LegalizeIndustrial Designs Act 2001
(3) Where a requirement under subsection (2) is not complied with, the Controller or, as the case may be, the High Court may treat the proceedings as abandoned.
82 Evidence before the Controller.
82.—In subsection (1) of section 92 (as amended by section 73 of the Trade Marks Act, 1996) of the Patents Act, 1992 (which relates to evidence in proceedings before the Controller under that Act or any other enactment), after “before the Controller (including proceedings under the Trade Marks Act, 1996”, there shall be inserted “, and the Industrial Designs Act, 2001” and the section as so amended is set out in the Table to this section.
TABLE
In any proceeding under this or any other enactment before the Controller (including proceedings under the Trade Marks Act, 1996, and the Industrial Designs Act, 2001) evidence shall be given by statutory declaration in the absence of directions to the contrary, but in any case in which the Controller thinks it right so to do he may take evidence viva voce in lieu of or in addition to evidence by such declaration.
83 Costs of Controller in proceedings.
83.—In proceedings before the courts under this Act, the Controller shall not be awarded costs and shall not be ordered to pay the costs of any other party.
84 Appeals.
84.—(1) Except as otherwise provided by this Act, an appeal lies to the High Court from any decision or order of the Controller under this Act within the period of 3 months from the date of the decision or order of the Controller.
(2) An appeal from a decision of the High Court under this section shall lie to the Supreme Court on a specified point of law by leave of the High Court.
Chapter 18 Miscellaneous
85 Power of Minister to make regulations.
85.—(1) The Minister may make regulations for the purpose of enabling this Act to have full effect.
(2) Regulations made under this section may contain such incidental, supplementary or consequential provisions as appear to the Minister to be necessary or expedient for the purposes of this Act.
(3) The Minister may make regulations for prescribing any matter referred to in this Act as prescribed.
(4) The Government or the Minister, as the case may be, may by order amend or revoke an order made by the Government or the Minister under this Act including an order made under this subsection (other than a commencement order).
86 Rights of State in respect of registered designs.
86.—(1) Subject to this section, the registration of a design shall have the same effect as against the State as it has against an individual.
(2) A Minister of the Government may, by himself or herself or by such of his or her officers, servants or agents as may be authorised in writing by him or her or by any other person acting on his or her behalf, at any time after the application for registration of a design under this Act, use the design for the service of the State—
(a) on such terms as may, either before or after the use thereof, be agreed on with the consent of the Minister for Finance between that Minister of the Government and the applicant or, as the case may be, the registered proprietor, or
(b) in default of agreement, on such terms as may be settled in the manner provided under this section,
and the terms of any agreement or licence concluded between the applicant or, as the case may be, the registered proprietor and any person other than a Minister of the Government shall be inoperative so far as it concerns the use of the design for the service of the State.
(3) Where a registered design has, before the date of registration or, where priority is claimed, the date of priority, been duly recorded in a document or embodied in a model by a Minister of the Government (such design not having been communicated directly or indirectly by the applicant for the registration or, as the case may be, the registered proprietor) any Minister of the Government or such of his or her officers, servants or agents as may be authorised in writing by him or her, may use the design so recorded for the service of the State free of royalty or any other payment to the applicant or, as the case may be, the registered proprietor, notwithstanding the existence of the design right.
(4) For the purposes of subsection (3), where, in the opinion of that Minister of the Government, the disclosure to the applicant or, as the case may be, the registered proprietor of the document recording the design or the model embodying the design would be detrimental to the public interest, such disclosure may be made confidentially to counsel on behalf of the applicant or registered proprietor or to any independent expert mutually agreed upon.
(5) In case of a dispute as to the use of a design under this section, the terms therefor or as to the existence or scope of any record referred to in subsection (3), the matter shall be referred to the High Court for decision, and the High Court shall have the power to refer the whole matter or any question or issue of fact thereon to be heard by an arbitrator upon such terms as it may direct.
(6) The High Court or arbitrator, in setting a dispute referred to in subsection (5), shall be entitled to take into consideration any benefit or consideration which the applicant or registered proprietor or any other person interested in the design may have received directly or indirectly from the State in respect of such use of the design.
(7) Notwithstanding subsection (5), an arbitrator appointed under that subsection shall make his or her finding within 3 months of the reference from the High Court, or within such further period of time as may be agreed with the High Court.
(8) In any proceedings under this section, the Minister of the Government who is a party to the proceedings may—
(a) put in question the validity of the relevant registration without applying for its invalidation, or
(b) if the registered proprietor of the design is party to the proceedings, apply for the invalidation of the registration on any ground upon which a registration may be invalidated under this Act.
