Ley de Dibujos y Modelos Industriales de 2001 (Capítulo 13.29), Santa Lucía

SAINT LUCIA

No.2 of 2001

AN Acr to provide for the protection ofIndustrial Design and for related matters.

[ On Order]

BE IT ENACTED by the Queen's Most Excellent Majesty, by and with the advice and consent ofthe House ofAssembly and the Senate of Saint Lucia, and by the authority ofthe same, as follows:

Short titlc and Commcnccmcnt

1.-(1) This Act may be cited as the Industrial Designs Act, 2000.

(2) This Act shall come into force on a date to be fixed by the Minister by Order published in the Ga::.ette.

Intcrprctation

2.-(1) In this Act

"Court" means the High Court;

"International Classification" means the classification according to the Locarno Agreement of October 8^th 1968 establishing an International Classification for Industrial Designs;

"Minister" means the Minister with responsibility for intellectual property;

"Paris Convention" means the Paris Convention for the Protection ofIndustrial Property of March 20^th 1883, as last revised;

"prescribed" means prescribed in the Regulations;

"priority date" means the date ofthe earlier application that serves as the basis for the right of priority provided for in the Paris Convention;

"Register" means the Register of Industrial Design maintained pursuant to section 16;

"Registrar" means the Registrar of Companies and Intellectual Property;

"Regulations" means Regulations made pursuant to section 24.

Definition (if industrial design

3.-'(1) For the pmposes of this Act, any composition of lines or colours or any three-dimensional fonn, or any material whether or not associated \vith lines or colours, is deemed to be an industrial design, where such composition, fonn or material gives a special appearance to a product of industry or handicraft, can serve as a pattern for a product of industry or handicraft, or appeals to and is judged by the eye.

(2) The protection of this Act does not extend to anything in an industrial design which serves solely to obtain a technical result and to the extent that it leaves no freedom as regards arbitrary fcatmes of appearance.

Registrable industrial designs

4.-(1) An industrial design is registrable if it is ne\v.

(2)

An industrial design shall be new ifit has not been disclosed to the public, anywhere in the world, by publication in tangible form or by use or in any other "vay, prior to the filing date or, where applicable. the priority date ofthe application for registration.

(3)

For the purposes of subsection (2), disclosure to the public of an industrial design shall not be taken into consideration ifthe disclosure:

(a)

occured within twelve months preceding the filing date or, where applicable, the priority date ofthe application; and

(b)

was by reason or in consequence of acts conU11itted by the applicant or his predecessor in title or of an abuse conU11itted by a third party with regard to the applicant or his predecessor in title.

(4)

An industrial design that is contrary to public order or morality is not registrable.

Right to registration and naming of creator

5.--=( 1) The right to registration ofan industrial design shall belong to the creator.

(2)

Iftwo or more persons have jointly created an industrial design, the right to registration ofthat industrial design shall belong to them jointly.

(3)

If and to the extent that two or more persons have created the same industrial design independently of each other, the person whose application has the earliest filing date or, ifpriority is claimed, the earliest validly claimed priority date, shall have the right to register the industrial design, as long as the said application is not withdrawn, abandoned or rejected.

(4)

The right to an industrial design may be assigned, or may be transfened by succession.

(5)

Where an industrial design is created in execution of an employment contract. the right to registration ofthe industrial design shall belong, in the absence of contractual provision to the contrary, to the employer.

(6)

The creator shall be named as such in the registration of the industrial design, unless in a special written declaration signed by him and addressed to the Registrar he indicated that he wishes not to be named.

(7)

A promise or undertaking by the creator made to any person to the effect that he will make a declaration referred to in subsection (6) shall be without legal effect.

Application

6.-(1) An application for registration ofan industrial design shall be filed with the registrar and shall contain a request, drawings, photographs or other adequate graphic representations of the article embodying the industrial design and an indication ofthe kind ofproducts for \\I'hich the industrial design is to be used.

(2)

The application may be accompanied by a specimen of the article embodying the industrial design where the industrial design is two dimensional.

(3)

Where the applicant is not the creator, the request shall be accompanied by a statement justifying the applicant's right to the registration ofthe industrial design.

(4)

The application may contain a declaration claiming priority, as provided for in the Paris Convention, ofone or more earlier national or regional applications or international deposits filed by the applicant or his predecessor in title in or for any State party to that Convention.

(5)

Where the application contains a declaration refelTed to in subsection 4), the Registrar may require that the applicant furnish, within the prescribed time limit, a copy of the earlier application or international deposit, certified as correct by the office with which it was filed, and the eftect ofthat declaration shall be as provided for in the Paris Convention.

(6)

Where the Registrar finds that the requirements under this section and the Regulations pertaining to a declaration are not fulfilled, the declaration shall be considered not to have been made.

