Industrial Designs Act 2001

PART 1

1 Short title and commencement.

1.—(1) This Act may be cited as the Industrial Designs Act, 2001.

(2) This Act shall come into operation on such day or days as the Minister may by order or orders either generally or with reference to any particular purpose appoint, and different days may be so appointed for different purposes or different provisions of this Act.

2 Interpretation.

2.—(1) In this Act—

“Agreement establishing the World Trade Organisation” means the Agreement establishing the World Trade Organisation signed at Marrakesh on the 15th day of April, 1994;

“appropriate court” means—

(a) the District Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the District Court for actions in contract or tort,

(b) the Circuit Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the Circuit Court for actions in contract or tort, and

(c) in any other case, the High Court;

“author” has the meaning assigned to it by section 17;

“complex product” means a product which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product;

“computer-generated” has the meaning assigned to it by section 17;

“Controller” means the Controller of Patents, Designs and Trade Marks;

“Convention” means the Paris Convention for the Protection of Industrial Property of March 20th 1883, as amended or supplemented by any protocol to that Convention which is for the time being in force in the State;

“Convention country” means a country, territory, state or area, which is a party to the Convention, other than the State;

“Council Directive” means Directive No. 98/71/EC of the European Parliament and of the Council of 13 October 1998[^1] on the legal protection of designs;

“design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colour, shape, texture or materials of the product itself or its ornamentation;

“design of joint authorship” has the meaning assigned to it by section 18;

“design right” shall be construed in accordance with section 42;

“disability” has the same meaning as in section 48 of the Statute of Limitations, 1957;

“filing date” shall be construed in accordance with section 25;

“infringing article” has the meaning assigned to it by section 54;

“infringing product” has the meaning assigned to it by section 54;

“made available to the public” means published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within a Member State of the EEA;

“member of the World Trade Organisation” means a party to the Agreement establishing the World Trade Organisation;

“Member State of the EEA” means a state which is a contracting party to the Agreement on the European Economic Area signed at Oporto on 2 May 1992, as adjusted by the Protocol signed at Brussels on 17 March 1993 and as amended from time to time;

“Minister” means the Minister for Enterprise, Trade and Employment;

“prescribed” means prescribed by regulations made by the Minister;

“product” means any industrial or handicraft item, including parts intended to be assembled into a complex product, packaging, getup, graphic symbols and typographical typefaces, but not including computer programs;

“Register” has the meaning assigned to it by section 30;

“World Trade Organisation” means the Organisation established under the Agreement establishing the World Trade Organisation signed at Marrakesh on the 15th day of April 1994.

(2) In this Act, a reference to a section, Part or Schedule, is a reference to a section or Part of, or Schedule to this Act, unless there is an indication that a reference to any other enactment is intended or otherwise indicated.

(3) In this Act, a reference to a subsection, paragraph or subparagraph is a reference to the subsection, paragraph or subparagraph of the provision in which the reference occurs, unless there is an indication that a reference to some other provision is intended.

(4) A word or expression that is used in this Act and is also used in the Council Directive has, unless the contrary intention appears, the meaning in this Act that it has in the Council Directive.

(5) In construing a provision of this Act, a court shall give to it a construction that will give effect to the Council Directive, and for this purpose a court shall have regard to the provisions of the Council Directive, including the preambles.

(6) In this Act, a reference to any enactment shall be construed as a reference to that enactment as amended or adapted by or under any subsequent enactment.

(7) A design shall not be deemed to have been made available to the public—

(a) for the sole reason that it has been disclosed to another person under explicit or implicit conditions of confidentiality,

(b) where it is made available less than one year before the filing date or, where priority is claimed, the date of priority, by a person as a result of information provided or action taken by the author or his or her successor in title, or

(c) where a design has been made available to the public without the authorisation of the author or his or her successor in title.

3 Expenses.

3.—The expenses incurred by the Minister in the administration of this Act shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas.

4 Transitional provisions and repeals.

4.—(1) The First Schedule shall have effect with respect to transitional matters.

(2) Subject to subsection (1), the Acts mentioned in column (2) of Part 1 of the Second Schedule are hereby repealed to the extent mentioned in column (3) of that Schedule.

