Registered Designs Act 1949

Register of designs, etc . U.K.

[F1 17 Register of designs etc. U.K.

(1) The registrar shall maintain the register of designs, in which shall be entered—

(a) the names and addresses of proprietors of registered designs;

(b) notices of assignments and of transmissions of registered designs; and

(c) such other matters as may be prescribed or as the registrar may think fit.

(2) No notice of any trust, whether express, implied or constructive, shall be entered in the registrar of designs, and the registrar shall not be affected by any such notice.

(3) The register need not be kept in documentary form.

(4) Subject to the provisions of this Act and to rules made by the Secretary of State under it, the public shall have a right to inspect the register at the Patent Office at all convenient times.

(5) Any person who applies for a certified copy of an entry in the register or a certified extract from the register shall be entitled to obtain such a copy or extract on payment of a fee prescribed in relation to certified copies and extracts; and rules made by the Secretary of State under this Act may provide that any person who applies for an uncertified copy or extract shall be entitled to such a copy or extract on payment of a fee prescribed in relation to uncertified copies and extracts.

(6) Applications under subsection (5) above or rules made by virtue of that subsection shall be made in such manner as may be prescribed.

(7) In relation to any portion of the register kept otherwise than in documentary form—

(a) the right of inspection conferred by subsection (4) above is a right to inspect the material on the register; and

(b) the right to a copy or extract conferred by subsection (5) above or rules is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible.

(8) F2 ... the register shall be prima facie evidence of anything required or authorised by this Act to be entered in it and in Scotland shall be sufficient evidence of any such thing.

(9) A certificate purporting to be signed by the registrar and certifying that any entry which he is authorised by or under this Act to make has or has not been made, or that any other thing which he is so authorised to do has or has not been done, shall be prima facie evidence, and in Scotland shall be sufficient evidence, of the matters so certified.

(10) Each of the following—

(a) a copy of an entry in the register or an extract from the register which is supplied under subsection (5) above;

(b) a copy of any representation, specimen or document kept in the Patent Office or an extract from any such document,

which purports to be a certified copy or certified extract shall F3 ... be admitted in evidence without further proof and without production of any original; and in Scotland such evidence shall be sufficient evidence.

F4 ( 11 ) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(12) In this section “ certified copy ” and “ certified extract ” mean a copy and extract certified by the registrar and sealed with the seal of the Patent Office. ]

Textual Amendments

F1 S. 17 substituted by Patents, Designs and Marks Act 1986 (c. 39, SIF 67A), s. 1, Sch. 1 para. 3

F2 Words in s. 17(8) repealed (4.4.2005) by Criminal Justice Act 2003 (c. 44), s. 336(3)(4), Sch. 37 Pt. 6; S.I. 2005/950, art. 2(1), Sch. 1 para. 44(3) (with Sch. 2) (as explained (29.7.2005) by S.I. 2005/2122, art. 2; and as amended: (14.7.2008) by 2008 c. 4, Sch. 26 para. 78, Sch. 28 Pt. 2; S.I. 2008/1586, Sch. 1 paras. 48(s), 50(2)(d); (30.11.2009) by S.I. 2009/3111, art. 2; (3.12.2012) by S.I. 2012/2905, art. 4; (3.12.2012) by 2012 c. 10, Sch. 14 para. 17; S.I. 2012/2906, art. 2(l))

F3 Words in s. 17(10) repealed (4.4.2005) by Criminal Justice Act 2003 (c. 44), s. 336(3)(4), Sch. 37 Pt. 6; S.I. 2005/950, art. 2(1), Sch. 1 para. 44(3) (with Sch. 2) (as explained (29.7.2005) by S.I. 2005/2122, art. 2; and as amended: (14.7.2008) by 2008 c. 4, Sch. 26 para. 78, Sch. 28 Pt. 2; S.I. 2008/1586, Sch. 1 paras. 48(s), 50(2)(d); (30.11.2009) by S.I. 2009/3111, art. 2; (3.12.2012) by S.I. 2012/2905, art. 4; (3.12.2012) by 2012 c. 10, Sch. 14 para. 17; S.I. 2012/2906, art. 2(l))

F4 S. 17(11) repealed (14.4.2000) by 1999 c. 23, s. 67, Sch. 6 (with Sch. 7 para. 5(2)); S.I. 2000/1034, art. 2(c), Sch.

