The Community Design Regulations 2005

• (2) In considering what order (if any) should be made, the design court shall consider whether other remedies available in an action for infringement of the right in a supplementary unregistered design would be adequate to compensate the holder and to protect his interests.

• (3) Where there is more than one person interested in an article or other thing, the design court shall make such order as it thinks just and may (in particular) direct that the thing be sold, or otherwise dealt with, and the proceeds divided.

• (4) If the design court decides that no order should be made under this regulation, the person in whose possession, custody or control the article or other thing was before being delivered up is entitled to its return.

• (5) References in this regulation to a person having an interest in an article or other thing include any person in whose favour an order could be made in respect of it—

• (a) under this regulation;

• (b) under section 24D of the Registered Designs Act 1949;

• (c) under section 114, 204 or 231 of the Copyright, Designs and Patents Act 1988; or

• (d) under section 19 of the Trade Marks Act 1994 ...

Meaning of “infringing article”

1D

• (1) In these Regulations “infringing article”, in relation to a design, shall be construed in accordance with this regulation.

• (2) An article is an infringing article if its making to that design was an infringement of a supplementary unregistered design.

• (3) An article is also an infringing article if—

• (a) it has been or is proposed to be imported into the United Kingdom, and

• (b) its making to that design in the United Kingdom would have been an infringement of a supplementary unregistered design or a breach of an exclusive licensing agreement relating to that supplementary unregistered design.

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

• (5) Nothing in paragraph (3) shall be construed as applying to an article which—

• (a) may be lawfully imported into the United Kingdom by virtue of anything which forms part of assimilated law as a result of section 3 of the European Union (Withdrawal) Act 2018, or

• (b) has been or is proposed to be imported into the United Kingdom after being put on the market in the European Economic Area by or with the consent of the holder of the supplementary unregistered design.

• (5A) In subsection (5)(a), the reference to assimilated law is to be read, until the coming into force of paragraph 2(6) of Schedule 2 to the Retained EU Law (Revocation and Reform) Act 2023, as a reference to retained EU law.

Remedy for groundless threats of infringement proceedings

Falsely representing a design as a registered Community design

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

Use of Community design for services of the Crown

Application to Scotland and Northern Ireland

5A

• (1) In the application of these Regulations to Scotland—

• “accounts” means count, reckoning and payment;

• “claimant” means pursuer;

• “declaration” means “declarator”;

• “defendant” means defender;

• “delivery up” means delivery;

• “injunction” means interdict.

• (2) In the application of these Regulations to Northern Ireland, “claimant” includes plaintiff.

Amendment of section 35 of the Registered Designs Act 1949

Unjustified threats: threats of infringement proceedings

Unjustified threats: actionable threats

2A

• (1) Subject to paragraphs (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat.

• (2) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of—

• (a) making an article for disposal, or

• (b) importing an article for disposal.

• (3) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of an act which, if done, would constitute an infringement of a kind mentioned in paragraph (2)(a) or (b).

• (4) A threat of infringement proceedings is not actionable if the threat—

• (a) is made to a person who has done, or intends to do, an act mentioned in paragraph (2)(a) or (b) in relation to an article, and

• (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that article.

• (5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.

• (6) In regulations 2C and 2D an “actionable threat” means a threat of infringement proceedings that is actionable in accordance with this regulation.

Unjustified threats: permitted communications

2B

• (1) For the purposes of regulation 2A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—

• (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

• (b) all of the information that relates to the threat is information that—

• (i) is necessary for that purpose (see paragraph (5)(a) to (c) for some examples of necessary information), and

• (ii) the person making the communication reasonably believes is true.

• (2) Each of the following is a “permitted purpose”—

• (a) giving notice that a supplementary unregistered design exists;

• (b) discovering whether, or by whom, a supplementary unregistered design has been infringed by an act mentioned in regulation 2A(2)(a) or (b);

• (c) giving notice that a person has a right in or under a supplementary unregistered design, where another person's awareness of the right is relevant to any proceedings that may be brought in respect of the supplementary unregistered design.

• (3) The design court may, having regard to the nature of the purposes listed in paragraph (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

• (4) But the following may not be treated as a “permitted purpose”—

• (a) requesting a person to cease doing, for commercial purposes, anything in relation to an article made to a design, in which a design is incorporated or to which it is applied,

• (b) requesting a person to deliver up or destroy an article made to a design, in which a design is incorporated or to which it is applied, or

• (c) requesting a person to give an undertaking relating to an article made to a design, in which a design is incorporated or to which it is applied.

• (5) If any of the following information is included in a communication made for a permitted purpose, it is information that is “necessary for that purpose” (see paragraph (1)(b)(i))—

• (a) a statement—

• (i) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (ii) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (iii) that a design is protected as a supplementary unregistered ... design;

• (b) details of the supplementary unregistered design, or of a right in or under the supplementary unregistered design, which—

• (i) are accurate in all material respects, and

• (ii) are not misleading in any material respect; and

• (c) information enabling the identification of the article that is alleged to be infringing an article in relation to the design.

Unjustified threats: remedies and defences

2C

• (1) Proceedings in respect of an actionable threat may be brought against the person who made the threat for—

• (a) a declaration that the threat is unjustified;

• (b) an injunction against the continuance of the threat;

• (c) damages in respect of any loss sustained by the aggrieved person by reason of the threat.

• (2) It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of the supplementary unregistered design.

• (3) It is a defence for the person who made the threat to show—

• (a) that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in regulation 2A(2)(a) or (b) in relation to the article which is the subject of the threat, and

• (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.

Unjustified threats: professional advisers

2D

• (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in paragraph (3) are met.

• (2) In this section “professional adviser” means a person who, in relation to the making of the communication containing the threat—

• (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and

• (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).

• (3) The conditions are that—

• (a) in making the communication the professional adviser is acting on the instructions of another person, and

• (b) when the communication is made the professional adviser identifies the person on whose instructions the adviser is acting.

• (4) This section does not affect any liability of the person on whose instructions the professional adviser is acting.

• (5) It is for a person asserting that paragraph (1) applies to prove (if required) that at the material time—

• (a) the person concerned was acting as a professional adviser, and

• (b) the conditions in paragraph (3) were met.

Unjustified threats: supplementary: pending registration

2E

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

Unjustified threats: supplementary: proceedings for delivery up etc.

2F

In regulation 2(1)(b) the reference to proceedings for infringement of the supplementary unregistered design includes a reference to—

• (a) proceedings for an order under regulation 1B (order for delivery up), and

• (b) proceedings for an order under regulation 1C (order as to disposal of infringing articles).

Falsely representing a design as a registered Community design

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

Use of Community design for services of the Crown

Application to Scotland and Northern Ireland

Amendment of section 35 of the Registered Designs Act 1949

Use of supplementary unregistered design for services of the Crown

Use of supplementary unregistered design for services of the Crown