(7)

Two or more industrial designs may be the subject ofthe same application ifthey relate to the same class ofInternational Classification or to the same set or composition of articles.

(8)

An application, at the time offiling, may contain a request that the publication of the industrial design be deferred for a period not exceeding twelve ( 12) months from the date offiling or, if priority is claimed from the date of priority ofthe application.

(9)

The applicant may withdraw the application at any time during its pendency.

(10)

An application is subject to the payment of the prescribed application fcc.

Examination

7.-( 1) The Registrar shall accord as the filing date the date of receipt ofapplication, provided that, at the time ofreceipt. the application contains indications allowing the identity ofthe applicant to be es~ablished and the required graphic representation of the article embodying the industrial design.

(2)

Where the Registrar finds that the application did not at the time of receipt fulfil the requirements referred to in subsection (1), he shall invite the applicant to file the required correction and shall accord as the filing date the date ofreceipt ofthe required correction, but if no correction is made the application shall be treated as if it had not been filed.

(3)

After according a filing date, the Registrar shall examine the application for compliance with the requirements ofsection 6 and ascertain whether the application fee has been paid.

(4)

The Registrar shall examine whether the industrial design compl ies \vith the provisions ofsection 3 and 4 (4).

Registration and publication

8.-( 1) Where the Registrar finds that the conditions referred to in subsection (3) and 4 (4) are fulfilled, he or she shall register the industrial design, publish a reference to the registration and issue to the applicant a certificate ofregistration ofthe industrial design.

(2)

Notwithstanding subsection (3), where a request has been made under section 6 (8) for deferment ofpublication, no representation ofthe design nor any file relating to the application shall be open to public inspection. and the Registrar shall publish a notice ofdeferment containing information identi fying the registered owner, the filing date of the application, the length of time of which deferment has been requested and any other prescribed particulars.

(3)

During the period ofdeferment ofpublication, legal proceedings on the basis ofa registered industrial design may not be instituted unless the information contained in the Register and in the file relating to the application has been communicated to the person against whom the action is brought.

(4)

At the expiry of the period ofdefennent, the Registrar shall publish the registered industrial design.

Rights conferred hy registrlltion

9.-(1) The exploitation of a registered industrial design in Saint Lucia by persons other than the registered owner shall require the agreement of the latter.

(2)

For the purposes of this Act, "exploitation" of a registered industrial design means the making, selling, importing or otherwise distributing, for commercial purposes, articles bearing or embodying a design which is a copy, or substantially a copy, of the industrial design.

(3)

The rights conferred by registration shall not extend to acts in respect of articles which have been put on the market in Saint Lucia by the registered owner or with his consent.

(4)

The owner ofa registered industrial design shall, in addition to any other rights remedies or actions available to him, have the right to institute court proceedings against any person who infringes the registration ofthe industrial design by performing vvithout his agreement, any of the acts referred to in subsection (2) or who performs acts which make it likely that intj-ingement will occur.

Duration and renewal of registration

10.-(1) The registration ofan industrial design shall be for a period offive years from the filing date of the application for registration.

(2)

The registration may be renewed for two further consecutive periods of five years through the payment of the prescribed fee.

(3)

A grace period of six months shall be allowed for the late payment of the renewal fee, on payment of the prescribed surcharge.

Surrender of registration

11 .--(1) The owner ofa registered industrial design may smrender it by wTitten declaration to the Registrar who shall record the surrender in the Register and publish it appropriately.

(2) The surrender shall have effed from the date on which it is recorded.

Invalidation of registration

12.-(1) An interested person may apply to the Court for the invalidation ofthe registration ofan industrial design.

(2) The Court shall invalidate the registration ofan industrial design ifthe person requesting the invalidation proves that any ofthe requirements of sections 3 and 4 are not fulfilled or if the registered owner of the industrial design is not the creator or successor in title.

Page 9

(3)

An invalidated registration ofan industrial design, or part thereof, shall be regarded as hull and void from the date of the registration.

(4)

The decision of the Court or the decision 011 any appeal therefrom shall be notified to the Registrar \vho shall record it and publish a reference to it as soon as possible thereafter.

Changes in ownership

13.-( 1) A change in the ownership of the registration of an industrial design, or in the ownership ofan application therefor, shall be in writing and shall, upon the request of any interested party made to the Registrar, be recorded and, except in the case of an application, published by the Registrar.

(2) A change under subsection (l) shall be of no effect against third parties until it has been recorded.

Licence contracts

14.-(1) Subject to this section, the owner ofa registered industrial design on an application therefor may grant licences in respect of the design.