18 Certificate of registration. U.K.

(1) The registrar shall grant a certificate of registration in the prescribed form to the registered proprietor of a design when the design is registered.

(2) The registrar may, in a case where he is satisfied that the certificate of registration has been lost or destroyed, or in any other case in which he thinks it expedient, furnish one or more copies of the certificate.

19 Registration of assignments, etc. U.K.

(1) Where any person becomes entitled by assignment, transmission or operation of law to a registered design or to a share in a registered design, or becomes entitled as mortgagee, licensee or otherwise to any other interest in a registered design, he shall apply to the registrar in the prescribed manner for the registration of his title as proprietor or co—proprietor or, as the case may be, of notice of his interest, in the register of designs.

(2) Without prejudice to the provisions of the foregoing subsection, an application for the registration of the title of any person becoming entitled by assignment to a registered design or a share in a registered design, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in a registered design, may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.

(3) Where application is made under this section for the registration of the title of any person, the registrar shall, upon proof of title to his satisfaction—

(a) where that person is entitled to a registered design or a share in a registered design, register him in the register of designs as proprietor or co—proprietor of the design, and enter in that register particulars of the instrument or event by which he derives title; or

(b) where that person is entitled to any other interest in the registered design, enter in that register notice of his interest, with particulars of the instrument (if any) creating it.

F5 (3A) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(3B) Where [F6 national unregistered design right] subsists in a registered design and the proprietor of the registered design is also the design right owner, an assignment of the [F6 national unregistered design right] shall be taken to be also an assignment of the right in the registered design, unless a contrary intention appears.

F7 (4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(5) Except for the purposes of an application to rectify the register under the following provisions of this Act, a document in respect of which no entry has been made in the register of designs under subsection (3) of this section shall not be admitted in any court as evidence of the title of any person to a registered design or share of or interest in a registered design unless the court otherwise directs.

Textual Amendments

F5 S. 19(3A) omitted (1.10.2014) by virtue of Intellectual Property Act 2014 (c. 18), ss. 9(1), 24(1); S.I. 2014/2330, art. 3, Sch.

F6 Words in s. 19(3A)(3B) substituted (9.12.2001) by S.I. 2001/3949, reg. 9(1), Sch. 1 para. 6(2)(3) (with transitional provisions in regs. 10-14)

F7 S. 19(4) repealed (29.4.2006) by Intellectual Property (Enforcement, etc) Regulations 2006 (S.I. 2006/1028), art. 1, Sch. 4

20 Rectification of register. U.K.

(1) The court may, on the application of [F8 the relevant person], order the register of designs to be rectified by the making of any entry therein or the variation or deletion of any entry therein.

[F9 (1A) In subsection (1) above “the relevant person” means—

(a) in the case of an application invoking any ground referred to in [F10 section 11ZA(1)(c)] of this Act, any person concerned by the use in question;

(b) in the case of an application invoking the ground mentioned in [F11 section 11ZA(1A)] of this Act, the appropriate person;

(c) in the case of an application invoking any ground mentioned in section 11ZA(2), (3) or (4) of this Act, the person able to make the objection;

(d) in any other case, any person aggrieved.

(1B) In subsection (1A) above “the appropriate person” means, in relation to an earlier design protected by virtue of registration under this Act[F12 or the Community Design Regulation] or an application for such registration, the registered proprietor of the design[F13 , the holder of the registered Community design] or (as the case may be) the applicant.]

(2) In proceedings under this section the court may determine any question which it may be necessary or expedient to decide in connection with the rectification of the register.

(3) Notice of any application to the court under this section shall be given in the prescribed manner to the registrar, who shall be entitled to appear and be heard on the application, and shall appear if so directed by the court.

(4) Any order made by the court under this section shall direct that notice of the order shall be served on the registrar in the prescribed manner; and the registrar shall, on receipt of the notice, rectify the register accordingly.

[F14 (5) A rectification of the register under this section has effect as follows—

(a) an entry made has effect from the date on which it should have been made,

(b) an entry varied has effect as if it had originally been made in its varied form, and

(c) an entry deleted shall be deemed never to have had effect,

unless, in any case, the court directs otherwise.]

