and
(b) where the registrar registers a design which is the subject of an application of the type referred to in sub-paragraph (1) which is made within the period referred to in that sub-paragraph, the date of registration of the design is the filing date accorded pursuant to Article 38 to the existing EU application.
(4) Accordingly section 3C does not apply in relation to the design.
PART 3 Registered Community designs where publication is deferred at IP completion day
Designs registered at the EUIPO immediately before IP completion day where publication is deferred
13 (1) In this Part references to a deferred design are to a design registered under the Community Design Regulation in respect of which the conditions in sub-paragraph (2) are satisfied.
(2) The conditions referred to in sub-paragraph (1) are that immediately before IP completion day—
(a) the design is entered in the RCD register, and
(b) publication of the design is deferred under Article 50.
14 (1) This paragraph applies where the proprietor of a deferred design or a successor in title of that person applies for registration of the same design under this Act within a period beginning with IP completion day and ending with the end of the relevant period.
(2) Sections 3A(4) and 3B do not apply in relation to the application.
(3) The relevant date for the purposes of establishing whether (or to what extent) the design which is the same as the deferred design is new or has individual character is the earliest of—
(a) the filing date accorded pursuant to Article 38 to the application for the deferred design;
(b) the date of priority (if any) claimed under Article 42 in respect of the application for the deferred design.
(4) If the registrar registers a design which is the subject of an application of the type referred to in sub-paragraph (1) which is made within the period referred to in that sub-paragraph, the date of registration of the design is the date on which the deferred design which is the same as that design was treated as registered under the Community Design Regulation.
(5) Accordingly section 3C does not apply in relation to the design.
(6) In sub-paragraph (1), the “relevant period” means, the period of nine months beginning with the day after that on which IP completion day falls.
PART 4 Treatment of registered Community designs whose registrations expire during the period of six months ending on IP completion day
Application of Part
15 (1) This Part applies to a design in respect of which the conditions in sub-paragraph (2) are satisfied (an “expired Community design”).
(2) The conditions referred to in sub-paragraph (1) are that—
(a) immediately before the transitional period, the design was the subject of a registration under the Community Design Regulation,
(b) the registration of the design expired during the transitional period (such that the design did not fall within paragraph 1(1)), and
(c) the registration of the design would have been capable of being renewed under Article 13 for at least one further period of five years had a request for renewal been made under Article 13 prior to that expiry.
(3) An expired Community design is to be treated as if it were an existing registered Community design.
(4) The provisions of Part 1 of this Schedule apply to an expired Community design as they apply to an existing Community design 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 design which derives from an expired Community design, the right in the re-registered design is expired until the period for which it subsists is extended in accordance with paragraph 16 (or the re-registered design is removed from the register in accordance with paragraph 16(3)).
(6) In this paragraph, “transitional period” means the period of six months ending with IP completion day.
Renewal of registration of an expired Community design
16 (1) Where the registration of an expired Community design is renewed in accordance with Article 13(3) of the Continuing Community Design Regulation the registrar must, as soon as reasonably practicable after the date of such renewal, record in the register of designs the extension of the period for which subsists the right in the re-registered design which derives from the expired Community design.
(2) Where the period for which the right in a re-registered 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 IP 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 the registration of an expired Community design is not renewed within the time period permitted by Article 13(3) of the Continuing Community Design Regulation—
(a) the registrar must remove from the register of designs the re-registered design which derives from the expired Community design; and
(b) the re-registered design ceases with effect from IP completion day to be treated as if it had been registered under this Act.
(4) In this Schedule “the Continuing Community Design Regulation” means the Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as it has effect in EU law.
PART 5 Restoration of registered Community design registrations and applications
Restoration of registered Community design to the RCD register
17 (1) This paragraph applies where:
(a) before IP completion day a registered Community design is removed from the RCD register pursuant to the Community Design Regulation, and
(b) on or after IP completion day the registration of the said design is restored pursuant to Article 67 of the Continuing Community Design Regulation.
(2) Where the proprietor of the design files a request with the registrar within the period of six months beginning with the date of such restoration—
(a) the design will be treated as if it were an existing registered Community design on IP completion day;
(b) the provisions of Part 1 apply to the re-registered design which derives from the existing registered Community design.
Restoration of application for registered Community design
18 (1) This paragraph applies where—
(a) before IP completion day an application for a registered Community design is refused pursuant to the Community Design Regulation; and
(b) on or after IP completion day the application is restored pursuant to Article 67 of the Continuing Community Design Regulation (a “relevant application”).
