Registered Designs (Ownership and Effect) Flashcards
Who is the author of a design?
The designer is the person who creates the design.
If the design is computer-generated, the designer is the person who put the arrangmenets necessary for the creation of the design in place. This may be the person operating the computer if skilled input is required, or otherwise the owner of the computer.
Same as UDR.
Who is the original proprietor of a design?
The designer by default, unless the design was created in the course of employment in which case it is the employer (NB a commissioner is not an employer and does not own the design by default).
Same as copyright and UDR.
What is the duration of a registered design?
25 years from the date of registration (which is the date of filing).
Explain renewals for registered designs.
A renewal fee is due every five years.
The renewal dates are the five-year anniversaries of the date of registration.
A renewal fee is payable (on the form) in the six months leading up to the renewal date.
If the renewal fee is not paid by the renewal date, the registered design will cease to have effect, and the proprietor will be notified within 6 weeks of lapse.
There is a six-month grace period with a surcharge. If paid with the surcharge, the design registration will be treated as if it never lapsed.
Explain the rules for restoration.
The application for restoration is made on the form with evidence that failure to pay during the renewal fee was unintentional. The application must be made within 12 months of lapse (within 6 months of the end of the grace period). The application must be made by the proprietor. If there are joint proprietors, one of them can unilaterally request restoration only with the permission of the registrar (equivalent to the comptroller).
If the registrar rejects the application, the proprietor can request (within one month of being notified of the refusal) to be heard before the registrar.
If the registrar allows the application, the registered design will be restored subject to payment of the missed fees.
Explain the effect of restoration.
Anything done in relation to the registered design between lapse and restoration is valid.
Any action which would have infringed will be considered to have infringed if it was a repeat or continuation of an earlier infringement or was done during the grace period.
Usual third-party rights (same as for patents) apply for those acting in good faith after the end of the grace period.
What is cancellation of a registered design?
It’s like surrender for patents.
The proprietor can request that the registrar cancel the registered design. If the registrar agrees, the cancellation is not retroactive.
How can a registered design be assigned?
In writing and signed on or by behalf of the assignor.
What is an exclusive licence?
A licence in writing signed by or on behalf of the proprietor authorising the licensee, to the exclusion of all other persons including the proprietor, to do anything that would otherwise be considered an infringement of the registered design.
The licensee under an exclusive licence has the same rights against any successor in title who is bound by the licence as he has against the person granting the licence.
An exclusive licensee has, except against the registered proprietor, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment (i.e., they can take infringement action as if they were the proprietor, but cannot sue the proprietor themselves for infringement). The proprietor can still bring infringement proceedings himself, however.
NB exclusive licensees cannot bring infringement proceedings without the proprietor being made party to the proceedings, and vice versa (although the second party will not be liable for costs unless they actively take part). This is referred to as “concurrent rights”. If an account of profits is awarded, the court will split them fairly between the exclusive licensee and proprietor unless they already have an agreement on how it should be split.
Same as copyright and UDR.
Explain how and why an assignment should be registered in the UK Designs Register.
An application for registration should be made to the registrar with eveidence that the assignment occured.
Only the registered proprietor can take action for infringement.
