Intellectual Property Act 2014

Part 1 — Design

Unregistered design right

The register: changes of ownership and inspection of documents

1

• (1) In section 213(2) of the Copyright, Designs and Patents Act 1988 (unregistered design right: meaning of “design”), in subsection (2), omit “any aspect of”.

• (2) In section 51 of that Act (copyright infringement: exception for certain designs), in subsection (3), in the definition of “design”, omit “any aspect of”.

• (3) In section 213(4) of that Act (unregistered design right: meaning of “original”)—

• (a) after “commonplace” insert “ in a qualifying country ”, and

• (b) at the end insert “ ; and “qualifying country” has the meaning given in section 217(3) ”.

• (4) Subsection (3) applies only to designs created after the commencement of that subsection.

Ownership of design

2

• (1) In section 215 of the Copyright, Designs and Patents Act 1988 (ownership of unregistered design right)—

• (a) in subsection (1), omit “in pursuance of a commission or”,

• (b) omit subsection (2), and

• (c) in subsection (3), omit “, in a case not falling within subsection (2)”.

• (2) In consequence of subsection (1)—

• (a) in section 213(5)(a) of that Act (person by reference to whom design qualifies for design right), for “the design was commissioned or the designer employed” substitute “ the designer was employed ”,

• (b) in section 218 of that Act (design qualifies for design right by reference to designer), in subsection (1), omit “in pursuance of a commission or”,

• (c) in section 219 of that Act (the title to which becomes “ Qualification by reference to employer ”), in subsection (1), for “in pursuance of a commission from, or in the course of employment with,” substitute “ in the course of employment with ”,

• (d) in subsection (2) of that section, omit “a joint commission or” and “commissioners or”,

• (e) in subsection (3) of that section, omit “jointly commissioned or”, “commissioners or” and “commissioner or”,

• (f) in that subsection, for “215(2) or (3)” substitute “ 215(3) ”,

• (g) in section 220 of that Act (qualification by reference to first marketing), in subsection (1), omit “, commissioner”,

• (h) in subsection (4)(a) of that section, omit “, commissioner of the design”,

• (i) in section 263 of that Act (definitions), in subsection (1), in the definition of “British design”, omit “the design is commissioned or”,

• (j) in that subsection, omit the definition of “commission”, and

• (k) in section 264 of that Act (index of defined expressions), omit the entry for “commission”.

• (3) This section does not apply to—

• (a) any design created before the commencement of this section, or

• (b) any design created after the commencement of this section in pursuance of a commission (irrespective of whether the design was commissioned before or after that commencement) provided that—

• (i) the designer and the commissioner of the design have entered into a contract relating to the commission of the design, and

• (ii) the contract was entered into before that commencement.

Qualification criteria

3

• (1) In section 217 of that Act (qualifying individuals and qualifying persons), in subsection (1)—

• (a) omit the definition of “qualifying individual”, and

• (b) for the definition of “qualifying person” substitute—

“qualifying person” means— (a) an individual habitually resident in a qualifying country, or (b) a body corporate or other body having legal personality which— (i) is formed under the law of a part of the United Kingdom or another qualifying country, and (ii) has in any qualifying country a place of business at which substantial business activity is carried on.

• (2) In that section, omit subsection (4).

• (3) In section 218 of that Act (qualification by reference to designer)—

• (a) in subsection (2), omit “a qualifying individual or, in the case of a computer-generated design,”

• (b) in subsection (3), omit “a qualifying individual or, as the case may be,”, and

• (c) in subsection (4), omit “qualifying individuals or”.

• (4) In section 220 of that Act (qualification by reference to first marketing)—

• (a) in subsection (1)(a), omit “who is exclusively authorised to put such articles on the market in the United Kingdom”,

• (b) in subsection (2), for “requirements” substitute “ requirement ”,

• (c) in subsection (3), for “those requirements” substitute “ that requirement ”, and

• (d) omit subsection (4).

• (5) In section 264 of that Act (index of defined expressions), in the Table, omit the entry for “qualifying individual”.

• (6) This section applies only to designs created after the commencement of this section.

Infringement: exceptions

4

After section 244 of the Copyright, Designs and Patents Act 1988 (but before the following cross-heading) insert—

(244A) Design right is not infringed by— (a) an act which is done privately and for purposes which are not commercial; (b) an act which is done for experimental purposes; or (c) an act of reproduction for teaching purposes or for the purpose of making citations provided that— (i) the act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design, and (ii) mention is made of the source. (244B) Design right is not infringed by— (a) the use of equipment on ships or aircraft which are registered in another country but which are temporarily in the United Kingdom; (b) the importation into the United Kingdom of spare parts or accessories for the purpose of repairing such ships or aircraft; or (c) the carrying out of repairs on such ships or aircraft.

