27 May 2010
The Registered Designs Act 1949 (as amended) provides for registration of new designs having individual character with the Intellectual Property Office. Registration confers upon the registered proprietor the exclusive right to the design and any design which does not produce on an informed user a different impression for up to 25 years.
Sources of Law
The basic statute is the Registered Designs Act 1949 as amended by the Copyright, Designs and Patents Act 1988, Registered Designs Regulations 2001, the Registered Designs Regulations 2003 and the Regulatory Reform Order 2006. This statute has to be read with the Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs) and construed so as to give effect to that legislation. S.36 of the 1949 Act enables the Secretary of State to make rules for various purposes set out in that section. The basic rules for design registration are The Registered Designs Rules 2006.
S.17 (1) of the 1949 Act requires the Comptroller-General of Patents, Designs and Trade Marks (“the registrar“) to maintain a register of designs recording the names and addresses of proprietors of registered designs (“registered proprietors”), notices of assignments and transmissions of registered designs and such other matters as may be prescribed from time to time or as the registrar may think fit.
Definition of Design
S.1 (2) defines “design” for the purposes of the Act as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation. A “product” is defined by s.1 (3) as any industrial or handicraft item other than a computer program. It includes, in particular, packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a “complex product”. Special provisions apply to such products.
S.1B (2) provides that for the purposes of sub-section (1), a design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date. The ”relevant date” means the date on which an application for the registration of the design was made or is treated as having been made. “Making available to the public” includes publication (whether following registration or otherwise), exhibition, use in trade or some other disclosure (other than one that has to be disregarded) (s.1B (5) (a)). It should be noted that s.1A (2) provides for a design to be refused registration on the ground that it is not new or does not have individual character when compared with a design which was been made available to the public on or after the relevant date if it is protected as from an earlier date by virtue of registration under the Act or an application for such registration.
S.1B (3) provides that a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date. In determining the extent to which a design has individual character, s.1B (4) requires the degree of freedom of the author in creating the design to be taken into consideration.
Title to the Design
Unless a design is created pursuant to a commission for money or money’s worth or by an employee in the course of his or her employment, the person who creates the design (“the author”) is treated as its original proprietor (s.2 (1)). If the design was commissioned the person commissioning it is the proprietor and if it was created by an employee in the course of his or her employment the employer is the proprietor. In the case of a computer generated design the author is the person who made the arrangements for the creation of the design.
Right conferred by Registration
S.7 (1) provides that registration of a design gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression. “Use” in this context includes making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes (s.7 (2)). S.7 (3) provides that in determining whether a design produces a different overall impression on an informed user, the degree of freedom of the author in creating his design shall be taken into consideration. It will be noted that the same criterion is to be taken into account when determining whether a design has individual character upon an application for registration.
Assignments and Licences
S.20 (4) of the Registered Designs Act 1949 provides that the person or persons registered as proprietor of a registered design has or have power to assign, grant licences under, or otherwise deal with the design, and to give effectual receipts for any consideration for any such assignment, licence or dealing. Such power if, of course, subject to the rights of any other person noted on the register and, while no trusts are noted on the register, any equities in respect of the registered design may be enforced in the same manner as they would in respect of any other personal property.
S.7A provides that the right in a registered design is infringed by a person who, without the consent of the registered proprietor, does anything which by virtue of s.7 is the exclusive right of the registered proprietor.
S.7A (2) provides that the Right in a Registered Design is not infringed by:
- anything done privately and for purposes which are not commercial;
- anything done for experimental purposes;
- reproduction for teaching purposes or making citations provided the conditions mentioned below are satisfied;
- using equipment on ships or aircraft which are registered in another country but are temporarily in the United Kingdom;
- importing spare parts or accessories into the United Kingdom for the purpose of repairing such ships or aircraft; or
- carrying out of repairs on such ships or aircraft.
The conditions mentioned in paragraph c above are that the act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design and mention is made of the source.
Exhaustion of Rights
S.7A (4) provides that the right in a registered design is not infringed by an act which relates to a product in which any design protected by the registration is incorporated or to which it is applied if that product has been put on the market in the European Economic Area by the registered proprietor or with his consent.
Claims for infringement of the right in a registered design must be brought in the Patents Court or the Patents County Court. CPR Part 63 and the Patents Court Guide apply to registered design proceedings as well as the Chancery Guide.
S.26 provides that any person who is aggrieved by circulars, advertisements or other threats of proceedings for infringement of the right in a registered design may bring an action (known as a “threats action“) against anyone making such threat claiming a declaration that the threats are unjustifiable, an injunction against continuance of those threats and any damages that may be sustained.
S.8 of the 1949 Act provides for a 5-year initial registration term renewable for successive periods to up to a total of 25 years.
Compulsory Licensing and Licences of Right
Compulsory licensing has been abolished by the 2001 Regulations. However, the registrar’s retains the right to cancel or vary conditions in a patent licence that in his or her opinion operate, or could well be expected to operate, against the public interest. The right of a defendant to undertake to take a licence of right that formerly existed under s.11B has also been abolished.
The only party who can now request cancellation of a registration is the registered proprietor provided he does so in the prescribed manner. A cancellation of registration under s. 11 of this Act takes effect from the date of the registrar’s decision or from such other date as he or she may direct (s.11ZE (1)).
Declarations of Invalidity
The same regulation inserts new ss.11ZA, 11ZB, 11ZC, 11ZD, 11ZE (2) and 11ZF which establish a new procedure by which a registration may be declared invalid in place of the former cancellation procedure. These provisions set out certain grounds upon which an application can be declared invalid some of which are restricted to persons having a specified interest. S.11ZF provides a right of appeal from the registrar’s decision.
Rectification of the Register by the Court
S.20 as amended enables the court to order the registrar to rectify the register. The grounds upon which rectification may be ordered are the same as for a declaration of invalidity. Just as certain specified persons can rely on some of those grounds in an application to the registrar. S.20 (1A) and (1B) restrict applications for rectification on specified grounds to specified applicants. A s.20 (6) permits the court to make a declaration of partial invalidity.
S.12 and Schedule 1 provide for Crown use of registered designs.
Proceedings before the Registrar
The registrar is required to notify any person likely to be affected adversely by the exercise of her discretion and giving him or her an opportunity to be heard (s.29).
It is an offence under s.33 of the Registered Designs Act 1949 to fail to comply with a direction relating to an application that is relevant for defence purposes or to apply to register such a design, to make or cause a false entry to appear on the register under s.34 or to claim falsely that a design has been registered when it has not under s.35.