UK designs

Question 1

“Design” definition

Answer 1

Means the appearance of the whole or a part of a product resulting from the features of, in particular:

the lines, contours, colours, shape, texture or materials of the product or its ornamentation.

Question 2

“Complex product” definition

Answer 2

A product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product

Question 3

“Product” definition

Answer 3

Any industrial or handicraft item other than a computer program, and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product.

Question 4

When is a design new?

Answer 4

If no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.

Question 5

When does a design have individual character?

Answer 5

If the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.

In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.

Question 6

When has the design been made available to the public?

Answer 6

(a) if it has been published, following registration or otherwise, exhibited, used in trade or otherwise disclosed before the relevant date, and
(b) the disclosure does not fall within subsection (b) below.

A disclosure falls within subsection (b) if:

(a) it could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the EEA and specialising in the sector concerned
(b) if it was made to a person other than the designer, to any successor in title of his, under conditions of confidentiality (whether express or implied)
(c) it was made by the designer or any successor in title of his, during the period of 12 months immediately preceding the relevant date
(d) it was made by a person other than the designer or any successor in title of his, during the period of 12 months immediately preceding the relevant date in consequence of information provided or other action taken by the designer or any successor in title of his
(e) it was made during the period of 12 months immediately preceding the relevant date as a consequence of an abuse in relation to the designer or any successor in title to his

Question 7

When a design applied to or incorporated in a product which constitutes a component part of a complex product shall be considered to be new and have individual character?

Answer 7

Only:

(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the complex product (i.e. use by the end user, excluding any maintenance, servicing or repair work in relation to the product), and
(b) to the extent that those visible features of the component part are in themselves new and have individual character

Question 8

Exclusions to “registrability”

Answer 8

shall not subsist in:

(a) features of appearance of a product which are solely dictated by the product’s technical function
(b) features of a product which must necessarily be reproduced in their exact form and dimensions to as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against another product so that either product may perform its function.

This does not prevent a right subsisting in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

(c) a design which is contrary to public policy or to accepted principles of morality

Question 9

False representation - after expiration

Answer 9

If any person, after the right in a RD has expired,

marks any product (to which the design has been applied or on which it has been incorporated)

with the word “registered” or any other word or words implying that there is a subsisting right in the design under the RDA,

or causes any such product to be so marked

is liable on summary conviction to a fine not exceeding level 1 on standard scale

Question 10

False representation - not registered

Answer 10

if any person falsely represents that a design applied to or incorporated in any product sold by him is registered,

he shall be liable on summary on summary conviction to a fine not exceeding level 3 on standard scale

a person who sells a product having stamped, engraved or impressed there on or otherwise applied thereto the word “registered” or any other word expressing or implying that the design is registered, shall be deemed to represent that the design is registered.

Question 11

False representation - the use in the UK in relation to a design

Answer 11

the use in the UK in relation to a design of the word “registered” or any other word or symbol importing a reference, express or implied, to the registration,

shall be deemed to be a representation as to registration under RDA

unless it is shown that the reference is to registration elsewhere than in the UK and the design is in fact so registered

Question 12

RD - term

Answer 12

five years from the date of registration

can be extended for a 2nd, 3rd, 4th and 5th period of 5 years: apply to the registrar for extension and pay the renewal fee, DF9A

if expires because not extended, registration shall notify the proprietor. If renewal fee paid before the notice, deemed paid on time!

grace period: 6 months for expiration; apply for extension, pay renewal fee + surcharge, DF9A

Question 13

RD - effects of grace period

Answer 13

anything done under or in relation to the right during the period shall be treated as valid

any act which would have constituted an infringement of the right if it has not expired shall be treated as infringement

any act which would have constituted use of the design for the services of the Crown if the right had not expired shall be treated as such use

Question 14

RD - restoration

who can apply?

Answer 14

• the registered proprietor or any other person who would have been entitled to the right in the design if it had not expired; if two or more people jointly, application may be made by one of them without joining others, with the leave of registrar

Question 15

RD - restoration, procedure

Answer 15

Apply using DF29 (statements) + evidence of statements, pay renewal fee + surcharge

standard : unintentional

within 12 months beginning with the date on which the RD ceased to have effect

Notice of application for restoration is published in a prescribed manner

If registrar not satisfied with evidence, he will notify the applicant, the applicant has 1 month to request a hearing before the registrar, the decision on the restoration will be made post-hearing. If negative, the registrar must give written reasons for refusal

Question 16

RD - restoration, intervening rights

Answer 16

1. Anything done under or in relation to the right during the period between expiry and restoration shall be treated as valid.
2. Anything done during that period which would have constituted an infringement if the right had not expired shall be treated as infringement, if:
   (a) done at a time when it was possible for an application for extension to be made (grace period), or
   (b) it was a continuation or repetition of an earlier infringing act
3. If, after it was no longer possible to use the grace period and before the publication of notice of application for restoration, a person:
   (a) began in good faith to do an act which would have constituted an infringement of the right if it had not expired, or
   (b) made in good faith serious and effective preparations to do such an act,

he has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the restoration of the right in the design, but this does not extend to granting a licence to another person to do the act.

