GB004: Designs (Registered), Act (Consolidation), 16/12/1949 (30/04/1979)
Statutes in Force
FIRST SCHEDULE
Statutes in Force
Official Revised Edition
Registered Designs Act 1949
(12, 13 and 14 Geo. 6 c. 88)
Revised to 30th April 1979
BY AUTHORITY
LONDON
HER MAJESTY'S STATIONERY OFFICE
An Act to consolidate certain enactments relating to registered designs.
[16th December 1949]
Functions of Board of Trade and of President of Board of Trade now exercisable concurrently by Secretary of State: .S. I. 1970/1537, art. 2(1)
Registrable designs and proceedings for registration
Designs registrable under Act.
1.-
(1) Subject to the following provisions of this section, a design may, upon application made by the person claiming to be the proprietor, be registered under this Act in respect of any article or set of articles specified in the application.
(2) Subject to the provisions of this Act, a design shall not be registered thereunder unless it is new or original and in particular shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered or published in the United Kingdom in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variants commonly used in the trade.
(3) In this Act the expression "design" means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.
(4) Rules made by the Board of Trade under this Act may provide for excluding from registration thereunder designs for such articles, being articles which are primarily literary or artistic in character, as the Board think fit.
Proprietorship of designs.
2.-
(1) Subject to the provisions of this section, the author of a design shall be treated for the purposes of this Act as the proprietor of the design:
Provided that where the design is executed by the author for another person for good consideration, that other person shall be treated for the purposes of this Act as the proprietor.
(2) Where a design, or the right to apply a design to any article, becomes vested, whether by assignment, transmission or operation of law, in any person other than the original proprietor, either alone or jointly with the original proprietor, that other person, or as the case may be the original proprietor and that other person, shall be treated for the purposes of this Act as the proprietor of the design or as the proprietor of the design in relation to that article.
Proceedings for registration.
3.-
(1) An application for the registration of a design shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner.
(2) For the purpose of deciding whether a design is new or original, the registrar may make such searches, if any, as he thinks fit.
(3) The registrar may refuse any application for the registration of a design or may register the design in pursuance of the application subject to such modifications, if any, as he thinks fit.
(4) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within such time as may be prescribed shall be deemed to be abandoned.
(5) Except as otherwise expressly provided by this Act, a design when registered shall be registered as of the date on which the application for registration was made, or such other date (whether earlier or later than that date) as the registrar may in any particular case direct:
Provided that no proceedings shall be taken in respect of any infringement committed before the date on which the certificate of registration of the design under this Act is issued.
(6) An appeal shall lie from any decision of the registrar under subsection (3) of this section.
Registration of same design in respect of other articles, etc.
4.-
(1) Where the registered proprietor of a design registered in respect of any article makes an application-
(a) for registration in respect of one or more other articles, of the registered design, or
(b) for registration in respect of the same or one or more other articles, of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof,
the application shall not be refused and the registration made on that application shall not be invalidated by reason only of the previous registration or publication of the registered design:
Provided that the period of copyright in a design registered by virtue of this section shall not extend beyond the expiration of the original and any extended period of copyright in the original registered design.
(2) Where any person makes an application for the registration of a design in respect of any article and either-
(a) that design has been previously registered by another person in respect of some other article; or
(b) the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof,
then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of this section shall apply as if at the time of making the application the applicant had been the registered proprietor of that design.
Provisions for secrecy of certain designs.
5.-
(1) Where, either before or after the commencement of this Act, an application for the registration of a design has been made, and it appears to the registrar that the design is one of a class notified to him by a competent authority as relevant for defence purposes, he may give directions for prohibiting or restricting the publication of information with respect to the design, or the communication of such information to any person or class of persons specified in the directions.
(2) Rules shall be made by the Board of Trade under this Act for securing that the representation or specimen of a design in the case of which directions are given under this section shall not be open to inspection at the Patent Office during the continuance in force of the directions.
(3) Where the registrar gives any such directions as aforesaid, he shall give notice of the application and of the directions to a competent authority, and thereupon the following provisions shall have effect, that is to say:-
(a) the competent authority shall, upon receipt of such notice, consider whether the publication of the design would be prejudicial to the defence of the realm and unless a notice under paragraph (c) of this subsection has previously been given by that authority to the registrar, shall reconsider that question before the expiration of nine months from the date of filing of the application for registration of the design and at least once in every subsequent year;
(b) for the purpose aforesaid, the competent authority may, at any time after the design has been registered or, with the consent of the applicant, at any time before the design has been registered, inspect the representation or specimen of the design filed in pursuance of the application;
(c) if upon consideration of the design at any time it appears to the competent authority that the publication of the design would not, or would no longer, be prejudicial to the defence of the realm, that authority shall give notice to the registrar to that effect;
(d) on the receipt of any such notice the registrar shall revoke the directions and may, subject to such conditions, if any, as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application or registration, whether or not that time has previously expired.