[F15 (6) Orders which may be made by the court under this section include, in particular, declarations of partial invalidity.]

Textual Amendments

F8 Words in s. 20(1) substituted (9.12.2001) by S.I. 2001/3949, reg. 8(2) (with transitional provisions in regs. 10-14)

F9 S. 20(1A)(1B) inserted (9.12.2001) by S.I. 2001/3949, reg. 8(3) (with transitional provisions in regs. 10-14)

F10 Words in s. 20(1A)(a) substituted (1.10.2006) by Regulatory Reform (Registered Designs) Order 2006 (S.I. 2006/1974), arts. 1(1), 10(2) (with art. 18)

F11 Words in s. 20(1A)(b) substituted (1.10.2006) by Regulatory Reform (Registered Designs) Order 2006 (S.I. 2006/1974), arts. 1(1), 10(3) (with art. 18)

F12 Words in s. 20(1B) inserted (1.4.2003) by Registered Designs Regulations 2003 (S.I. 2003/550), regs. 1(1), 2(4)(a) (with regs. 3-5)

F13 Words in s. 20(1B) inserted (1.4.2003) by Registered Designs Regulations 2003 (S.I. 2003/550), regs. 1(1), 2(4)(b) (with regs. 3-5)

F14 S. 20(5) added by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 11

F15 S. 20(6) added (9.12.2001) by S.I. 2001/3949, reg. 8(4) (with transitional provisions in regs. 10-14)

21 Power to correct clerical errors. U.K.

(1) The registrar may, in accordance with the provisions of this section, correct any error in an application for the registration or in the representation of a design, or any error in the register of designs.

(2) A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.

(3) Where the registrar proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the registered proprietor or the applicant for registration of the design, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity to be heard before making the correction.

22

[F16 (1) Where a design has been registered under this Act, there shall be open to inspection at the Patent Office on and after the day on which the certificate of registration is [F17 granted]—

(a) the representation or specimen of the design, F18 . . .

F18 ( b ) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

This subsection has effect subject to [F19 subsection (4)] and to any rules made under section 5(2) of this Act.]

F20 (2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F20 (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

[F21 (4) Where registration of a design has been refused pursuant to an application under this Act, or an application under this Act has been abandoned in relation to any design—

(a) the application, so far as relating to that design, and

(b) any representation, specimen or other document which has been filed and relates to that design,

shall not at any time be open to inspection at the Patent Office or be published by the registrar.]

Textual Amendments

F16 S. 22(1) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 12(2)

F17 Word in s. 22(1) substituted (1.10.2006) by Regulatory Reform (Registered Designs) Order 2006 (S.I. 2006/1974), arts. 1(1), 16(2)(a)

F18 S. 22(1)(b) and preceding “and” repealed (9.12.2001) by S.I. 2001/3949, reg. 9(2), Sch. 2 (with transitional provisions in regs. 10-14)

F19 Words in s. 22(1) substituted (1.10.2006) by Regulatory Reform (Registered Designs) Order 2006 (S.I. 2006/1974), arts. 1(1), 16(2)(b) (with art. 19)

F20 S. 22(2)(3) omitted (1.10.2006) by virtue of Regulatory Reform (Registered Designs) Order 2006 (S.I. 2006/1974), arts. 1(1), 16(3) (with art. 19)

F21 S. 22(4) substituted (1.10.2006) by Regulatory Reform (Registered Designs) Order 2006 (S.I. 2006/1974), arts. 1(1), 15

[F22 23 Information as to existence of right in registered design. U.K.

On the request of a person furnishing such information as may enable the registrar to identify the design, and on payment of the prescribed fee, the registrar shall inform him—

(a) whether the design is registered F23 . . ., and

(b) whether any extension of the period of the right in the registered design has been granted,

and shall state the date of registration and the name and address of the registered proprietor.]

Textual Amendments

F22 S. 23 substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 272, Sch. 3 para. 13

F23 Words in s. 23(a) repealed (9.12.2001) by S.I. 2001/3949, reg. 9(2), Sch. 2 (with transitional provisions in regs. 10-14)

[F24 24A Action for infringement U.K.