(9) The right to use a design for the service of the State under this section shall include the power to sell or rent, or offer for sale or rent, any products made in pursuance of such right which are no longer required for the service of the State.
(10) Nothing in this section shall affect the right of the State or of any person deriving title directly or indirectly from the State to sell, rent or use any articles forfeited under the Customs Acts.
(11) Any person who acquires products disposed of, sold or rented in the exercise of powers conferred by this section and any person claiming under him or her shall have the power to deal with the products in the same manner as if they had been made pursuant to a design right held on behalf of the State.
(12) In this Act, “service of the State” means a service financed out of moneys charged on or advanced out of the Central Fund or moneys provided by the Oireachtas or by a local authority for the purposes of the Local Government Act, 1941.
87 Privileged communications.
87.—(1) This section applies to communications in respect of any matter relating to the protection of a design.
(2) Any communication to which this section applies—
(a) between a person and his or her registered agent, or
(b) for the purposes of obtaining or in response to a request for information which a person is seeking for the purpose of instructing his or her registered agent,
is privileged from disclosure in legal proceedings in the State in the same way as a communication between a person and his or her solicitor or, as the case may be, a communication for the purpose of obtaining or in response to a request for information which a person seeks for the purpose of instructing his or her solicitor.
(3) In subsection (2), “registered agent” means:
(a) a registered trade mark agent;
(b) a registered patent agent.
(4) Section 94(2) of the Patents Act, 1992, is hereby amended by the deletion of “, design” and the said subsection shall be construed and have effect accordingly.
88 Recognition of agents.
88.—(1) Whenever, under this Act, an act has to be undertaken by or done to a person in connection with the registration of a design or any procedure relating to a registered design or a design right, the act may be undertaken by or done to an agent—
(a) who is authorised by that person orally or in writing; and
(b) who is a registered patent agent or a registered trade mark agent.
(2) A registered patent agent or a registered trade mark agent duly authorised by a person under subsection (1) to act as his or her agent may, subject to any agreement to the contrary between the agent and that person, on giving notice to the Controller and that person, cease to act as agent for that person.
(3) In this Act, “registered patent agent” shall have the same meaning as “patent agent” in the Patents Act, 1992.
(4) Part X (Patent Agents) of the Patents Act, 1992, shall apply in respect of registered patent agents under this Act as it applies in respect of patent agents under the Patents Act, 1992.
(5) In this Act, “registered trade mark agent” shall have the same meaning as “registered trade mark agent” in the Trade Marks Act, 1996.
(6) Part V (Trade Mark Agents) of the Trade Marks Act, 1996, shall apply in respect of registered trade mark agents under this Act as it applies in respect of registered trade mark agents under the Trade Marks Act, 1996.
(7) The Minister may prescribe the maximum fees to be charged by a registered patent agent or a registered trade mark agent in respect of service provided in connection with the protection of designs.
(8) Nothing in this Act shall be construed as prohibiting solicitors or barristers from taking such part in proceedings under this Act as has heretofore been taken by solicitors or barristers in connection with a design or any procedure relating to a design or the registration thereof.
(9) A registered patent agent or a registered trade mark agent shall not be guilty of an offence under section 58 of the Solicitors Act, 1954 (which prohibits the preparation for reward of certain instruments by persons not legally qualified), by reason only of the preparation by the agent of—
(a) a deed assigning the property in a design application or design; or
(b) any document (not being a deed) for use in proceedings under this Act before the Controller or the appropriate court.