(4) No person resident in the United Kingdom shall, except under the authority of a written permit granted by or on behalf of the registrar, make or cause to be made any application outside the United Kingdom for the registration of a design of any class prescribed for the purposes of this subsection unless-
(a) an application for registration of the same design has been made in the United Kingdom not less than six weeks before the application outside the United Kingdom; and
(b) either no directions have been given under subsection (1) of this section in relation to the application in the United Kingdom or all such directions have been revoked:
Provided that this subsection shall not apply in relation to a design for which an application for protection has first been filed in a country outside the United Kingdom by a person resident outside the United Kingdom.
(5) In this section the expression "competent authority" means a Secretary of State, the Admiralty or the Minister of Supply.
Reference to Admiralty to be construed as reference to Secretary of State: Defence (Transfer of Functions) Act 1964 (c. 15), ss. 1(2), 3(2)
Provisions as to confidential disclosure, etc.
6.-
(1) An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of-
(a) the disclosure of the design by the proprietor to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design;
(b) the disclosure of the design in breach of good faith by any person other than the proprietor of the design; or
(c) in the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design.
(2) An application for the registration of a design shall not be refused and the registration of a design shall not be invalidated by reason only-
(a) that a representation of the design, or any article to which the design has been applied, has been displayed, with the consent of the proprietor of the design, at an exhibition certified by the Board of Trade for the purposes of this subsection;
(b) that after any such display as aforesaid, and during the period of the exhibition, a representation of the design or any such article as aforesaid has been displayed by any person without the consent of the proprietor; or
(c) that a representation of the design has been published in consequence of any such display as is mentioned in paragraph (a) of this subsection,
if the application for registration of the design is made not later than six months after the opening of the exhibition.
(3) An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of the communication of the design by the proprietor thereof to a Government department or to any person authorised by a Government department to consider the merits of the design, or of anything done in consequence of such a communication.
1956 c. 74.
[1(4) Where copyright under the Copyright Act 1956, subsists in an artistic work, and an application is made by, or with the consent of, the owner of that copyright for the registration of a corresponding design, that design shall not be treated for the purposes of this Act as being other than new or original by reason only of any use previously made of the artistic work, unless-
(a) the previous use consisted of or included the sale, letting for hire, or offer for sale or hire of articles to which the design in question (or a design differing from it only as mentioned in subsection (2) of section one of this Act) had been applied industrially, other than articles of a description specified in rules made under subsection (4) of section one of this Act, and
(b) that previous use was made by, or with the consent of, the owner of the copyright in the artistic work.
(5) Any rules made by virtue of subsection (5) of section ten of the Copyright Act 1956 (which relates to rules for determining the circumstances in which a design is to be taken to be applied industrially) shall apply for the purposes of the last foregoing subsection.]
Effect of registration, etc.
Right given by registration.
7.-
(1) The registration of a design under this Act shall give to the registered proprietor the copyright in the registered design, that is to say, the exclusive right in the United Kingdom and the Isle of Man to make or import for sale or for use for the purposes of any trade or business, or to sell, hire or offer for sale or hire, any article in respect of which the design is registered, being an article to which the registered design or a design not substantially different from the registered design has been applied, and to make anything for enabling any such article to be made as aforesaid, whether in the United Kingdom or the Isle of Man or elsewhere.
1947 c. 44.
(2) Subject to the provisions of this Act and of subsection (3) of section three of the Crown Proceedings Act 1947, the registration of a design shall have the same effect against the Crown as it has against a subject.
Period of copyright.
8.-
(1) Copyright in a registered design shall, subject to the provisions of this Act, subsist for a period of five years from the date of registration.
(2) The registrar shall extend the period of copyright for a second period of five years from the expiration of the original period and for a third period of five years from the expiration of the second period if an application for extension of the period of copyright for the second or third period is made in the prescribed form before the expiration of the original period or the second period, as the case may be, and if the prescribed fee is paid before the expiration of the relevant period or [2if such application is made and the said fee is paid] within such further period (not exceeding [3six months)] as may be specified in a request made to the registrar and accompanied by the prescribed additional fee.
1956 c. 74.
[4(3) Where in the case of a registered design it is shown-
(a) that the design, at the time when it was registered, was a corresponding design in relation to an artistic work in which copyright subsisted under the Copyright Act 1956;
(b) that, by reason of a previous use of that artistic work, the design would not have been registrable under this Act but for subsection (4) of section six of this Act; and
(c) that the copyright in that work under the Copyright Act 1956, expired before the date of expiry of the copyright in the design,
the copyright in the design shall, notwithstanding anything in this section, be deemed to have expired at the same time as the copyright in the artistic work, and shall not be renewable after that time.]
Exemption of innocent infringer from liability for damages.
9.-
(1) In proceedings for the infringement of copyright in a registered design damages shall not be awarded against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered; and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the marking of an article with the word "registered" or any abbreviation thereof, or any word or words expressing or implying that the design applied to the article has been registered, unless the number of the design accompanied the word or words or the abbreviation in question.
(2) Nothing in this section shall affect the power of the court to grant an injunction in any proceedings for infringement of copyright in a registered design.
Compulsory licence in respect of registered design.
10.-
(1) At any time after a design has been registered any person interested may apply to the registrar for the grant of a compulsory licence in respect of the design on the ground that the design is not applied in the United Kingdom by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case; and the registrar may make such order on the application as he thinks fit.