(2) Where a person who has filed a relevant application or a successor in title of that person applies for registration of the same design under this Act within a period beginning with IP completion day and ending with the end of the relevant period, the relevant date for the purposes of establishing whether the design which is the subject of the application under this Act is new or has individual character is the earliest of—
(a) the filing date accorded pursuant to Article 38 to the relevant application;
(b) the date of priority (if any) claimed under Article 42 in respect of the relevant application.
(3) In sub-paragraph (2), the “relevant period” means the period of nine months beginning with the day on which the application is restored as referred to in sub-paragraph (1)(b).
PART 6 Interpretation
Interpretation
19 In this Schedule—
“the Community Design Regulation” has the meaning given by paragraph 1(7);
“the Continuing Community Design Regulation” has the meaning given by paragraph 16(4);
“existing registered Community design” has the meaning given by paragraph 1(1);
“expired Community design” has the meaning given by paragraph 15(1);
“RCD register” has the meaning given by paragraph 1(7);
“re-registered design” has the meaning given by paragraph 1(2).
20 References in this Schedule to an “Article” are to an Article of the Community Design Regulation.
Section 12B
PART 1 Existing international designs
International designs in respect of which the European Union is designated to be treated as registered under the Act
1 (1) A design which, immediately before IP completion day, meets the requirements of sub-paragraph (2) (a “protected international registered design (EU))” is to be treated on and after IP completion day as if an application for its registration had been made, and it had been registered, under this Act.
(2) The requirements referred to in sub-paragraph (1) are—
(a) the design is the subject of an international registration which designates the European Union;
(b) the international registration has been published by the International Bureau pursuant to Article 10(3) of the Geneva Act;
(c) the European Union Intellectual Property Office has sent to the International Bureau a statement under Rule 18bis of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement to the effect that protection is granted in relation to the design, or the period under Article 106e(1) of the Community Design Regulation for communicating to the International Bureau a notification of refusal in respect of the international registration has expired; and
(d) the effects of the international registration so far as they relate to the design have neither been—
(i) refused by the European Union Intellectual Property Office pursuant to Article 106e(1) of the Community Design Regulation; nor
(ii) declared wholly invalid pursuant to Article 106f of the Community Design Regulation.
(3) Where prior to IP completion day the effects of the international registration to which a protected international registered design (EU) is subject are declared partly invalid so far as relating to that design pursuant to Article 106f of the Community Design Regulation, the re-registered international design which derives from the protected international registered design (EU) has effect under this Act to the extent that the effects of the international registration so far as relating to the design have not been declared invalid.
(4) A registered design which comes into being by virtue of sub-paragraph (1) is referred to in this Schedule as a “re-registered international design”.
(5) This Act applies to a re-registered international design as it applies to other registered designs except as otherwise provided in this Schedule.
(6) For the purposes of this Act—
(a) the date of registration of a re-registered international design is the date on which the protected international registered design (EU) from which the re-registered international design derives was treated as registered under the Geneva Act, and
(b) the date of the application of a re-registered international design is the date treated, under Article 9 of the Geneva Act, as the filing date of the application for the registration of the protected international registered design (EU) from which the re-registered international design derives.
(7) Nothing in this Act authorises the imposition of a fee, or the making of provision by rules or regulations which authorises the imposition of a fee, in respect of any matter relating to a re-registered international design (see instead provision made by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018).
(8) The following provisions of this Act do not apply to a re-registered international design—
(a) section 7A(6);
(b) section 18.
(9) In this Schedule—
(a) “the Community Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as it had effect immediately before IP completion day;
(b) “the Geneva Act” means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted by the Diplomatic Conference on 2 July 1999;
(c) “the International Bureau” means the International Bureau of the World Intellectual Property Organization; and
(d) “international registration” means the international registration of an industrial design effected according to the Geneva Act.
Entries to be made in the register in relation to designs treated as registered under this Act
2 (1) The registrar must as soon as reasonably practicable on or after IP completion day enter a re-registered international design in the register of designs.
(2) The obligation under section 22(1) (inspection of registered designs) applies to a re-registered international design on and after the day on which the re-registered international design is entered in the register (notwithstanding that no certificate of registration has been granted).
Opt out
3 (1) Subject to sub-paragraph (2), the holder of the international registration to which a protected international registered design (EU) is subject (“the proprietor”) may at any time on or after IP completion day serve a notice on the registrar that the design is not to be treated as if it had been registered under this Act.
(2) A notice under sub-paragraph (1) may not be served where on or after IP completion day—
(a) the re-registered international design which derives from the protected international registered design (EU) (or any interest in it)—
(i) has been assigned or otherwise transferred except by an assent by personal representatives, or
(ii) has had an interest created in it by a mortgage, licence or other instrument; or
(b) proceedings based on the re-registered international design have been initiated by the proprietor or with the proprietor's consent.