4. If the act was done, or preparations were made, in the course of a business, the person entitled to the right as above may:
   (a) authorise the doing of the act by any partners of his for the time being in that business, and
   (b) assign that right, or transmit it on death (or dissolution, if body corporate) to any person who acquires that part of the business in the course of which the act was done or preparations were made
5. Where a product is disposed of to another person in exercise of rights above, that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the registered proprietor.
6. The above apply in relation to the use of a RD for the services of the crown as they apply as they apply in relation to infringement of the right in the design.

Question 17

RD - cancellation (surrender)

Answer 17

Registered proprietor, apply to the registrar in the prescribed manner.

Cancellation takes effect from the date of the registrar’s decision or from such other date as the registrar may direct.

Question 18

UDR/RD assignment

Answer 18

Where UK UDR subsists in a RD and the proprietor of the RD is also the UDR owner, an assignment of the UDR shall, unless a contrary intention appears, be taken to be also an assignment of the right in the RD.

Question 19

Grounds for invalidity

Answer 19

1. The design is not a “design” as per S1(2)
2. The design is not new, does not have individual character, is solely dictated by the product’s technical function and/or contrary to public policy/morality.

(any person interested)

3. The design should be refused under Schedule A1.

(any person concerned by the use in question)

4. The (later) design is not new or does not have individual character when compared to a design which:

(a) has been made available to the public after the relevant date, but
(b) is protected from a date prior to the relevant date
(i) by virtue of the UK or Community registration or an application for such registration, or
(ii) by virtue of an international registration designating the Community

(the relevant person, i.e. the registered proprietor of the design, the holder of the RCD or, as the case may be, the applicant)

5. The registered proprietor is not the proprietor of the design (the proprietor must object).
6. The design involves the use of an earlier distinctive sign (the holder of rights to the sign which include the right to prohibit in the UK such use of the sign must object)
7. The design constitutes an unauthorised use o a work protected by law of copyright in the UK (owner of the copyright must object).

Question 20

Invalidity - other

Answer 20

An application may be made at any time after the design has been registered.

The registration shall (to the extent as declared by the registrar) be treated as having been invalid from the date of registration or from such other date as the registrar may direct.

Question 21

UK RD - primary infringement

Answer 21

A person who, without the consent of the registered proprietor:

makes, offers, puts on the market, imports, exports or uses of a product in which the design is incorporated or to which it is applied

or stocks the product for these purposes

Question 22

UK RD - scope of protection

Answer 22

Includes any design which does not product on the informed user a different overall impression.

In determining whether a design produces a different overall impression, the degree of freedom of the designer in creating his design shall be taken into consideration.

The above is subject to any limitation attaching to the registration in question, e.g. any partial disclaimers or any declaration by the registrar or a court of partial invalidity

Question 23

UK RD - exempted acts

Answer 23

(a) an act which is done privately and for purposes which are not commercial
(b) and act which is done for experimental purposes
(c) and act of reproduction for teaching purposes or for the purpose of making a citation, provided that the act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design and that mention is made of the source
(d) the use of equipment on ships or aircraft which are registered in other country but which are temporarily in the UK
(e) the importation into the UK of spare parts or accessories for the purpose of repairing such ships or aircrafts
(f) the carrying out of repairs on such ships or aircraft

The right in a RD is not infringed by an act which relates to a product if the product has been put on the market in the EEA by or with consent of the registered proprietor.

The right in a RD of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration.

Question 24

UK RD - prior use

Answer 24

A person who, before the application/priority date, used a RD in good faith or made serious and effective preparations to do so, may continue to use the design for the purposes for which, before that date, the person had used it or made the preparations to use it.

This does not apply if the design which the person used or made preparations to use, was copied from the design which was subsequently registered.