(2) An order for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed executed by the registered proprietor and all other necessary parties, granting a licence in accordance with the order.
(3) No order shall be made under this section which would be at variance with any treaty, convention, arrangement or engagement applying to the United Kingdom and any convention country.
(4) An appeal shall lie from any order of the registrar under this section.
Cancellation of registration.
11.-
(1) The registrar may, upon a request made in the prescribed manner by the registered proprietor, cancel the registration of a design.
(2) At any time after a design has been registered any person interested may apply to the registrar for the cancellation of the registration of the design on the ground that the design was not, at the date of the registration thereof, new or original, or on any other ground on which the registrar could have refused to register the design; and the registrar may make such order on the application as he thinks fit.
[5(2A) At any time after a design has been registered, any person interested may apply to the registrar for the cancellation of the registration of the design on the grounds-
1956 c. 74.
(a) that the design, at the time when it was registered, was a corresponding design in relation to an artistic work in which copyright subsisted under the Copyright Act 1956;
(b) that, by reason of a previous use of that artistic work, the design would not have been registrable under this Act but for subsection (4) of section six of this Act; and
(c) that the copyright in that work under the Copyright Act 1956, has expired;
and the registrar may make such order on the application as he thinks fit.]
(3) An appeal shall lie from any order of the registrar under [6either of the two last foregoing subsections.]
Use for services of the Crown.
12. The provisions of the First Schedule to this Act shall have effect with respect to the use of registered designs for the services of the Crown and the rights of third parties in respect of such use.
S. 12 extended by S.I. 1965/1536, Sch. 3
International Arrangements
Orders in Council as to convention countries.
13.-
(1) His Majesty may, with a view to the fulfilment of a treaty, convention, arrangement or engagement, by Order in Council declare that any country specified in the Order is a convention country for the purposes of this Act:
Provided that a declaration may be made as aforesaid for the purposes either of all or of some only of the provisions of this Act, and a country in the case of which a declaration made for the purposes of some only of the provisions of this Act is in force shall be deemed to be a convention country for the purposes of those provisions only.
(2) His Majesty may by Order in Council direct that any of the Channel Islands, any colony, any British protectorate or protected state, or any territory administered by His Majesty's Government in the United Kingdom under the trusteeship system of the United Nations, shall be deemed to be a convention country for the purposes of all or any of the provisions of this Act; and an Order made under this subsection may direct that any such provisions shall have effect, in relation to the territory in question, subject to such conditions or limitations, if any, as may be specified in the Order.
(3) For the purposes of subsection (1) of this section, every colony, protectorate, territory subject to the authority or under the suzerainty of another country, and territory administered by another country in accordance with a mandate from the League of Nations or under the trusteeship system of the United Nations, shall be deemed to be a country in the case of which a declaration may be made under that subsection.
Registration of design where application for protection in convention country has been made.
14.-
(1) An application for registration of a design in respect of which protection has been applied for in a convention country may be made in accordance with the provisions of this Act by the person by whom the application for protection was made or his personal representative or assignee:
Provided that no application shall be made by virtue of this section after the expiration of six months from the date of the application for protection in a convention country or, where more than one such application for protection has been made, from the date of the first application.
(2) A design registered on an application made by virtue of this section shall be registered as of the date of the application for protection in the convention country or, where more than one such application for protection has been made, the date of the first such application:
Provided that no proceedings shall be taken in respect of any infringement committed before the date on which the certificate of registration of the design under this Act is issued.
(3) An application for the registration of a design made by virtue of this section shall not be refused, and the registration of a design on such an application shall not be invalidated, by reason only of the registration or publication of the design in the United Kingdom or the Isle of Man during the period specified in the proviso to subsection (1) of this section as that within which the application for registration may be made.
(4) Where a person has applied for protection for a design by an application which-
(a) in accordance with the terms of a treaty subsisting between two or more convention countries, is equivalent to an application duly made in any one of those convention countries; or
(b) in accordance with the law of any convention country, is equivalent to an application duly made in that convention country,
he shall be deemed for the purposes of this section to have applied in that convention country.
Extension of time for applications under s. 14 in certain cases.
15.-
(1) If the Board of Trade are satisfied that provision substantially equivalent to the provision to be made by or under this section has been or will be made under the law of any convention country, they may make rules empowering the registrar to extend the time for making application under subsection (1) of section fourteen of this Act for registration of a design in respect of which protection has been applied for in that country in any case where the period specified in the proviso to that subsection expires during a period prescribed by the rules.
(2) Rules made under this section-
(a) may, where any agreement or arrangement has been made between His Majesty's Government in the United Kingdom and the government of the convention country for the supply or mutual exchange of information or articles, provide, either generally or in any class of case specified in the rules, that an extension of time shall not be granted under this section unless the design has been communicated in accordance with the agreement or arrangement;
(b) may, either generally or in any class of case specified in the rules, fix the maximum extension which may be granted under this section;
(c) may prescribe or allow any special procedure in connection with applications made by virtue of this section;
(d) may empower the registrar to extend, in relation to an application made by virtue of this section, the time limited by or under the foregoing provisions of this Act for doing any act, subject to such conditions, if any, as may be imposed by or under the rules;
(e) may provide for securing that the rights conferred by registration on an application made by virtue of this section shall be subject to such restrictions or conditions as may be specified by or under the rules and in particular to restrictions and conditions for the protection of persons (including persons acting on behalf of His Majesty) who, otherwise than as the result of a communication made in accordance with such an agreement or arrangement as is mentioned in paragraph (a) of this subsection, and before the date of the application in question or such later date as may be allowed by the rules, may have imported or made articles to which the design is applied or may have made an application for registration of the design.
