The Community Design Regulations 2005

Made: 15th August 2005

Laid before Parliament: 23rd August 2005

Coming into force: 1st October 2005

The Secretary of State, being a Minister designated for the purposes of section 2(2) of the European Communities Act 1972 in relation to measures relating to the legal protection of designs , in exercise of the powers conferred on him by that section makes the following Regulations:

Introductory and interpretation

1

• (1) These Regulations may be cited as the Community Design Regulations 2005 and shall come into force on 1st October 2005.

• (2) In these Regulations—

• “design court” has the meaning given by Article 81 of the Design Regulation;

• “Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as amended by regulation 4(1) of, and Part 1 of Schedule 1 to, the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2018; and

• “supplementary unregistered design” has the meaning given by Article 1 of the Design Regulation.

• (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Remedy for groundless threats of infringement proceedings

2

• (1) A communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that—

• (a) a supplementary unregistered design exists, and

• (b) a person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the supplementary unregistered design by—

• (i) an act done in the United Kingdom, or

• (ii) an act which, if done, would be done in the United Kingdom.

• (2) References in this regulation and in regulation 2C to a “recipient” include, in the case of a communication directed to the public or a section of the public, references to a person to whom the communication is directed.

Falsely representing a design as a registered Community design

3

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Privilege for communications with those on the special list of professional design representatives

4

• (1) This regulation applies to communications as to any matter relating to the protection of a supplementary unregistered design.

• (2) Any such communication—

• (a) between a person and his professional designs representative, 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 professional designs representative,

is privileged from, or in Scotland protected against, disclosure in legal proceedings in the same way as a communication between a person and his 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 is seeking for the purpose of instructing his solicitor.

• (3) In paragraph (2) “professional designs representative” means a person whose name appears on the special list of professional representatives for design matters maintained by the European Union Intellectual Property Office referred to in Article 78(4) of Council Regulation (EC) 6/2002 of 12th December 2001 on Community designs as it had effect immediately before IP completion day.

Use of Community design for services of the Crown

5

The provisions of the Schedule to these Regulations shall have effect with respect to the use of ... supplementary unregistered ... designs for the services of the Crown and the rights of third parties in respect of such use.

Amendment of section 35 of the Registered Designs Act 1949

6

In section 35 of the Registered Designs Act 1949 (fine for falsely representing a design as registered), after subsection (2) there shall be inserted—

(3) For the purposes of this section, the use in the United Kingdom in relation to a design— (a) of the word “registered”, or (b) of any other word or symbol importing a reference (express or implied) to registration, shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in the United Kingdom and that the design is in fact so registered.

SCHEDULE — USE OF supplementary unregistered DESIGNS FOR SERVICES OF THE CROWN

Use of Community design for services of the Crown

1

• (1) A government department, or a person authorised in writing by a government department, may without the consent of the holder of a supplementary unregistered design—

• (a) do anything for the purpose of supplying products for the services of the Crown, or

• (b) dispose of products no longer required for the services of the Crown;

and nothing done by virtue of this paragraph infringes the supplementary unregistered design.

• (2) References in this Schedule to “the services of the Crown” are limited to those which are necessary for essential defence or security needs.

• (3) In this Schedule—

• “Crown use”, in relation to a supplementary unregistered design, means the doing of anything by virtue of this paragraph which would otherwise be an infringement of the supplementary unregistered design; and

• “the government department concerned”, in relation to such use, means the government department by whom or on whose authority the act was done.

• (4) The authority of a government department in respect of Crown use of a supplementary unregistered design may be given to a person either before or after the use and whether or not he is authorised, directly or indirectly, by the holder of the supplementary unregistered design to do anything in relation to the design.

• (5) A person acquiring anything sold in the exercise of powers conferred by this paragraph, and any person claiming under him, may deal with it in the same manner as if the Crown was the holder of the supplementary unregistered design.

Settlement of terms for Crown use

2

• (1) Where Crown use is made of a supplementary unregistered design, the government department concerned shall—

• (a) notify the holder of the supplementary unregistered design as soon as practicable, and

• (b) give him such information as to the extent of the use as he may from time to time require,

unless it appears to the department that it would be contrary to the public interest to do so or the identity of the holder of the supplementary unregistered design cannot be ascertained on reasonable inquiry.

• (2) Crown use of a supplementary unregistered design shall be on such terms as, either before or after the use, are agreed between the government department concerned and the holder of the supplementary unregistered design with the approval of the Treasury or, in default of agreement, are determined by the design court.