5 Prosecution of offences.

5.—Notwithstanding the provisions of section 10(4) of the Petty Sessions (Ireland) Act, 1851, summary proceedings for an offence under this Act may be commenced at any time within 12 months from the date on which the offence was committed.

6 Offences by bodies corporate.

6.—Where an offence under this Act is committed by a body corporate and is proved to have been so committed with the consent, connivance or approval of or to be attributable to any neglect on the part of a person being a director, manager, secretary or other officer of the body corporate, or any other person who was acting or purporting to act in any such capacity, that person as well as the body corporate shall be guilty of an offence and be liable to be proceeded against and punished as if he or she were guilty of the first-mentioned offence.

7 Offences by members of partnership.

7.—(1) Without prejudice to any liability of a partner under subsection (3), where an offence under this Act is committed by a partnership, any proceedings shall be brought against the partnership in the name of the partnership and not in the name of the individual partner.

(2) A fine imposed on a partnership on its conviction in proceedings brought under subsection (1) shall be paid out of the assets of the partnership.

(3) Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent commission of the offence, shall also be guilty of the offence and shall be liable to be proceeded against and punished accordingly.

8 Service of notices.

8.—(1) A notice required to be served or given under this Act shall, subject to subsection (2), be addressed to the person concerned by name, and may be served on or given to the person in one of the following ways—

(a) by delivering it to the person,

(b) by leaving it at the address at which the person ordinarily resides or, in a case in which an address for service has been furnished, at that address,

(c) by sending it by post in a prepaid letter to the address at which the person ordinarily resides or, in a case in which an address for service has been furnished, to that address,

(d) where the address at which the person ordinarily resides cannot be ascertained by reasonable enquiry and notice is required to be served on, or given to, him or her in respect of any premises, by delivering it to a person over the age of 16 years of age resident in or employed at the premises or by affixing it in a conspicuous position on or near the premises, and

(e) by sending it by such other method (including electronic method) as may be prescribed.

(2) Where a notice under this Act is to be served on or given to a person who is the owner or occupier of any premises and the name of the person cannot be ascertained by reasonable enquiry, it may be addressed to the person by using the words “the owner” or, as the case may require, “the occupier”.

(3) For the purposes of this section, a company within the meaning of the Companies Acts, 1963 to 1999, shall be deemed to be ordinarily resident at its registered office, and every other body corporate, unincorporated body or person, including a partnership, shall be deemed to be ordinarily resident at its principal office or place of business.

(4) A person shall not at any time during the period of 3 months after a notice is affixed under subsection (1)(d) remove, alter, damage or deface the notice without lawful authority.

(5) A person who contravenes subsection (4) shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding €1,905 (£1,500).

9 Fees.

9.—(1) There shall be charged by the Controller, and paid in respect of registration of designs and applications therefor and in respect of other matters arising under this Act, such fees as may from time to time be prescribed by the Minister with the consent of the Minister for Finance.

(2) Provision may be made by rules to enable the payment of a single fee in respect of two or more matters.

(3) All fees charged by the Controller shall be collected and accounted for in such manner as shall be determined by the Minister with the consent of the Minister for Finance.

(4) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under this section.

10 Laying of regulations before Houses of Oireachtas.

10.—(1) Subject to subsection (2), every regulation made under this Act shall be laid before each House of the Oireachtas as soon as may be after it is made and, if a resolution annulling the regulation is passed by either such House within the next 21 days on which that House has sat after the regulation is laid before it, the regulation shall be annulled accordingly, but without prejudice to the validity of anything previously done thereunder.

(2) Where a regulation is proposed to be made under section 79, subsection (1) of this section shall not apply and a draft of a regulation to be made under that section shall be laid before both Houses of the Oireachtas, and the regulation shall not be made until a resolution approving the draft has been passed by each House.

PART 2

Chapter 1 Registrable Designs

11 Registrable design.

11.—(1) A design that is new and has individual character shall be registrable under this Act.

(2) A design shall not be registrable under this Act if the applicant for registration of the design is not the proprietor of the design.

12 Novelty.

12.—(1) A design shall be considered to be new where no design identical to it has been previously made available to the public before the filing date for registration or, where priority is claimed, the date of priority.