Protection of designs communicated under international agreements.
16.-
(1) Subject to the provisions of this section, the Board of Trade may make rules for securing that, where a design has been communicated in accordance with an agreement or arrangement made between His Majesty's Government in the United Kingdom and the government of any other country for the supply or mutual exchange of information or articles,-
(a) an application for the registration of the design made by the person from whom the design was communicated or his personal representative or assignee shall not be prejudiced, and the registration of the design in pursuance of such an application shall not be invalidated, by reason only that the design has been communicated as aforesaid or that in consequence thereof-
(ii) an application for registration of the design has been made by any other person, or the design has been registered on such an application;
(b) any application for the registration of a design made in consequence of such a communication as aforesaid may be refused and any registration of a design made on such an application may be cancelled.
(2) Rules made under subsection (1) of this section may provide that the publication or application of a design, or the making of any application for registration thereof shall, in such circumstances and subject to such conditions or exceptions as may be prescribed by the rules, be presumed to have been in consequence of such a communication as is mentioned in that subsection.
(3) The powers of the Board of Trade under this section, so far as they are exercisable for the benefit of persons from whom designs have been communicated to His Majesty's Government in the United Kingdom by the government of any other country, shall only be exercised if and to the extent that the Board are satisfied that substantially equivalent provision has been or will be made under the law of that country for the benefit of persons from whom designs have been communicated by His Majesty's Government in the United Kingdom to the government of that country.
(4) References in the last foregoing subsection to the communication of a design to or by His Majesty's Government or the government of any other country shall be construed as including references to the communication of the design by or to any person authorised in that behalf by the government in question.
Register of designs, etc.
Register of designs.
17.-
(1) There shall be kept at the Patent Office under the control of the registrar a register of designs, in which there shall be entered the names and addresses of proprietors of registered designs, notices of assignments and of transmissions of registered designs, and such other matters as may be prescribed or as the registrar may think fit.
(2) Subject to the provisions of this Act and to rules made by the Board of Trade thereunder, the register of designs shall, at all convenient times, be open to inspection by the public; and certified copies sealed with the seal of the Patent Office of any entry in the register shall be given to any person requiring them on payment of the prescribed fee.
(3) The register of designs shall be prima facie evidence of any matters required or authorised by this Act to be entered therein.
(4) No notice of any trust, whether expressed, implied or constructive, shall be entered in the register of designs, and the registrar shall not be affected by any such notice.
Certificate of registration.
18.-
(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.
Registration of assignments, etc.
19.-
(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.
(4) Subject to any rights vested in any other person of which notice is entered in the register of designs, the person or persons registered as proprietor of a registered design shall 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:
Provided that any equities in respect of the design may be enforced in like manner as in respect of any other personal property.
(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.
Rectification of register.
20.-
(1) The court may, on the application of any person aggrieved, order the register of designs to be rectified by the making of any entry therein or the variation or deletion of any entry therein.
(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.
Power to correct clerical errors.
21.-
(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.
Inspection of registered designs.
22.-
(1) Subject to the following provisions of this section and to any rules made by the Board of Trade in pursuance of subsection (2) of section five of this Act, the representation or specimen of a design registered under this Act shall be open to inspection at the Patent Office on and after the day on which the certificate of registration is issued.
(2) In the case of a design registered in respect of an article of any class prescribed for the purposes of this subsection, no representation or specimen of the design filed in pursuance of the application shall, until the expiration of such period after the day on which the certificate of registration is issued as may be prescribed in relation to articles of that class, be open to inspection at the Patent Office except by the registered proprietor, a person authorised in writing by the registered proprietor, or a person authorised by the registrar or by the court:
Provided that where the registrar proposes to refuse an application for the registration of any other design on the ground that it is the same as the first-mentioned design or differs from that design only in immaterial details or in features which are variants commonly used in the trade, the applicant shall be entitled to inspect the representation or specimen of the first-mentioned design filed in pursuance of the application for registration of that design.
(3) In the case of a design registered in respect of an article of any class prescribed for the purposes of the last foregoing subsection, the representation or specimen of the design shall not, during the period prescribed as aforesaid, be inspected by any person by virtue of this section except in the presence of the registrar or of an officer acting under him; and except in the case of an inspection authorised by the proviso to that subsection, the person making the inspection shall not be entitled to take a copy of the representation or specimen of the design or any part thereof.
(4) Where an application for the registration of a design has been abandoned or refused, neither the application for registration nor any representation or specimen of the design filed in pursuance thereof shall at any time be open to inspection at the Patent Office or be published by the registrar.
Information as to existence of copyright.
23. On the request of any 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 whether the design is registered, and if so, in respect of what articles, and whether any extension of the period of copyright has been granted and shall state the date of registration and the name and address of the registered proprietor.