A person having the right of prior use may not assign the right or transmit it on death (or, in the case of body corporate, its dissolution) unless:

(a) the design was used, or the preparations for its use were made, in the course of a business, and
(b) the right is assigned or transmitted with the part of the business in which the designs was used or the preparations were made

Question 25

UK RD infringement defence

Answer 25

No damages against a defendant who proves that at the date of infringement he was not aware and had no reasonable grounds for supposing that the design was registered.

For that purpose, it is not enough that the product was marked with:

(a) the word “registered” or any abbreviation thereof
(b) any word or words expressing or implying that the design applied to or incorporated in the product has been registered

unless the number of the design or a relevant internet link (an address of a posting on the internet) accompanied the word or words or abbreviations in question

The address of a posting on the internet, which:

(a) is accessible to the public free or charge, and
(b) which clearly associates the product with the number of the design.

Nothing above affects the power of court to grant an injunction.

Question 26

RD - infringing article order for delivery up

Answer 26

Where a person:

(a) has in his possession, custody or control for commercial purposes an infringing article, or
(b) has in his possession cursory or control anything specifically designed or adapted for making articles to a particular design which is a RD, knowing or having reason to believe that it has been or it is to be used to make an infringing article,

the registered proprietor may apply to the court for an order that the infringing article or other thing be delivered up to him or to such other person as the court may direct.

an application may be made to the court for an order that the article or other thing delivered up shall be:

(a) forfeited to the proprietor, or
(b) destroyed or otherwise dealt with as the court may thing fit

or for a decision that no such order should be made.

Question 27

Infringing article - definition

Answer 27

An article is an infringing article if its making to that design was an infringement of a right in a RD.

It is also an infringing article if it has been or is proposed to be imported into the UK and its making to that design in the UK would have been an infringement of a right in a RD or a breach of exclusive licence agreement relating to that RD

Where it is shown that an article is made to a design which is or has been an RD, it shall be presumed until the contrary is proved that the article was made at the time when the right in the RD subsisted.

Does not apply to an article which may be lawfully imported into the UK by virtue of an enforceable Community right.

Question 28

RDA - threats

Answer 28

A communication contains a threat of infringement proceedings if a reasonable person in the position of the recipient would understand from the communication that:

(a) a RD exists, and
(b) a person intends to bring proceedings, whether in a court in the UK or elsewhere, against another person for infringement of the right in the RD by:
- an act done in the UK, or
- an act which, if done, would be done in the UK

Question 29

RD - criminal offence (1)

Answer 29

A person commits an offence if:

(a) in the course of a business, the person intentionally copies a RD so as to make a product:

(i) exactly to that design, or
(ii) with features which differ only in immaterial details from that design, and

(b) the person does so:

(i) knowing or having reason to believe that the design is a RD, and
(ii) without the consent of the registered proprietor of the design

This includes a RCD.

A person guilty of this offence is liable:

(a) on conviction on indictment, to imprisonment for a term not exceeding 10 years, or to a fine, or both
(b) on summary conviction in EN, CY or NI, to imprisonment for a term not exceeding 6 months or to a fine not exceeding the statutory maximum, or both
(c) on summary conviction in SC, to imprisonment for a term not exceeding 12 months or to a fine not exceeding the statutory maximum, or both

Question 30

RD - criminal offence (2)

Answer 30

In the case of a product where a RD has been intentionally copied so as to make the product exactly to that design or with features that differ only in immaterial details from said design, a person commits an offence if:

(a) in the course of a business, the person offers, puts on the market, imports, export, uses or stocks the product for one or more of those purposes,
(b) the person does so without the consent of the registered proprietor of the design, and
(c) the person does so knowing or having reason to believe that:
(i) a design has been intentionally copied without the consent of the registered proprietor so as to make the product exactly to that design or with features which differ only in immaterial details from that design, and
(ii) the design is a registered design

This includes a RCD. However, “in the course of business” does not include the use which is merely incidental to carrying out the business.

A person guilty of this offence is liable:

(a) on conviction on indictment, to imprisonment for a term not exceeding 10 years, or to a fine, or both
(b) on summary conviction in EN, CY or NI, to imprisonmen for a term not exceeding 6 months or to a fine not exceeding the statutory maximum, or both
(c) on summary conviction in SC to imprisonment for a term not exceeding 12 months or to a fine not exceeding the statutory maximum, or both

Question 31

RD - criminal offence (defences)

Answer 31

It is a defence:

(a) to show that the person reasonably believed that the registration of the design was invalid
(b) to show that the person did not infringe the right in the design, or
(bb) reasonably believe that the person did not do so