(1) An infringement of the right in a registered design is actionable by the registered proprietor.

(2) In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to him as is available in respect of the infringement of any other property right.

(3) This section has effect subject to section 24B of this Act (exemption of innocent infringer from liability).

Textual Amendments

F24 Ss. 24A-24G inserted (29.4.2006) by Intellectual Property (Enforcement, etc) Regulations 2006 (S.I. 2006/1028), art. 1, Sch. 1 para. 3

24B Exemption of innocent infringer from liability U.K.

(1) In proceedings for the infringement of the right in a registered design damages shall not be awardedF25 ... against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered.

(2) For the purposes of subsection (1), a person shall not be deemed to have been aware or to have had reasonable grounds for supposing that the design was registered by reason only of the marking of a product with—

(a) the word “registered” or any abbreviation thereof, or

(b) any word or words expressing or implying that the design applied to, or incorporated in, the product has been registered,

unless the number of the design accompanied the word or words or the abbreviation in question.

(3) Nothing in this section shall affect the power of the court to grant an injunction in any proceedings for infringement of the right in a registered design.

Textual Amendments

F24 Ss. 24A-24G inserted (29.4.2006) by Intellectual Property (Enforcement, etc) Regulations 2006 (S.I. 2006/1028), art. 1, Sch. 1 para. 3

F25 Words in s. 24B(1) omitted (1.10.2014) by virtue of Intellectual Property Act 2014 (c. 18), ss. 10(1), 24(1); S.I. 2014/2330, art. 3, Sch.

24C Order for delivery up U.K.

(1) Where a person—

(a) has in his possession, custody or control for commercial purposes an infringing article, or

(b) has in his possession, custody or control anything specifically designed or adapted for making articles to a particular design which is a registered design, knowing or having reason to believe that it has been or is to be used to make an infringing article,

the registered proprietor in question may apply to the court for an order that the infringing article or other thing be delivered up to him or to such other person as the court may direct.

(2) An application shall not be made after the end of the period specified in the following provisions of this section; and no order shall be made unless the court also makes, or it appears to the court that there are grounds for making, an order under section 24D of this Act (order as to disposal of infringing article, &c.).

(3) An application for an order under this section may not be made after the end of the period of six years from the date on which the article or thing in question was made, subject to subsection (4).

(4) If during the whole or any part of that period the registered proprietor—

(a) is under a disability, or

(b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an order,

an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

(5) In subsection (4) “disability”—

(a) in England and Wales, has the same meaning as in the Limitation Act 1980;

(b) in Scotland, means legal disability within the meaning of the Prescription and Limitation (Scotland) Act 1973;

(c) in Northern Ireland, has the same meaning as in the Statute of Limitations (Northern Ireland) 1958.

(6) A person to whom an infringing article or other thing is delivered up in pursuance of an order under this section shall, if an order under section 24D of this Act is not made, retain it pending the making of an order, or the decision not to make an order, under that section.

(7) The reference in subsection (1) to an act being done in relation to an article for “commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business.

(8) Nothing in this section affects any other power of the court.

Textual Amendments

F24 Ss. 24A-24G inserted (29.4.2006) by Intellectual Property (Enforcement, etc) Regulations 2006 (S.I. 2006/1028), art. 1, Sch. 1 para. 3

24D Order as to disposal of infringing articles, &c U.K.

(1) An application may be made to the court for an order that an infringing article or other thing delivered up in pursuance of an order under section 24C of this Act shall be—

(a) forfeited to the registered proprietor, or

(b) destroyed or otherwise dealt with as the court may think fit,

or for a decision that no such order should be made.

(2) In considering what order (if any) should be made, the court shall consider whether other remedies available in an action for infringement of the right in a registered design would be adequate to compensate the registered proprietor and to protect his interests.

(3) Where there is more than one person interested in an article or other thing, the court shall make such order as it thinks just and may (in particular) direct that the thing be sold, or otherwise dealt with, and the proceeds divided.

(4) If the court decides that no order should be made under this section, the person in whose possession, custody or control the article or other thing was before being delivered up is entitled to its return.