Evidence of entries, documents, etc.
24.-
(1) 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 of the matters so certified.
(2) A copy of any entry in the register of designs or of any representation, specimen or document kept in the Patent Office or an extract from the register or any such document, purporting to be certified by the registrar and to be sealed with the seal of the Patent Office, shall be admitted in evidence without further proof and without production of the original.
Legal proceedings and Appeals
Certificate of contested validity of registration.
25.-
(1) If in any proceedings before the court the validity of the registration of a design is contested, and it is found by the court that the design is validly registered, the court may certify that the validity of the registration of the design was contested in those proceedings.
(2) Where any such certificate has been granted, then if in any subsequent proceedings before the court for infringement of the copyright in the registered design or for cancellation of the registration of the design, a final order or judgment is made or given in favour of the registered proprietor, he shall, unless the court otherwise directs, be entitled to his costs as between solicitor and client:
Provided that this subsection shall not apply to the costs of any appeal in any such proceedings as aforesaid.
Remedy for groundless threats of infringement proceedings.
26.-
(1) Where any person (whether entitled to or interested in a registered design or an application for registration of a design or not) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of the copyright in a registered design, any person aggrieved thereby may bring an action against him for any such relief as is mentioned in the next following subsection.
(2) Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of the copyright in a registered design the registration of which is not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the following relief, that is to say:-
(a) a declaration to the effect that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; and
(c) such damages, if any, as he has sustained thereby.
(3) For the avoidance of doubt it is hereby declared that a mere notification that a design is registered does not constitute a threat of proceedings within the meaning of this section.
The Court.
1962 c. 30
27. Subject to the provisions of this Act relating to Scotland, Northern Ireland and the Isle of Man, any reference or application to the court under this Act, shall, subject to [7rules of court] [7rules made under section seven of the Northern Ireland Act 1962], be dealt with by such judge of the High Court as the Lord Chancellor may select for the purpose.
The Appeal Tribunal.
28.-
(1) Any appeal from the registrar under this Act shall lie to the Appeal Tribunal.
[8(2) The Appeal Tribunal shall consist of one or more judges of the High Court nominated for the purpose by the Lord Chancellor.
(2A) At any time when it consists of two or more judges, the jurisdiction of the Appeal Tribunal-
(a) where in the case of any particular appeal the senior of those judges so directs, shall be exercised in relation to that appeal by both of the judges, or (if there are more than two) by two of them, sitting together, and
(b) in relation to any appeal in respect of which no such direction is given, may be exercised by any one of the judges;
and, in the exercise of that jurisdiction, different appeals may be heard at the same time by different judges.]
(3) The expenses of the Appeal Tribunal shall be defrayed and the fees to be taken therein may be fixed as if the Tribunal were a court of the High Court.
(4) The Appeal Tribunal may examine witnesses on oath and administer oaths for that purpose.
(5) Upon any appeal under this Act the Appeal Tribunal may by order award to any party such costs as the Tribunal may consider reasonable and direct how and by what parties the costs are to be paid; and any such order may be made a rule of court.
*(6) The Appeal Tribunal shall, with regard to the right of audience, observe the same practice as before the first day of November, nineteen hundred and thirty-two, was observed in the hearing of appeals by the law officer.
(7) Upon any appeal under this Act the Appeal Tribunal may exercise any power which could have been exercised by the registrar in the proceeding from which the appeal is brought.
(8) Subject to the foregoing provisions of this section the Appeal Tribunal may make rules for regulating all matters relating to proceedings before it under this Act. [10including right of audience]
[11(8A) At any time when the Appeal Tribunal consists of two or more judges, the power to make rules under sub-section (8) of this section shall be exercisable by the senior of those judges:
Provided that another of those judges may exercise that power if it appears to him that it is necessary for rules to be made and that the judge (or, if more than one, each of the judges) senior to him is for the time being prevented by illness, absence or otherwise from making them.]
(9) An appeal to the Appeal Tribunal under this Act shall not be deemed to be a proceeding in the High Court.
[12(10) For the purposes of this section the seniority of judges shall be reckoned by reference to the dates on which they were appointed judges of the High Court respectively.]
Powers and Duties of Registrar
Exercise of discretionary powers of registrar.
29. Without prejudice to any provisions of this Act requiring the registrar to hear any party to proceedings thereunder, or to give to any such party an opportunity to be heard, the registrar shall give to any applicant for registration of a design an opportunity to be heard before exercising adversely to the applicant any discretion vested in the registrar by or under this Act.
Costs and security for costs.
30.-
(1) The registrar may, in any proceedings before him under this Act, by order award to any party such costs as he may consider reasonable, and direct how and by what parties they are to be paid; and any such order may be made a rule of court.
(2) If any party by whom application is made to the registrar for the cancellation of the registration of a design or for the grant of a licence in respect of a registered design, or by whom notice of appeal is given from any decision of the registrar under this Act, neither resides nor carries on business in the United Kingdom or the Isle of Man, the registrar, or, in the case of appeal, the Appeal Tribunal, may require him to give security for the costs of the proceedings or appeal, and in default of such security being given may treat the application or appeal as abandoned.