(3) A notice served under sub-paragraph (1) must:
(a) identify the protected international registered design (EU); and
(b) include the name and address of any person who, to the best of the proprietor's knowledge, has an interest in the protected international registered design (EU).
(4) A notice under sub-paragraph (1) is of no effect unless the proprietor in that notice certifies that any such person—
(a) has been given not less than three months' notice of the proprietor's intention to serve such a notice; or
(b) is not affected by, or if affected consents to, the notice.
(5) Where a notice has been served under sub-paragraph (1)—
(a) the design ceases with effect from IP completion day to be treated as if it had been registered under this Act,
(b) the obligation imposed on the registrar under paragraph 2 (entries to be made in the register in relation to designs treated as registered under this Act) ceases to have effect, and
(c) the registrar must make any necessary amendments to the register.
Effect of claim of priority
4 (1) This paragraph applies where a right of priority has been claimed in accordance with Article 6 of the Geneva Act in respect of the international registration to which a protected international registered design (EU) is subject.
(2) The proprietor of the re-registered international design which derives from the protected international registered design (EU) is to be treated on and after IP completion day as having the same claim of priority.
(3) Accordingly, the relevant date for the purposes of establishing whether (or to what extent) the re-registered international design is new or has individual character is the date of filing of the application for registration of a design in a convention country or a member of the World Trade Organization which formed the basis for the claim of priority.
Unregistered pre-exit transfers
5 (1) This paragraph applies where immediately before IP completion day—
(a) there is a change in ownership of the international registration to which a protected international registered design (EU) is subject,
(b) the change in ownership has effect in respect of the European Union and the protected international registered design (EU), and
(c) the change in ownership has not been entered in the international register
(a “relevant transfer”).
(2) Section 19 (registration of assignments, etc.) applies in relation to a relevant transfer as if it were an assignment of the re-registered international design which derives from the protected international registered design (EU) which has been transferred.
Pre-exit licences to continue to have effect in the United Kingdom
6 (1) This paragraph applies where immediately before IP completion day a protected international registered design (EU) is the subject of a licence which—
(a) authorises the doing of acts in the United Kingdom which would otherwise infringe the protected international registered design (EU), and
(b) does not expire on IP completion day (a “relevant licence”).
(2) Subject to any agreement to the contrary between the licensee and the licensor, a relevant licence continues to authorise the doing of acts which would otherwise infringe the re-registered international design which derives from the protected international registered design (EU).
(3) Sub-paragraph (2) is subject to the terms on which the relevant licence was granted, subject to such modifications as are necessary for their application in the United Kingdom.
(4) Section 19 (registration of assignments, etc.) applies in relation to a relevant licence as if it were a licence of the re-registered international design deriving from the protected international registered design (EU) which is subject to the relevant licence, subject to the following modification.
(5) Section 19(5) does not apply to the licence until after the expiry of the period of 12 months beginning with the day after that on which IP completion day falls.
Security interests in protected ... international registered designs (EU)
7 (1) This paragraph applies where immediately before IP completion day a protected international registered design (EU) is the subject of an interest which has been granted as security and does not expire on IP completion day (a “relevant security interest”).
(2) References to the protected international registered design (EU), or the international registration to which the protected international registered design (EU) is subject, in any document which grants or refers to the relevant security interest are to be read as including references to the re-registered international design which derives from the protected international registered design (EU).
(3) Section 19 (registration of assignments, etc.) applies in relation to a relevant security interest as if it were a security interest granted in respect of the re-registered design deriving from the protected international registered design (EU) which is subject to the relevant security interest, subject to the following modification.
(4) Section 19(5) does not apply to the interest until after the expiry of 12 months beginning with the day after that on which IP completion day falls.
Continuity of rights in relation to a protected international registered design (EU)
8 (1) References to a protected international registered design (EU), or the international registration to which a protected international registered design (EU) is subject, in any document entered into before IP completion day shall, unless there is evidence that the document was not intended to have effect in the United Kingdom, be read on and after IP completion day as including references to the re-registered international design or the registration of the re-registered international design which derives from the protected international registered design (EU).
(2) Subject to any agreement to the contrary, a consent granted before IP completion day by the holder of the international registration to which a protected international registered design (EU) is subject to the doing on or after IP completion day of an act in the United Kingdom which would otherwise infringe the re-registered international design which derives from the protected international registered design (EU) is to be treated for the purposes of section 7A as a consent to the doing of that act granted by the registered proprietor of the re-registered international design.
Pending proceedings concerning a protected international registered design (EU)
9 (1) This paragraph applies where on IP completion day a protected international registered design (EU) is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 80 (“a Community design court”).