• (3) In the application of sub-paragraph (2) to Northern Ireland the reference to the Treasury shall, where the government department referred to in that sub-paragraph is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel.

• (4) In the application of sub-paragraph (2) to Scotland, where the government department referred to in that sub-paragraph is any part of the Scottish Administration, the words “with the approval of the Treasury” are omitted.

• (5) Where the identity of the holder of the supplementary unregistered design cannot be ascertained on reasonable inquiry, the government department concerned may apply to the design court who may order that no royalty or other sum shall be payable in respect of Crown use of the supplementary unregistered design until the holder agrees terms with the department or refers the matter to the design court for determination.

Rights of third parties in case of Crown use

3

• (1) The provisions of any licence, assignment or agreement made between the holder of the supplementary unregistered design (or anyone deriving title from him or from whom he derives title) and any person other than a government department are of no effect in relation to Crown use of a supplementary unregistered design, or any act incidental to Crown use, so far as they—

• (a) restrict or regulate anything done in relation to the supplementary unregistered design, or the use of any model, document or other information relating to it, or

• (b) provide for the making of payments in respect of, or calculated by reference to such use;

and the copying or issuing to the public of copies of any such model or document in connection with the thing done, or any such use, shall be deemed not to be an infringement of any copyright in the model or document.

• (2) Sub-paragraph (1) shall not be construed as authorising the disclosure of any such model, document or information in contravention of the licence, assignment or agreement.

• (3) Where an exclusive licence is in force in respect of the supplementary unregistered design—

• (a) if the licence was granted for royalties—

• (i) any agreement between the holder of the supplementary unregistered design and a government department under paragraph 2 (settlement of terms for Crown use) requires the consent of the licensee, and

• (ii) the licensee is entitled to recover from the holder of the supplementary unregistered design such part of the payment for Crown use as may be agreed between them or, in default of agreement, determined by the design court;

• (b) if the licence was granted otherwise than for royalties—

• (i) paragraph 2 applies in relation to anything done which but for paragraph 1 (Crown use) and sub-paragraph (1) would be an infringement of the rights of the licensee with the substitution for references to the holder of the supplementary unregistered design of references to the licensee, and

• (ii) paragraph 2 does not apply in relation to anything done by the licensee by virtue of an authority given under paragraph 1.

• (4) Where the supplementary unregistered design has been assigned to the holder of the supplementary unregistered design in consideration of royalties—

• (a) paragraph 2 applies in relation to Crown use of the supplementary unregistered design as if the references to the holder of the supplementary unregistered design included the assignor, and any payment for Crown use shall be divided between them in such proportion as may be agreed or, in default of agreement, determined by the design court; and

• (b) paragraph 2 applies in relation to any act incidental to Crown use as it applies in relation to Crown use of the supplementary unregistered design.

• (5) Where any model, document or other information relating to a supplementary unregistered design is used in connection with Crown use of the design, or any act incidental to Crown use, paragraph 2 applies to the use of the model, document or other information with the substitution for the references to the holder of the supplementary unregistered design of references to the person entitled to the benefit of any provision of an agreement rendered inoperative by sub-paragraph (1).

• (6) In this paragraph—

• “act incidental to Crown use” means anything done for the services of the Crown to the order of a government department by the holder of the supplementary unregistered design in respect of a design;

• “payment for Crown use” means such amount as is payable by the government department concerned by virtue of paragraph 2; and

• “royalties” includes any benefit determined by reference to the use of the supplementary unregistered design.

Crown use: compensation for loss of profit

4

• (1) Where Crown use is made of a supplementary unregistered design, the government department concerned shall pay—

• (a) to the holder of the supplementary unregistered design, or

• (b) if there is an exclusive licence in force in respect of the supplementary unregistered design, to the exclusive licensee,

compensation for any loss resulting from his not being awarded a contract to supply the products to which the supplementary unregistered design is applied or in which it is incorporated.

• (2) Compensation is payable only to the extent that such a contract could have been fulfilled from his existing manufacturing capacity; but is payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract.

• (3) In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing capacity was under-used.

• (4) No compensation is payable in respect of any failure to secure contracts for the supply of products to which the supplementary unregistered design is applied or in which it is incorporated otherwise than for the services of the Crown.