Evidence before registrar.
31.-
(1) Subject to rules made by the Board of Trade under this Act the evidence to be given in any proceedings before the registrar under this Act may be given by affidavit or statutory declaration; but the registrar may if he thinks fit in any particular case take oral evidence in lieu of or in addition to such evidence as aforesaid, and may allow any witness to be cross-examined on his affidavit or declaration.
(2) Subject to any such rules as aforesaid, the registrar shall in respect of the examination of witnesses on oath and the discovery and production of documents have all the powers of an official referee of the Supreme Court, and the rules applicable to the attendance of witnesses in proceedings before such a referee shall apply to the attendance of witnesses in proceedings before the registrar.
References to official referee to be construed (E.W.) as references to Circuit judge discharging functions of official referee: Courts Act 1971 (c. 23), s. 25(3)
Power of registrar to refuse to deal with certain agents.
1977 c. 37.
32.-
(1) Rules made by the Board of Trade under this Act may authorise the registrar to refuse to recognise as agent in respect of any business under this Act-
(a) any individual whose name has been erased from, and not restored to, the register of patent agents kept in pursuance of rules made under [13the Patents Act 1977;]
(b) any individual who is for the time being suspended in accordance with those rules from acting as a patent agent:
(c) any person who has been convicted of an offence under section eighty-eight of the Patents Act 1949 [14or section 114 of the Patents Act 1977;]
(d) any person who is found by the Board of Trade (after being given an opportunity to be heard) to have been convicted of any offence or to have been guilty of any such misconduct as, in the case of an individual registered in the register of patent agents aforesaid, would render him liable to have his name erased therefrom;
(e) any person, not being registered as a patent agent, who in the opinion of the registrar is engaged wholly or mainly in acting as agent in applying for patents in the United Kingdom or elsewhere in the name or for the benefit of a person by whom he is employed;
(f) any company or firm, if any person whom the registrar could refuse to recognise as agent in respect of any business under this Act is acting as a director or manager of the company or is a partner in the firm.
(2) The registrar shall refuse to recognise as agent in respect of any business under this Act any person who neither resides nor has a place of business in the United Kingdom or the Isle of Man.
Offences
Offences under s. 5.
33.-
(1) If any person fails to comply with any direction given under section five of this Act or makes or causes to be made an application for the registration of a design in contravention of that section, he shall be guilty of an offence and liable-
(a) on summary conviction, to imprisonment for a term not exceeding three months or to a fine not exceeding one hundred pounds, or to both such imprisonment and such fine, or
(b) on conviction on indictment, to imprisonment for a term not exceeding two years or to a fine not exceeding five hundred pounds, or to both such imprisonment and such fine.
(2) Where an offence under section five of this Act is committed by a body corporate, every person who at the time of the commission of the offence is a director, general manager, secretary or other similar officer of the body corporate, or is purporting to act in any such capacity, shall be deemed to be guilty of that offence unless he proves that the offence was committed without his consent or connivance and that he exercised all such diligence to prevent the commission of the offence as he ought to have exercised having regard to the nature of his functions in that capacity and to all the circumstances.
Falsification of register, etc.
34. If any person makes or causes to be made a false entry in the register of designs, or a writing falsely purporting to be a copy of an entry in that register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of a misdemeanour.
Fine for falsely representing a design as registered.
35.-
(1) If any person falsely represents that a design applied to any article sold by him is registered in respect of that article, he shall be liable on summary conviction to a fine not exceeding [15£50]; and for the purposes of this provision a person who sells an article 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 the article is registered, shall be deemed to represent that the design applied to the article is registered in respect of that article.
(2) If any person, after the copyright in a registered design has expired, marks any article to which the design has been applied with the word "registered", or any word or words implying that there is a subsisting copyright in the design, or causes any such article to be so marked, he shall be liable on summary conviction to a fine not exceeding [16five pounds] [15£25]
Rules, etc.
General power of Board of Trade to make rules, etc.
36.-
(1) Subject to the provisions of this Act, the Board of Trade may make such rules as they think 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 Board, and in particular, but without prejudice to the generality of the foregoing provision-
(a) for prescribing the form of applications for registration of designs and of any representations or specimens of designs or other documents which may be filed at the Patent Office, and for requiring copies to be furnished of any such representations, specimens or documents;
(b) for regulating the procedure to be followed in connection with any application or request to the registrar or in connection with any proceeding before the registrar and for authorising the rectification of irregularities of procedure;
(c) for regulating the keeping of the register of designs;
(d) for authorising the publication and sale of copies of representations of designs and other documents in the Patent Office;
(e) for prescribing anything authorised or required by this Act to be prescribed by rules made by the Board.
(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.
S. 36extended by Copyright Act 1956 (c. 74), s. 10(5)
Provisions as to rules and Orders.
37.-
(1) Any rules made by the Board of Trade under this Act shall be advertised twice in the Journal.
(2) Any rules made by the Board of Trade in pursuance of section fifteen or section sixteen 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.
1946 c. 36.