(5) References in this section to a person having an interest in an article or other thing include any person in whose favour an order could be made in respect of it—

(a) under this section;

(b) under section 19 of Trade Marks Act 1994 (including that section as applied by regulation 4 of the Community Trade Mark Regulations 2006 (SI 2006/1027));

(c) under section 114, 204 or 231 of the Copyright, Designs and Patents Act 1988; or

(d) under regulation 1C of the Community Design Regulations 2005 (SI 2005/2339).

Textual Amendments

F24 Ss. 24A-24G inserted (29.4.2006) by Intellectual Property (Enforcement, etc) Regulations 2006 (S.I. 2006/1028), art. 1, Sch. 1 para. 3

24E Jurisdiction of county court and sheriff court U.K.

(1) In Northern Ireland a county court may entertain proceedings under the following provisions of this Act—

• section 24C (order for delivery up of infringing article, &c.),

• section 24D (order as to disposal of infringing article, &c.), or

• section 24F(8) (application by exclusive licensee having concurrent rights),

where the value of the infringing articles and other things in question does not exceed the county court limit for actions in tort.

(2) In Scotland proceedings for an order under any of those provisions may be brought in the sheriff court.

(3) Nothing in this section shall be construed as affecting the jurisdiction of the Court of Session or the High Court in Northern Ireland.

Textual Amendments

F24 Ss. 24A-24G inserted (29.4.2006) by Intellectual Property (Enforcement, etc) Regulations 2006 (S.I. 2006/1028), art. 1, Sch. 1 para. 3

24F Rights and remedies of exclusive licensee U.K.

(1) In relation to a registered design, an exclusive licensee has, except against the registered proprietor, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

(2) His rights and remedies are concurrent with those of the registered proprietor; and references to the registered proprietor in the provisions of this Act relating to infringement shall be construed accordingly.

(3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the registered proprietor.

(4) Where an action for infringement of the right in a registered design brought by the registered proprietor or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a claimant or added as a defendant.

(5) A registered proprietor or exclusive licensee who is added as a defendant in pursuance of subsection (4) is not liable for any costs in the action unless he takes part in the proceedings.

(6) Subsections (4) and (5) do not affect the granting of interlocutory relief on the application of the registered proprietor or an exclusive licensee.

(7) Where an action for infringement of the right in a registered design is brought which relates (wholly or partly) to an infringement in respect of which the registered proprietor and an exclusive licensee have concurrent rights of action—

(a) the court shall, in assessing damages, take into account—

(i) the terms of the licence, and

(ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;

(b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and

(c) the court shall if an account of profits is directed apportion the profits between them as the court considers just, subject to any agreement between them;

and these provisions apply whether or not the proprietor and the exclusive licensee are both parties to the action.

(8) The registered proprietor shall notify any exclusive licensee having concurrent rights before applying for an order under section 24C of this Act (order for delivery up of infringing article, &c); and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.

Textual Amendments

F24 Ss. 24A-24G inserted (29.4.2006) by Intellectual Property (Enforcement, etc) Regulations 2006 (S.I. 2006/1028), art. 1, Sch. 1 para. 3

24G Meaning of “infringing article” U.K.

(1) In this Act “infringing article”, in relation to a design, shall be construed in accordance with this section.

(2) An article is an infringing article if its making to that design was an infringement of the right in a registered design.

(3) An article is also an infringing article if—

(a) it has been or is proposed to be imported into the United Kingdom, and

(b) its making to that design in the United Kingdom would have been an infringement of the right in a registered design or a breach of an exclusive licensing agreement relating to that registered design.

(4) Where it is shown that an article is made to a design which is or has been a registered design, it shall be presumed until the contrary is proved that the article was made at a time when the right in the registered design subsisted.

(5) Nothing in subsection (3) shall be construed as applying to an article which may be lawfully imported into the United Kingdom by virtue of an enforceable Community right within the meaning of section 2(1) of the European Communities Act 1972.]

Textual Amendments

F24 Ss. 24A-24G inserted (29.4.2006) by Intellectual Property (Enforcement, etc) Regulations 2006 (S.I. 2006/1028), art. 1, Sch. 1 para. 3

24 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F26 U.K.

Textual Amendments

F26 S. 24 repealed by Patents, Designs and Marks Act 1986 (c. 39, SIF 67A), s. 3(1), Sch. 3 Pt. I