• (5) The amount payable shall, if not agreed between the holder of the supplementary unregistered design or licensee and the government department concerned with the approval of the Treasury, be determined by the design court on a reference under paragraph 5; and it is in addition to any amount payable under paragraph 2 or 3.

• (6) In the application of this paragraph to Northern Ireland, the reference in sub-paragraph (5) to the Treasury shall, where the government department concerned is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel.

• (7) In the application of this paragraph to Scotland, where the government department referred to in sub-paragraph (5) is any part of the Scottish Administration, the words “with the approval of the Treasury” in that sub-paragraph are omitted.

Reference of disputes relating to Crown use

5

• (1) A dispute as to any matter which falls to be determined by the design court in default of agreement under—

• (a) paragraph 2 (settlement of terms for Crown use),

• (b) paragraph 3 (rights of third parties in case of Crown use), or

• (c) paragraph 4(Crown use: compensation for loss of profit),

may be referred to the design court by any party to the dispute.

• (2) In determining a dispute between a government department and any person as to the terms for Crown use of a supplementary unregistered design the design court shall have regard to—

• (a) any sums which that person or a person from whom he derives title has received or is entitled to receive, directly or indirectly, from any government department in respect of the supplementary unregistered design; and

• (b) whether that person or a person from whom he derives title has in the court's opinion without reasonable cause failed to comply with a request of the department for the use of the supplementary unregistered design on reasonable terms.

• (3) One of two or more joint holders of the supplementary unregistered design may, without the concurrence of the others, refer a dispute to the design court under this paragraph, but shall not do so unless the others are made parties; and none of those others is liable for any costs unless he takes part in the proceedings.

• (4) Where the consent of an exclusive licensee is required by paragraph 3(3)(a)(i) to the settlement by agreement of the terms for Crown use of a supplementary unregistered design, a determination by the design court of the amount of any payment to be made for such use is of no effect unless the licensee has been notified of the reference and given an opportunity to be heard.

• (5) On the reference of a dispute as to the amount recoverable as mentioned in paragraph 3(3)(a)(ii) (right of exclusive licensee to recover part of amount payable to holder of supplementary unregistered design) the design court shall determine what is just having regard to any expenditure incurred by the licensee—

• (a) in developing the design, or

• (b) in making payments to the holder of the supplementary unregistered design in consideration of the licence (other than royalties or other payments determined by reference to the use of the design).

• (6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Signed

Gerry Sutcliffe — Parliamentary Under Secretary of State for — Employment Relations and Consumer Affairs — Department of Trade and Industry — 2005-08-15

Explanatory note

(This note is not part of the Regulations)

Footnotes

[^f00001]: 1972 c. 68.

[^f00002]: S.I. 2000/1813.

[^f00003]: 1949 c. 88.

[^f00004]: 1988 c. 48.

Editorial notes

[^c12292731]: 1972 c. 68.

[^c12292741]: S.I. 2000/1813.

[^c12292751]: 1949 c. 88.

[^key-54ce4a54578d8cd9c1a50653fe70ef26]: Regs. 1A-1D inserted (29.4.2006) by The Intellectual Property (Enforcement, etc.) Regulations 2006 (S.I. 2006/1028), reg. 1, Sch. 3 para. 9

[^key-bd0de417a1aee51ab2aa8dd2c3caa2e4]: Reg. 5A inserted (29.4.2006) by The Intellectual Property (Enforcement, etc.) Regulations 2006 (S.I. 2006/1028), reg. 1, Sch. 3 para. 10

[^key-a3048b06a5d60224d1a2f04486a28fdf]: Words in reg. 1A(2) substituted (1.10.2014) by The Community Design (Amendment) Regulations 2014 (S.I. 2014/2400), regs. 1, 3(a)

[^key-59e67c3c597ff21046ba0908c16ad4a0]: Regs. 2-2F substituted for reg. 2 (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 6(2), 8(2); S.I. 2017/771, reg. 2(1)(b) (with reg. 3)

[^key-bda9dc09a82ed02f9eb9788998c68a0a]: Words in reg. 5A(1) inserted (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 6(3), 8(2); S.I. 2017/771, reg. 2(1)(b) (with reg. 3)