(3) Any power to make rules conferred by this Act on the Board of Trade or on the Appeal Tribunal shall be exercisable by statutory instrument; and the Statutory Instruments Act 1946, shall apply to a statutory instrument containing rules made by the Appeal Tribunal in like manner as if the rules had been made by a Minister of the Crown.
(4) Any statutory instrument containing rules made by the Board of Trade under this Act shall be subject to annulment in pursuance of a resolution of either House of Parliament.
(5) Any Order in Council made under this Act may be revoked or varied by a subsequent Order in Council.
Proceedings of Board of Trade.
38.-
(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .
(2) All documents purporting to be orders made by the Board of Trade and to be sealed with the seal of the Board, or to be signed by a secretary, under-secretary or assistant secretary of the Board, or by any person authorised in that behalf by the President of the Board, shall be received in evidence and shall be deemed to be such orders without further proof, unless the contrary is shown.
(3) A certificate, signed by the President of the Board of Trade, that any order made or act done is the order or act of the Board, shall be conclusive evidence of the fact so certified.
Hours of business and excluded days.
Supplemental
Hours of business and excluded days.
39.-
(1) Rules made by the Board of Trade under this Act may specify 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 may specify 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.
Fees.
40. 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 Board of Trade with the consent of the Treasury.
Service of notices, etc., by post.
41. 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.
Annual report of registrar.
1977 c. 37.
42. The Comptroller-General of Patents, Designs and Trade Marks shall, in his annual report with respect to the execution of [17the 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.
Savings.
43.-
(1) Nothing in this Act shall be construed as authorising or requiring the registrar to register a design the use of which would, in his opinion, be contrary to law or morality.
(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 articles forfeited under the laws relating to customs or excise.
Interpretation.
44.-
(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-
1969 c. 58.
[18"Appeal Tribunal" means the Appeal Tribunal constituted and acting in accordance with section 28 of this Act as amended by the Administration of Justice Act 1969;]
"article" means any article of manufacture and includes any part of an article if that part is made and sold separately;
1956 c. 74.
[19"artistic work" has the same meaning as in the Copyright Act 1956;]
"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;
"copyright" has the meaning assigned to it by subsection (1) of section seven of this Act;
[20"corresponding design" has the same meaning as in section ten of the Copyright Act 1956;]
"court" means the High Court;
"design" has the meaning assigned to it by subsection (3) of section one of this Act;
"Journal" means the journal published by the comptroller under [21the Patents Act 1977;]
"prescribed" means prescribed by rules made by the Board of Trade under 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;
"set of articles" means a number of articles of the same general character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied.
(2) Any reference in this Act to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set.
(3) Any question arising under this Act whether a number of articles constitute a set of articles shall be determined by the registrar; and notwithstanding anything in this Act any determination of the registrar under this subsection shall be final.
(4) For the purposes of subsection (1) of section fourteen and of section sixteen 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.
Application to Scotland.
45. In the application of this Act to Scotland-
(1) The provisions of this Act conferring a special jurisdiction on the court as defined by this Act shall not, except so far as the jurisdiction extends, affect the jurisdiction of any court in Scotland in any proceedings relating to designs; and with reference to any such proceedings, the term "the Court" shall mean the Court of Session:
(2) If any rectification of a register under this Act is required in pursuance of any proceeding in a court, a copy of the order, decree, or other authority for the rectification, shall be served on the registrar, and he shall rectify the register accordingly:
(3) The expression "injunction" means "interdict", the expression "arbitrator" means "arbiter"; the expression "plaintiff" means "pursuer"; the expression "defendant" means "defender".
Application to Northern Ireland.
46. In the application of this Act to Northern Ireland-
(1) The provisions of this Act conferring a special jurisdiction on the court, as defined by this Act, shall not, except so far as the jurisdiction extends, affect the jurisdiction of any court in Northern Ireland in any proceedings relating to designs; and with reference to any such proceedings the term "the Court" means the High Court in Northern Ireland:
(2) If any rectification of a register under this Act is required in pursuance of any proceeding in a court, a copy of the order, decree, or other authority for the rectification shall be served on the registrar, and he shall rectify the register accordingly:
(3) References to enactments of the Parliament of the United Kingdom shall be construed as references to those enactments as they apply in Northern Ireland:
(4) References to a Government department shall be construed as including references to a department of the Government of Northern Ireland:
(5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .22
Isle of Man.
47. This Act shall extend to the Isle of Man subject to the following modifications:-
(1) Nothing in this Act shall affect the jurisdiction of the courts in the Isle of Man in proceedings for infringement or in any action or proceeding respecting a design competent to those courts;
(2) The punishment for a misdemeanour under this Act in the Isle of Man shall be imprisonment for any term not exceeding two years, with or without hard labour, and with or without a fine not exceeding one hundred pounds, at the discretion of the court;
(3) Any offence under this Act committed in the Isle of Man which would in England be punishable on summary conviction may be prosecuted, and any fine in respect thereof recovered, at the instance of any person aggrieved, in the manner in which offences punishable on summary conviction may for the time being be prosecuted.
Repeals, savings, and transitional provisions.
48.-
(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.
1907 c. 29.
(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.
1907 c. 29.