(2) Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Title IX of the Community Design Regulation (with the exceptions of Articles 86(2), (4), (5) and 91) shall continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from IP completion day.
(3) Where the pending proceedings involve a claim for infringement or for threatened infringement of a protected international registered design (EU), without prejudice to any other relief by way of damages, accounts or otherwise available to the holder of the international registration to which the protected international registered design (EU) is subject, the Community design court may grant an injunction to prohibit unauthorised use of the re-registered international design which derives from the protected international registered design (EU).
(4) Where the pending proceedings involve a counterclaim for a declaration of invalidity in relation to a protected international registered design (EU), the Community design court may declare the registration of the re-registered international design which derives from the protected international registered design (EU) to be invalid (wholly or in part).
(5) Where the registration of a re-registered international design is declared invalid to any extent, the registration shall to that extent be treated as having been invalid from the date of registration or from such other date as the court may direct.
(6) For the purposes of this paragraph proceedings are treated as pending on IP completion day if they were instituted but not finally determined before IP completion day.
Effect of injunction protecting a protected international registered design (EU)
10 (1) This paragraph applies where immediately before IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe a protected international registered design (EU) (a “relevant injunction”).
(2) Subject to any order of the court to the contrary, a relevant injunction will have effect and be enforceable to prohibit the performance of acts which infringe or would infringe the right in a re-registered international design to the same extent as in relation to the protected international registered design (EU) from which the re-registered international design derives as if it were an injunction granted by the court.
PART 2 International registrations in respect of which the period for refusal has not expired before IP completion day etc
11 (1) In this Part references to a “pending international design (EU)” are to a design which, immediately before IP completion day, meets the requirements of sub-paragraph (2).
(2) The requirements referred to in sub-paragraph (1) are—
(a) the design is the subject of an international registration which designates the European Union;
(b) the design is not the subject of—
(i) a refusal by the European Union Intellectual Property Office pursuant to Article 106e(1) of the Community Design Regulation; or
(ii) a statement by the European Union Intellectual Property Office under Rule 18bis of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement to the effect that protection is granted in relation to it;
(c) the international registration to which the design is subject—
(i) has not been published by the International Bureau pursuant to Article 10(3) of the Geneva Act; or
(ii) has been published by the International Bureau but the period under Article 106e(1) of the Community Design Regulation for communicating to the International Bureau a notification of refusal in respect of the international registration has not expired.
12 (1) Where the holder of the international registration to which a pending international design (EU) is subject, or a successor in title of that person, makes an application for registration of the same design under this Act within a period beginning with IP completion day and ending with the end of the relevant period, the relevant date for the purposes of establishing whether (or to what extent) the design which is the subject of the application under this Act is new or has individual character is the earliest of—
(a) the date on which the international registration was treated as registered pursuant to Article 10(2) of the Geneva Act;
(b) the date of priority (if any) claimed under Article 41 of the Community Design Regulation as applied by Article 106a of that Regulation in respect of the pending international design (EU).
(2) In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which IP completion day falls.
(3) For the purposes of this Act—
(a) where an application is made of the type referred to in sub-paragraph (1) within the period referred to in that sub-paragraph, the date of the application is the date on which the international registration to which the pending international design (EU) is subject was treated as registered pursuant to Article 10(2) of the Geneva Act, and
(b) where the registrar registers a design which is the subject of an application of the type referred to in sub-paragraph (1) which is made within the period referred to in that sub-paragraph, the date of registration of the design is the date on which the international registration to which the pending international design (EU) is subject was treated as registered pursuant to Article 10(2) of the Geneva Act.
(4) Accordingly section 3C does not apply in relation to the design.
PART 3 Treatment of international registered designs whose registrations expire during the period of six months ending on IP completion day
Application of Part
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 IP completion day.
Renewal of registration of an expired international design
14 (1) Where within the period beginning with IP 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 IP 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 IP 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 IP completion day falls.
PART 4 Interpretation
Interpretation
15 (1) In this Schedule—
“the Community Design Regulation” has the meaning given by paragraph 1(9);
“expired international design” has the meaning given by paragraph 13(1);
“the Geneva Act” has the meaning given by paragraph 1(9);
“the International Bureau” has the meaning given by paragraph 1(9);
“international registration” has the meaning given by paragraph 1(9);
“protected international registered design (EU)” has the meaning given by paragraph 1(1);
“re-registered international design” has the meaning given by paragraph 1(4).
(2) For the purposes of paragraphs 1(2)(b) and 11(2)(c), where the international registration to which a design is subject has not been published in its entirety but the design itself has been by virtue of a request made under Article 11(4)(a) of the Geneva Act, the international registration is to be treated as having been published.