(2) A copy ofeach licence contract concerning a registered industrial design, or an application therefor, shall be submitted to the Registrar who shall keep its contents confidential but shall record it and publish a reference thereto and until the contract is so recorded it shall have no effect against third parties.

The Registrar

15. The Registrar shall be responsible for all functions relating to, the procedure for the registration of industrial designs and for the administration ofregistered industrial designs as speci fied in this Act.

Register and publication

16.-(1) The Registrar shall maintain a Register of Industrial Designs in which he or she shall record all matters required by the Act to be recorded.

(2)

The Register may be consulted by any person under the prescribed conditions and any person may obtain extracts upon payment of the prescribed fee.

(3)

The Registrar shall publish in an appropriate marmer all the publications provided for in this Act.

Correction of errors

17. The Registrar may, subject to any provisions in the Regulations, correct any error oftranslation or transcription, clerical error or mistake in any application or document filed with the Registrar on in any matter recorded pursuant to this Act.

Extension of timc

18.-(1) Where the Registrar is satisfied that the circumstances justify it, he or she may, upon receiving a written request, extend the time for doing any act or taking any proceeding under this Act, upon notice to the parties concerned and upon such tenns as he or she may direct.

(2) The extension may be granted though the time for doing the act or taking the proceeding has expired.

Exercisc of discretionary powers

19. The Registrar shall, before exercising any discretionary power vested in him or her by this Act adversely to any party to a proceeding before him, give that party an opportunity to be heard.

Rep resellta tion

20. Where an applicant's ordinary residence or principal place of business is outside Saint Lucia, he or she shall be represented by an attorney-at-law resident and practising in Saint Lucia.

Competence of Court

21.-{ 1) The Court shall have jurisdiction in cases ofdispute relating to the application })fthis Act and in matters which under this Act are to be referred to the Court.

(2) Any decision taken by the Registrar under this Act, in pat1icular the decision to register an industrial design or to refuse an application for such a registration, may be the subject of an appeal by any interested party to the COUl1 and sllch appeal shall be filed within three months of the date of the Registrar's decision.

Infr'ingemellt and offences

22.-'(1) Subject to section 9 (3), an intringement shall consist of the performance in Saint Lucia ofany act referred to in section 9 (2) by a person other than the owner of the registered industrial design and without the agreement of the latter.

(2)

On the request ofthe owner ofthe registered industrial design, or of a licensee, if he has requested the owner to institute court proceedings for a specific relief and the owner has refused or failed to do so, the Court may grant an injunction to prevent infringement or an imminent infringement, award damages and grant any other remedy provided for in the generalla w.

(3)

A person who intentionally performs an act which constitutes an infringement as defined in subsection (1) commits an offence and is liable on sunU11ary conviction to a fine of ten thousand dollars and to imprisonment for five years.

Application of international treaties

23. The provisions of any international treaties in respect of industrial property to vvhich Saint Lucia is a party shall apply to matters dealt with by this Act and, in case ofconflict with provisions ofthis Act, the conflicting provision in this Act shall be construed to give effect to the provision ofthe relevant treaty.

Regula tiOilS

24. The Minister may make Regulations prescribing all matters that are required or pel111itted by this Act to be prescribed, or are necessary or cOllvenient to be prescribed for giving effect to the purposes of this Act.

Repeals

25. Subject to the provisions of section 26, the provisions of the Commercial Code, Cap 244, Title X, where they apply to Designs are hereby repealed.

Transitional provisions

26.-(1) Notwithstanding the repeal of the former Act, industrial designs registered thereunder shall remain in force but shall, subject to subsection (2), be deemed to have been registered under this Act.

(2) Industrial designs registered under the former Act shall remain in force for the unexpired portion ofthe period ofprotection provided for uncler that Act and may be renewed in accordance with the provisions of this Act.

(3). A person \vho on the clate of the coming into force of this Act is the OWl1er ofan industrial design that has been registered in the United Kingdom for a period not exceeding three years or has filed an application for registration ofan industrial design in the United Kingdom may, within twelve months from entry into force ofthis Act, file an application for the registration of the same industrial design under this Act and such application shall be accorded the filing date or priority date accorded to the application or registration in the United Kingdom.

(4) The Registrar shall, on and after the coming into force of this Act

(a)

perform all the functions of and exercise all the powers conferred on the Registrar ofthe Supreme Court in relation to industrial designs under the former Act; and

(b)

be the custodian of the Register ofPatents, Designs and Trade Marks kept under the fonl1er Act

Passed in the House ofAssembly this 12th day ofDecember, 2000.

MATTHEW ROBERTS,

Speaker of the HOllse of Assembly.

Passed in the Senate this 17th day ofNovember, 2000.

l-IILFORD DETERVILLE,

President of the Senate.