Registered Community design

Infringement: exception

5

• (1) Section 53 of the Copyright, Designs and Patents Act 1988 (permitted acts in relation to copyright works: things done in reliance on registration of design) is amended as follows.

• (2) In subsection (1), in paragraph (a)—

• (a) after “registered” insert

— (i)

, and

• (b) after “corresponding design” insert

, or (ii) under the Community Design Regulation as the right holder of a corresponding registered Community design

.

• (3) In paragraph (b) of that subsection, after “the registration or” insert “ , in a case of registration under the 1949 Act, ”.

• (4) At the end of that subsection, insert “ or, in a case of registration under the Community Design Regulation, that the person registered as the right holder was not the right holder of the design for the purposes of the Regulation ”.

• (5) After subsection (2), insert—

(3) In subsection (1), a “corresponding registered Community design”, in relation to an artistic work, means a design within the meaning of the Community Design Regulation which if applied to an article would produce something which would be treated for the purposes of this Part as a copy of the artistic work.

• (6) After subsection (3), insert—

(4) In this section, “the Community Design Regulation” means Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.

Registered designs

Ownership of design and application for registration

6

• (1) In section 2 of the Registered Designs Act 1949 (ownership of registered designs)—

• (a) omit subsection (1A) (which provides for the commissioner of a design to be the original proprietor), and

• (b) in subsection (1B), omit “, in a case not falling within subsection (1A),”.

• (2) In section 3 of that Act (application for registration), omit subsection (2) (requirement for application to be made by person claiming to be proprietor).

Right of prior use

7

• (1) After section 7A of the Registered Designs Act 1949 insert—

(7B) (1) A person who, before the application date, used a registered design 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. (2) In subsection (1), the “application date”, in relation to a registered design, means— (a) the date on which an application for the registration was made under section 3, or (b) where an application for the registration was treated as having been made by virtue of section 14(2), the date on which it was treated as having been so made. (3) Subsection (1) does not apply if the design which the person used, or made preparations to use, was copied from the design which was subsequently registered. (4) The right conferred on a person by subsection (1) does not include a right to licence another person to use the design. (5) Nor may the person on whom the right under subsection (1) is conferred assign the right, or transmit it on death (or in the case of a body corporate on 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 design was used or the preparations for its use were made.

• (2) This section applies only to designs registered under the Registered Designs Act 1949 after the commencement of this section.

Accession to the Hague Agreement

8

• (1) After section 15 of the Registered Designs Act 1949 insert—

(15ZA) (1) The Secretary of State may by order make provision for giving effect in the United Kingdom to the provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted by the Diplomatic Conference on 2 July 1999. (2) An order under this section may, in particular, make provision about— (a) the making of applications for international registrations at the Patent Office; (b) the procedures to be followed where an international registration designates the United Kingdom; (c) the effect of an international registration which designates the United Kingdom; (d) the communication of information to the International Bureau; (e) the payment of fees. (3) An order under this section may— (a) amend this Act; (b) apply specified provisions of this Act with such modifications as may be specified. (4) An expression used in subsection (2) and in the Agreement referred to in subsection (1) has the same meaning in that subsection as it has in the Agreement.

• (2) In section 37 of that Act (rules and orders)—

• (a) in subsection (3), before “shall be exercisable” insert “ and the power to make an order under section 15ZA ”, and

• (b) before subsection (5) insert—

(4B) The Secretary of State may not make an order under section 15ZA unless a draft of the statutory instrument containing the order has been laid before, and approved by a resolution of, each House of Parliament.

The register: changes of ownership and inspection of documents

9

• (1) In section 19 of the Registered Designs Act 1949 (registration of assignments, etc.), omit subsection (3A) (which, where design right subsists in a registered design, prohibits the registrar from registering an interest unless satisfied that the person who has the interest has a corresponding interest in the design right).

• (2) In section 22 of that Act (the title to which becomes “ Inspection of registered designs and associated documents ”), in subsection (1), after paragraph (a) insert

and (aa) every document kept at the Patent Office in connection with that design.

• (3) In that subsection, for “subsection (4)” substitute “ subsections (4) to (7) ”.

• (4) After subsection (4) of that section insert—

(5) For the purposes of subsection (1), a document is not to be regarded as open for inspection unless (in addition to being open for inspection in hard copy) it is made available by electronic transmission in such a way that members of the public may access it at a place and time individually chosen by them.

• (5) After subsection (5) insert—

(6) The Secretary of State may by rules specify cases or circumstances in which a document kept at the Patent Office in connection with a registered design may not be inspected. (7) Rules made under subsection (6) may confer a discretion on the registrar.

• (6) In section 37 of that Act (rules and orders), in subsection (2), after “section 15” insert “ or 22(6) ”.