89 Amendment to Copyright and Related Rights Act, 2000.
89.—The Copyright and Related Rights Act, 2000, is hereby amended by—
(a) the insertion of the following after section 31—
| ““Duration of copyright in relation to registered design. | 31A.—The copyright in a design registered under the Industrial Designs Act, 2001, shall expire 25 years after the filing date of the application for registration of the design under that Act or on the date of expiration of the copyright under this Act, whichever is the sooner.”, |
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(b) the deletion in section 79(2)(a) of “texture and materials” and the substitution of “texture or materials”,
(c) the substitution in section 78 of “the Industrial Designs Act, 2001” for “the Act of 1927” in subsection (1)(a),
(d) the substitution in section 78 of “the Industrial Designs Act, 2001” for “the Act of 1927” in subsection (2),
(e) the insertion of the following after section 78—
| “Design documents and models. | 78A.—(1) The copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface is not infringed by the making of a product to the design or the copying of a product made to the design. (2) The copyright in a design document or a model recording or embodying a design for anything other than an artistic work or a typeface is not infringed by the issue to the public, or the inclusion in a film, broadcast or cable programme service, of anything the making of which is, by virtue of subsection (1), not an infringement of that copyright. (3) In this section and section 78B— ‘design’ means the design of any aspect of the shape or contours (whether internal or external) of the whole or part of a product, other than surface decoration; ‘design document’ means any record of a design, whether in the form of a drawing, a written description, a photograph, storing the work in any medium or otherwise; ‘product’ means any industrial or handicraft item, including parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographical typefaces, but not including computer programmes; and ‘complex product’ means a product which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product. |
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| Effect of exploitation of design derived from artistic work. | 78B.—(1) This section applies where an artistic work has been exploited, by or with the authorisation of the copyright owner, by— (a) making by an industrial process products falling to be treated for the purposes of this Part as copies of the work, and (b) marketing such products, in the State or elsewhere. (2) After the expiry of 25 years from the end of the calendar year in which such products are first marketed, the work may be copied by making products of any description, or doing anything for the purpose of making products of any description, and anything may be done in relation to products so made, without infringing the copyright in the work. (3) Where only part of an artistic work is exploited as mentioned in subsection (1), subsection (2) applies only in relation to that part. (4) The Minister may prescribe: (a) the circumstances in which a product, or any description of product, is to be regarded for the purposes of this section as made by an industrial process; (b) the exclusion from the operation of this section such products of a primarily literary or artistic character as the Minister thinks fit. (5) In this section references to products do not include films.”, |
(f) the deletion in section 85(2) of “15 years” and the substitution of “25 years”,
(g) the repeal of section 79(2).
FIRST SCHEDULE
A design that stands registered on the day on which this Act comes into operation shall continue to be registered under the Industrial and Commercial Property (Protection) Acts, 1927 to 1958, and those Acts shall apply notwithstanding the coming into operation of this Act.
For the purposes of this Schedule, an application for the registration of a design under the Industrial and Commercial Property (Protection) Acts, 1927 to 1958, received by the Controller before the day on which the provisions of this Act relating to registration proceedings come into operation in respect of which a registration has not been effected (other than an application which has been abandoned or refused) shall, notwithstanding the coming into operation of this Act, be treated in accordance with the Industrial and Commercial Property (Protection) Acts, 1927 to 1958, and the provisions of those Acts shall also apply to that design, if registered.
Notwithstanding paragraph 2, an application for the registration of a design under the Industrial and Commercial Property (Protection) Acts, 1927 to 1958, received by the Controller before the day on which the provisions of this Act relating to registration proceedings come into operation in respect of which a registration has not been effected (other than an application which has been abandoned or refused) may be registered under this Act where the applicant gives notice to the Controller requesting that the registration of the design be determined in accordance with this Act and otherwise satisfies the Controller that the application is a valid application for the purposes of this Act.
Notice given under paragraph 3 shall be in the prescribed form, shall be accompanied by the prescribed fee and shall not be valid unless it is received by the Controller within 6 months of the coming into operation of this Act and before the Controller registers the design under the Industrial and Commercial Property (Protection) Acts, 1927 to 1958.
Notice given under paragraph 3 shall be irrevocable.
Where copyright did not subsist in a design by virtue of section 172 of the Industrial and Commercial Property (Protection) Act, 1927, before the commencement of this Act, then copyright shall not subsist in that design on or after such commencement.
SECOND SCHEDULE
| (1) | (2) | (3) |
|---|---|---|
| Number and Year | Short Title of Act | Extent of Repeal |
| No. 16 of 1927 | Industrial and Commercial Property (Protection) Act, 1927 | All remaining provisions |
| No. 13 of 1929 | Industrial and Commercial Property (Protection) (Amendment) Act, 1929 | All remaining provisions |
| No. 45 of 1947 | Industrial and Commercial Property (Protection) (Neuchatel Agreement) Act, 1947 | All remaining provisions |
| No. 32 of 1949 | Industrial and Commercial Property (Protection) (Amendment) Act, 1949 | All remaining provisions |
| No. 13 of 1957 | Industrial and Commercial Property (Protection) (Amendment) Act, 1957 | All remaining provisions |
| No. 21 of 1958 | Industrial and Commercial Property (Protection) (Amendment) Act, 1958 | All remaining provisions |
| No. 10 of 1963 | Copyright Act, 1963 | All remaining provisions |
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