[^key-d2e88e8c8cd8a88d5fcb64cd7f969040]: Words in Sch. substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 64(2)(a) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-e374ac27494a68e85f1b977afbba9d72]: Word in Sch. inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 64(2)(b) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-025c03376483c53c98d3d6faa0f51839]: Sch. para. 5(6) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 64(2)(c) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-968c94be2b081ce0832a9776b00238a7]: Words in reg. 1C(5)(d) omitted (31.12.2020) by virtue of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269), reg. 1(1), Sch. 5 para. 4; 2020 c. 1, Sch. 5 para. 1(1)

[^key-eda0825017b2b18ef2dd8aa22417a2ec]: Word in reg. 1C(1) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 57(a)(i) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-4321b476e0f7e01b75400b72d7fc670d]: Words in reg. 1C(1)(a) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 57(a)(ii) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-576ed775669dd1be0b21948d8a64814e]: Word in reg. 1C(1)(b) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 57(a)(iii) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-b84529e092f8908035ab2e850543d9ed]: Word in reg. 1C(2) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 57(b)(i) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-6550f254d68dad05d17efa2375e4789b]: Words in reg. 1C(2) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 57(b)(ii) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-e0a9e98f6646ab7042004906c5e7b572]: Word in reg. 1C(3) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 57(c) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-c749779bef9a4284d0196eb69aa37370]: Word in reg. 1C(4) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 57(c) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-a2cde555bb65d8c1110f00a27a3b7f12]: Word in reg. 1A(2) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 55(b)(i) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-a0fc6acab571e33c1eb5e9d4057a818d]: Words in reg. 1A(2) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 55(b)(ii) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-2b94e0b7ac477bbdeac347c4cc59bb5e]: Reg. 1A(3) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 55(c) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-afd9757ca569c9b521debcd3ef66cbf3]: Words in reg. 1A(5) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 55(d)(i) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-8e4a1f60a2ad39c15bc1eeee15fee1ab]: Word in reg. 1A(5) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 55(d)(ii) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-d1f3458dc2aa34dbba228f43572fce78]: Word in reg. 1A(1) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 55(a) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-ab06d909c89e6acb3e5924030d901351]: Reg. 1A(4) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 55(c) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-72a347710478825a56c919441e1b1205]: Words in reg. 2B(2) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 60(a) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-a8cadcfd38bd90f83a6e599234f56758]: Word in reg. 2B(3) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 60(b) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-9bfea60e0b74dd3934ea430c7b637a39]: Reg. 2B(5)(a)(i) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 60(c)(i) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-833f70c56f0bb5fab8e3bf1b14fdf519]: Reg. 2B(5)(a)(ii) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 60(c)(i) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-54c28246d68b84f45c49fda0752fea63]: Words in reg. 2B(5)(a)(iii) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 60(c)(ii)(aa) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-bf1c91c5e4682187cbfeb5266d5082a5]: Word in reg. 2B(5)(a)(iii) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 60(c)(ii)(bb) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-d7754482b2948ad0ff7f40c81383333e]: Words in reg. 2B(5)(b) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 60(c)(iii) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-83fb4e2af5723ce2962b9d9cfebd3396]: Words in reg. 1B(1)(b) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 56(a)(i) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-a66b33ad68e0f6f2a0112727574980c4]: Word in reg. 1B(1)(b) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 56(a)(ii) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-b14abf24baf5f31584eccfc9bfc13d6a]: Word in reg. 1B(1)(b) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 56(a)(iii) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-c1af6f5d11129e25f8a57813535ad6c0]: Word in reg. 1B(2) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 56(b) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-de8c3f6adb2b35edc3cfddcbcc698ecc]: Words in reg. 1B(4) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 56(c) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-8cbfa53eb1c5060c975d3716f6849917]: Word in reg. 1B(8) inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 56(d) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-4d2f5619f5641900b5139c7c57681807]: Words in reg. 1(2) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 54(a) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-47c830053f830ce69bc818e7f8860d07]: Reg. 1(3) omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 54(b) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-7b04059e5f02eb012f03137e98a5e3fa]: Words in reg. 1D(2) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 58(a) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-3be8d9cca4f70baf0f2bc3ed841bdc4b]: Words in reg. 1D(3)(b) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 58(a) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-8a17904dd6ab0f2ee23c5399317be319]: Words in reg. 1D(4) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 58(a) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-3b31e3323cbd5e1b61875c187d46dfcc]: Words in reg. 5 heading substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 64(1)(a) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-2d095b5eb0d34318bcd0549287dbde7c]: Words in reg. 5 omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 64(1)(b) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-c979372666bf15e368fd43bf86dfbe3c]: Word in reg. 5 inserted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 64(1)(c) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-4e0bbf80240934f1c91bfc7c220e73e1]: Word in reg. 5 omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 64(1)(d) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-cae31d4ef6ba523634a1781980eb47d5]: Words in reg. 4(1) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 63(a) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-5ac1528724f7740c0a42082860bf3c5a]: Reg. 4(3) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 63(b) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 18, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-7b512e5fea58747832f8568f9ee32110]: Reg. 3 omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 62 (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-1dbbf4901fd8c6e59df4c765a1442f6c]: Words in reg. 2(1) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 59 (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-fc955e35bf3d7246fcc96c7b3b321d2c]: Words in reg. 2C(2) substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 61(1) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-24400932098f8e50d5180cce5a4e11c3]: Reg. 2E omitted (31.12.2020) by virtue of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 61(2) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^key-29fa9924e51a605c9d57edbbb2068db0]: Words in reg. 2F substituted (31.12.2020) by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638), reg. 1, Sch. 1 para. 61(3) (with reg. 4, Sch. 2 Pt. 2) (as amended by S.I. 2020/1050, regs. 1(2), 14, 20); 2020 c. 1, Sch. 5 para. 1(1)