(5) Where, in relation to any design the time for giving notice to the registrar under section fifty-nine of the Patents and Designs Act 1907, expired before the commencement of this Act and the notice was not given, subsection (2) of section six of this Act shall not apply in relation to that design or any registration of that design.
(6) Any document referring to any enactment repealed by this Act shall be construed as referring to the corresponding enactment of this Act.
1978 c. 30.
(7) Nothing in the foregoing provisions of this section shall be taken as prejudicing the operation of [23section 16(1) and section 17(2)(a) of the Interpretation Act 1978], (which [24relate] to the effect of repeals).
Short title and commencement.
49.-
(1) This Act may be cited as the Registered Designs Act 1949.
1949 c. 87.
(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.
SCHEDULES
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
Paras. 1-3 extended by S.I. 1965/1536, Sch. 3
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.
[25(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 articles 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 articles 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 articles the supply of which is authorised by this sub-paragraph, and to sell to any person any articles 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 articles 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.
Para. 1(3)modified by Atomic Energy Authority (Weapons Group) Act 1973 (c. 4), s. 5(2)
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 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.
Para. 2amended by Defence Contracts Act 1958 (c. 38), s. 1(3)(4)
Reference of disputes as to Crown use.
3.-
(1) Any dispute as to the exercise by a Government department or a person authorised by a Government department of the powers conferred by paragraph 1 of this Schedule, or as to terms for the use of a design for the services of the Crown thereunder, or as to the right of any person to receive any part of a payment made in pursuance of sub-paragraph (3) of that paragraph, may be referred to the court by either party to the dispute [26in such manner as may be prescribed by rules of court.]
(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, apply for cancellation of the registration of the design upon any ground upon which the registration of a design may be cancelled on an application to the court under section twenty of this Act;
(b) in any case, put in issue the validity of the registration of the design without applying for its cancellation.
(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.
Reference to official referee to be construed (E.W.) as reference to Circuit judge discharging functions of official referee: Courts Act 1971 (c. 23), s. 25(3)
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 the period ending with the tenth day of December, nineteen hundred and fifty, or such later date as may be prescribed by Order in Council, and any other 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) A draft of any Order in Council under this paragraph shall be laid before Parliament; and the draft shall not be submitted to His Majesty except in pursuance of an Address presented by each House of Parliament praying that the Order be made.
SECOND SCHEDULE
The following provisions have been omitted from the text for the reasons stated:-
repealed by Industrial Expansion Act 1968 (c. 32), Sch. 4 |
|
repeals enactments specified in Sch. 2 |
|
specifies enactments repealed by s. 48(1) |
1 S. 6(4)(5) inserted by Copyright Act 1956 (c. 74), s. 44(1)
2 Words inserted by Patents and Designs (Renewals, Extensions and Fees) Act 1961 (c. 25), s. 1(2)(3)
4 S. 8(3) added by Copyright Act 1956 (c. 74), s. 44(2)
5 S. 11(2A) inserted by Copyright Act 1956 (c. 74), s. 44(3)
6 Words substituted by Copyright Act 1956 (c. 74), s. 44(4)
7 Words "rules" to "1962" substituted (N.I.) for words "rules of court" by Northern Ireland Act 1962 (c. 30), Sch. 1 Pt. I
8 S. 28(2)(2A) substituted for s. 28(2) by Administration of Justice Act 1969 (c. 58), s. 24(1)(2)
*S. 28(6) repealed (E.W.)(S) by Administration of Justice Act 1970 (c. 31), Sch. 11
10 Words inserted (E.W.)(S.) by Administration of Justice Act 1970 (c. 31), s. 10(5)
11 S. 28(8A) inserted by Administration of Justice Act 1969 (c. 58), s. 24(1)(3)
12 S. 28(10) inserted by Administration of Justice Act 1969 (c. 58), s. 24(1)(4)
13 Words substituted by Patents Act 1977 (c. 37), Sch. 5 para. 2.
14 Words inserted by Patents Act 1977 (c. 37), Sch. 5 para. 2
15 Words substituted by Criminal Justice Act 1967 (c. 80), s. 92, Sch. 3 Pts. I, IV.
16 Words"£25" substituted (E.W.)(S.) for words"five pounds" by virtue of (S.) Criminal Procedure (Scotland) Act 1975 (c. 21), s. 289C. (4)(5)(8) and (E.W.) Criminal Law Act 1977 (c. 45), s. 31(5)(6)(9)
17 Words substituted by Patents Act 1977 (c. 37), Sch. 5 para. 3
18 Definition substituted by Administration of Justice Act 1969 (c. 58) Sch. 1
19 Definition inserted by Copyright Act 1956 (c. 74), s. 44(5)
20 Definition inserted by Copyright Act 1956 (c. 74), s. 44(5)
21 Words substituted by Patents Act 1977 (c. 37), Sch. 5 para. 3
22 S. 46(5) repealed by Northern Ireland Act 1962 (c. 30), Sch. 4 Pt. IV.
23 Words substituted by virtue of Interpretation Act 1978 (c. 30), s. 25(2)
25 Para. 1(6) substituted by Defence Contracts Act 1958 (c. 38), s. 1(1)(4)
26 Words repealed (N.I.) by Northern Ireland Act 1962 (c. 30), Sch. 1 Pt. I