(2) A design shall be deemed to be identical to a design which has been previously made available to the public where its features differ only in immaterial details.

13 Individual character.

13.—(1) A design shall be deemed to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by a design which has been made available to the public before the filing date of the application for registration or, where priority is claimed, the date of priority.

(2) In assessing individual character, the degree of freedom of the author of the design in developing the design shall be taken into consideration.

14 Protection requirements.

14.—(1) A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character—

(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the complex product, and

(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character under sections 12 and 13.

(2) In this section “normal use” means use by the end user, excluding maintenance, servicing or repair work.

15 Conflict with prior design.

15.—(1) A design which is in conflict with a prior design shall not be registrable under this Act.

(2) In this section “prior design” means a design which has been made available to the public after the filing date of the application for registration of another design, or where priority is claimed, after the date of priority of that other design, and which is protected from a date prior to the said filing date or, as the case may be, the said priority date by a design right under this Act or by an application for such a right.

16 Designs dictated by their technical function and designs of interconnections.

16.—(1) The features of appearance of a product which are solely dictated by its technical function shall not be registrable under this Act.

(2) The features of appearance of a product which are necessarily reproduced in their exact form and dimensions in order 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 shall not be registrable under this Act.

(3) Notwithstanding subsection (2), and subject to compliance with sections 12 and 13, a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system shall be registrable under this Act.

Chapter 2 Authorship and Ownership of Designs

17 Ownership of designs.

17.—(1) In this Act, the “author” in relation to a design means the person who creates the design.

(2) In the case of a design which is computer-generated, “author” means the person by whom the arrangements necessary for the creation of the design are undertaken.

(3) In this Act, “computer-generated”, in relation to a design, means that the design is generated by computer in circumstances where the author of the design is not an individual.

18 Joint ownership of designs.

18.—(1) In this Act, “design of joint authorship” means a design produced by two or more authors in which the contribution of each author is not distinct from that of the other author or authors.

(2) References in this Act to the author of a design shall, unless otherwise provided, be construed in relation to a design of joint authorship as references to all the authors of the design.

(3) Where a right conferred by this Act (or any aspect of such right) is owned by more than one person jointly, references in this Act to registered proprietor are to all the owners, and any requirement of the licence of the registered proprietor requires the licence of all the owners.

19 Treatment of author of design.

19.—(1) The author of a design shall be treated as the first proprietor of the design unless the design is created by an employee in the course of employment, in which case the employer is the first proprietor of the design, subject to any agreement to the contrary.

(2) Where a design becomes vested, whether by assignment, transmission or operation of law, in any person other than the first proprietor either alone or jointly with the first proprietor, that other person, or as the case may be, the first proprietor and that other person shall be treated as the proprietor of the design.

(3) Where the first proprietor of a design is not the author of the design, the author shall have the right to be cited as the author in the application for registration and in the Register.

Chapter 3 Proceedings for Registration

20 Application in prescribed form.

20.—(1) A person claiming to be the proprietor of a registrable design may apply in the prescribed form and manner to the Controller for registration of the design under this Act.

(2) Subject to subsections (3) and (4), an application under subsection (1) may be amended, at the request of the applicant and with the approval of the Controller, at any time prior to registration.

(3) An amendment to an application for registration of a design under this section shall not be approved of by the Controller if the amendment affects the identity of the design.

(4) Where an amendment to an application for the registration of a design under this section is made the filing date of the application shall be retained.

21 Power of Controller to refuse registration.

21.—(1) The Controller may refuse an application for the registration of a design—

(a) where the design is contrary to public policy or to accepted principles of morality,

(b) on the application of the copyright owner or on the initiative of the Controller, where the design constitutes an infringement of a copyright work under the Copyright and Related Rights Act, 2000, or

(c) on the application of the person concerned by the use or on the initiative of the Controller, where the design consists of or includes any thing which would not be registered by virtue of section 9, 62 or 63 of the Trade Marks Act, 1996.

(2) Where an application for the registration of a design has been refused under subsection (1), the Controller may register the design in an amended form, where that form complies with the requirements for registration under this Act and the identity of the design is retained.