[^M_F_3b4ba446-df21-482f-af98-03a31a4cb758]: Reg. 1A(3)-(5) inserted (1.10.2014) by The Community Design (Amendment) Regulations 2014 (S.I. 2014/2400), regs. 1, 3(b)

[^key-d63a77da7bb16ecbf841f2dacea3af19]: reg. 1D(5)(a)(b) substituted for words (31.12.2023 immediately before the end of 2023) by The Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023 (S.I. 2023/1287), regs. 1(b), 6(a)

[^key-9e45d2ab778104880dda47ba04abd187]: Reg. 1D(5A) inserted (31.12.2023 immediately before the end of 2023) by The Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023 (S.I. 2023/1287), regs. 1(b), 6(b)

Infringement proceedings

1A

• (1) This regulation and regulations 1B to 1D are without prejudice to the duties of the ... design court under the provisions of Article 89(1)(a) to (c) of the ... Design Regulation.

• (2) Subject to paragraph (5), in an action for infringement of a supplementary unregistered design all such relief by way of damages, injunctions, accounts or otherwise is available to the holder of the supplementary unregistered design as is available in respect of the infringement of any other property right.

• (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (5) In an action for the infringement of a supplementary unregistered ... design, damages shall not be awarded against a person who proves that at the date of the infringement that they were not aware, and had no reason to believe, that the design to which the action relates was protected as a supplementary unregistered ... design.

Order for delivery up

1B

• (1) Where a person—

• (a) has in his possession, custody or control for commercial purposes an infringing article, or

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

the holder of the supplementary unregistered design in question may apply to the ... design court for an order that the infringing article or other thing be delivered up to him or to such other person as the design court may direct.

• (2) An application shall not be made after the end of the period specified in the following provisions of this regulation; and no order shall be made unless the design court also makes, or it appears to the design court that there are grounds for making, an order under regulation 1C (order as to disposal of infringing articles, &c.).

• (3) An application for an order under this regulation may not be made after the end of the period of six years from the date on which the article or thing in question was made, subject to paragraph (4).

• (4) If during the whole or any part of that period the holder of the supplementary unregistered design—

• (a) is under a disability, or

• (b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an order,

an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

• (5) In paragraph (4) “disability”—

• (a) in England and Wales, has the same meaning as in the Limitation Act 1980;

• (b) in Scotland, means legal disability within the meaning of the Prescription and Limitation (Scotland) Act 1973;

• (c) in Northern Ireland, has the same meaning as in the Statute of Limitations (Northern Ireland) 1958.

• (6) A person to whom an infringing article or other thing is delivered up in pursuance of an order under this regulation shall, if an order under regulation 1C is not made, retain it pending the making of an order, or the decision not to make an order, under that regulation.

• (7) The reference in paragraph (1) to an act being done in relation to an article for “commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business.

• (8) Nothing in this regulation affects any other power of the design court.

Order as to disposal of infringing articles, &c

1C

• (1) An application may be made to the ... design court for an order that an infringing article or other thing delivered up in pursuance of an order under regulation 1B shall be—

• (a) forfeited to the holder of the supplementary unregistered design, or

• (b) destroyed or otherwise dealt with as the design court may think fit,

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