Legal proceedings and appeals

10

• (1) In section 24B of the Registered Designs Act 1949 (exemption of innocent infringer from liability), in subsection (1), omit “, and no order shall be made for an account of profits,”.

• (2) After section 27 of that Act insert—

(27A) (1) An appeal against a decision of the registrar under this Act may be made to— (a) a person appointed by the Lord Chancellor (an “appointed person”), or (b) the court. (2) On an appeal under this section to an appointed person, the appointed person may refer the appeal to the court if— (a) it appears to the appointed person that a point of general legal importance is involved, (b) the registrar requests that the appeal be so referred, or (c) such a request is made by any party to the proceedings before the registrar in which the decision appealed against was made. (3) Before referring an appeal to the court under subsection (2), the appointed person must give the appellant and any other party to the appeal an opportunity to make representations as to whether it should be so referred. (4) Where, on an appeal under this section to an appointed person, the appointed person does not refer the appeal to the court— (a) the appointed person must hear and determine the appeal, and (b) the appointed person's decision is final. (5) Sections 30 and 31 (costs, evidence) apply to proceedings before an appointed person as they apply to proceedings before the registrar. (6) In the application of this section to England and Wales, “the court” means the High Court. (27B) (1) A person is not eligible for appointment under section 27A(1)(a) unless the person— (a) satisfies the judicial-appointment eligibility condition on a 5-year basis, (b) is an advocate or solicitor in Scotland of at least 5 years' standing, (c) is a member of the Bar of Northern Ireland or solicitor of the Court of Judicature of Northern Ireland of at least 5 years' standing, or (d) has held judicial office. (2) An appointed person must hold and vacate office in accordance with his terms of appointment, subject to subsections (3) to (5). (3) An appointed person is to be paid such remuneration (whether by way of salary or fees) and such allowances as the Secretary of State may with the approval of the Treasury decide. (4) An appointed person may resign office by notice in writing to the Lord Chancellor. (5) The Lord Chancellor may by notice in writing remove an appointed person (“A”) from office if— (a) A has become bankrupt or made an arrangement with A's creditors or, in Scotland, A's estate has been sequestrated or A has executed a trust deed for A's creditors or entered into a composition contract, (b) A is incapacitated by physical or mental illness, or (c) A is, in the opinion of the Lord Chancellor, otherwise unable or unfit to perform A's duties as an appointed person. (6) Before exercising a power under section 27A or this section, the Lord Chancellor must consult the Secretary of State. (7) The Lord Chancellor may remove a person from office under subsection (5) only with the concurrence of the appropriate senior judge. (8) The appropriate senior judge is the Lord Chief Justice of England and Wales, unless— (a) the person to be removed exercises functions wholly or mainly in Scotland, in which case it is the Lord President of the Court of Session, or (b) the person to be removed exercises functions wholly or mainly in Northern Ireland, in which case it is the Lord Chief Justice of Northern Ireland.

• (3) In section 27(1)(a) of that Act, after “the High Court or” insert “ (subject to section 27A(6)) ”.

• (4) Section 28 of that Act (the Appeal Tribunal) is repealed.

• (5) In section 37(3) of that Act (provision as to rules and orders)—

• (a) omit “or on the Appeal Tribunal”, and

• (b) omit the words from “; and the Statutory Instruments Act 1946” to the end.

• (6) In section 44(1) of that Act (interpretation), omit the definition of “Appeal Tribunal”.

• (7) In section 249 of the Copyright, Designs and Patents Act 1988 (right of appeal as to terms of licence of right)—

• (a) in subsection (1), for the words from “the Appeal Tribunal” to the end substitute “ a person appointed under section 27A of the Registered Designs Act 1949 ”, and

• (b) omit subsection (2).

• (8) In section 251(4) of that Act (right of appeal against decisions of comptroller relating to design right)—

• (a) before “the High Court” insert

— (a)

, and

• (b) at the end insert

, or (b) a person appointed under section 27A of the Registered Designs Act 1949

.

• (9) In the House of Commons Disqualification Act 1975, in Schedule 1 (offices disqualifying for membership), in Part 3 (other disqualifying offices), at the appropriate place insert— “ Person appointed under section 27A of the Registered Designs Act 1949 to hear and determine appeals against decisions of the registrar under that Act ”.

• (10) In the Constitutional Reform Act 2005, in Schedule 7 (protected functions of the Lord Chancellor), in paragraph 4, at the appropriate place insert— “ Registered Designs Act 1949 (c.88) Sections 27A and 27B. ”

• (11) Section 143 of the Tribunals, Courts and Enforcement Act 2007 (which makes provision about appeals in relation to design rights) is repealed.

Opinions service

11

• (1) Before section 29 of the Registered Designs Act 1949 (and the preceding cross-heading) insert—