S T A T U T O R Y I N S T R U M E N T S
2007 No. 3378
DESIGNS
The Designs (International Registrations Designating the European Community) Regulations 2007
Made - - - - 28th November 2007
Laid before Parliament 30th November 2007
Coming into force - - 1st January 2008
The Secretary of State is a Minister designated for the purposes of section 2(2) of the European Communities Act 1972(a) in relation to intellectual property (including both registered and unregistered rights)(b).
Accordingly the Secretary of State, in exercise of the powers conferred upon him by section 2(2) of that Act, makes the following Regulations:
Citation and commencement
1. These Regulations may be cited as the Designs (International Registrations Designating the European Community) Regulations 2007, and shall come into force on 1st January 2008.
Amendment of the Registered Designs Act 1949
2. In section 11ZA (grounds for invalidity of registration) of the Registered Designs Act 1949(c), for paragraph (1A)(b) substitute—
“(b) is protected as from a date prior to the relevant date— (i) by virtue of registration under this Act or the Community Design Regulation
or an application for such registration, or (ii) by virtue of an international registration (within the meaning of Articles 106a
to 106f of that Regulation) designating the Community.”.
Amendment of the Community Design Regulations 2005
3.—(1) The Community Design Regulations 2005(d) are amended as follows. (2) In regulation 1 (introductory and interpretation)—
(a) in paragraph (2)—
(a) 1972 c. 68; section 2(2) was amended by the Legislative and Regulatory Reform Act 2006 (c. 51), section 27(1)(a). (b) S.I. 2006/608. (c) 1949 c. 88; section 11ZA was inserted by S.I. 2001/3949, and subsections (1A) and (1B) of that section were inserted by S.I.
2006/1974 with effect from 1st October 2006 but subject to transitional provisions. (d) S.I. 2005/2339.
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(i) after “Council Regulation (EC) 6/2002 of 12th December 2001 on Community Designs;”, omit “and”, and
(ii) at the end insert “; and “international registration” has the same meaning as in Articles 106a to 106f of the Community Design Regulation”; and
(b) after paragraph (2) insert— “(3) In addition, references to a Community design and a registered Community design
include a reference to a design protected by virtue of an international registration designating the Community.”.
(3) In regulation 2, after paragraph (6) insert— “(6A) In relation to a design protected by virtue of an international registration
designating the Community, the reference in paragraph (3) to a registration being invalid includes a reference to the effects of the international registration being declared invalid in accordance with Article 106f of the Community Design Regulation.”.
Lord Triesman Parliamentary Under Secretary of State for Intellectual Property and Quality
28th November 2007 Department for Innovation, Universities and Skills
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EXPLANATORY NOTE
(This note is not part of the Regulations)
These Regulations make amendments to the Registered Designs Act 1949 (“the 1949 Act”) and the Community Design Regulations 2005 (S.I. 2005/2339) (“the 2005 Regulations”) which are necessary as a result of the accession by the European Community to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs: see Council Decision (EC) No 954/2006 (OJ No L386, 29.12.2006, pp. 28 - 43). The text of the Geneva Act is attached to that Decision, and is also available electronically from www.wipo.int/hague/en/legal_texts.
The Geneva Act, which was adopted on 2nd July 1999 and entered into force on 23rd December 2003, allows designers to obtain design protection in a number of countries through a single international registration, and permits intergovernmental organisations to become a party to the Act provided that a number of conditions are fulfilled. In particular, the organisation must maintain an Office through which protection of industrial designs may be obtained with effect in the territory of the organisation. A Community design registered at the Office for Harmonization in the Internal Market (trade marks and designs) under Council Regulation (EC) No 6/2002 (OJ L 3, 5.1.2002, p.1) (“the Community Design Regulation”) does indeed have effect in the territory of the Community, and the 2005 Regulations make provision for the operation of the Community Design Regulation in the United Kingdom.
The amendments to the Community Design Regulation which are necessary to give effect to the Community’s accession to the Geneva Act were made by Council Regulation (EC) No 1891/2006 (OJ No L 386, 29.12.2006, pp.14 - 16), which enters into force on the date on which the Geneva Act enters into force with respect to the European Community (1st January 2008).
As a result of the Community’s accession to the Geneva Act, it will be possible for holders of an international registration under that Act to apply for protection of their designs under the registered Community design system. An international registration designating the Community has, from the date of its registration, the same effect as an application for a registered Community design; and if no refusal is notified in accordance with Article 12 of the Geneva Act, or any such refusal is withdrawn, the registration has the same effect as the registration of a design as a registered Community design.
Regulation 2 provides for the amendment of section 11ZA of the 1949 Act (as amended by the Regulatory Reform (Registered Designs) Order 2006, S.I. 2006/1974). Section 11ZA contains the grounds upon which the registration of a design may be declared invalid. The amendment made by this regulation ensures that, for those purposes, a prior international registration designating the Community is treated in the same way as a prior registered Community design (or application for such a design).
Regulation 3 amends the 2005 Regulations to ensure that, under those Regulations, such international registrations are treated in the same way as Community designs and in particular registered Community designs.
This instrument ensures that, in accordance with the new Articles 106d and 106f of the Community Design Regulation, an international registration designating the Community has the same effect as the registration (or application for registration) of a design under that Regulation.
A full impact assessment of the effect that this instrument will have on the costs of business has been prepared, and has been placed in the libraries of both Houses of Parliament. It is also available from June Davies, The UK Intellectual Property Office, Concept House, Cardiff Road, Newport, NP10 8QQ, and is available electronically from www.ipo.gov.uk.
£3.00 Crown copyright 2007
Printed and published in the UK by The Stationery Office Limited under the authority and superintendence of Carol Tullo, Controller of Her Majesty’s Stationery Office and Queen’s Printer of Acts of Parliament. E1636 12/2007 171636 19585
S T A T U T O R Y I N S T R U M E N T S
2007 No. 3378
DESIGNS
The Designs (International Registrations Designating the European Community) Regulations 2007