The Appointed Person (Designs) Rules 2015

Made: 5th February 2015

Laid before Parliament: 11th February 2015

Coming into force: 6th April 2015

The Secretary of State in exercise of the powers conferred by section 36 of the Registered Designs Act 1949[^f00001] and section 250 of the Copyright, Designs and Patents Act 1988[^f00002] makes the following Rules.

Citation and commencement

1

These Rules may be cited as the Appointed Person (Designs) Rules 2015 and come into force on 6th April 2015.

Interpretation

2

• (1) In these Rules—

• “the appointed person” means a person appointed by the Lord Chancellor under section 27B of the Registered Designs Act;

• “the Copyright, Designs and Patents Act” means the Copyright, Designs and Patents Act 1988;

• “design right” means design right within the meaning of Part III of the Copyright, Designs and Patents Act;

• “published” means published on the Intellectual Property Office official webpages and any amendment or modification of a form shall also be published on the Intellectual Property Office official webpages;

• “registered design” means a design registered under the Registered Designs Act;

• “the Registered Designs Act” means the Registered Designs Act 1949;

• “the registrar” means the Comptroller-General of Patents, Designs and Trade Marks and includes references to the comptroller under Part III of the Copyright, Designs and Patents Act;

• “the 2006 Rules” means the Registered Design Rules 2006[^f00003].

• (2) In these Rules a reference to a form is a reference to that form as issued under directions under section 31A of the Registered Designs Act or rules under section 250 of the Copyright, Designs and Patents Act.

Decision of the registrar

3

In relation to a registered design, where a party has not been given a statement of the grounds of a decision in relation to any proceedings before the registrar, any party may, within one month beginning immediately after the date of the decision, make a request on a published form for the registrar to send a statement of the reasons for a decision and upon such request the registrar shall send such a statement, and the date of that statement shall be deemed to be the date of the registrar’s decision for the purpose of any appeal against it.

Decisions subject to appeal

4

• (1) Under these Rules an appeal lies from any decision of the registrar made under: sections 3A, 3B, 11, 11ZA to 11ZE, 11A and 11AB of the Registered Designs Act and sections 246, 247 and 248 of the Copyright, Designs and Patents Act, including a decision which terminates the proceedings as regards one of the parties or a decision awarding costs to any party (“a final decision”) or a decision which is made at any point in the proceedings prior to a final decision (“an interim decision”).

• (2) An interim decision (including a decision refusing leave to appeal under this paragraph) may only be appealed against independently of any appeal against a final decision with the leave of the registrar.

Appeal to appointed person

5

• (1) In respect of a registered design, notice of appeal to the appointed person must be filed on the published form, which must include the appellant’s grounds of appeal and his case in support of the appeal, together with any supporting documentation.

• (2) In respect of design right, notice of appeal to the appointed person must be filed on Form DRF 55 in the Schedule, which must include the appellant’s grounds of appeal and his case in support of the appeal, together with any supporting documentation.

• (3) The forms referred to in paragraphs (1) and (2) must be filed within the period of 28 days beginning immediately after the date of the registrar’s decision which is the subject of the appeal (“the original decision”).

• (4) The registrar must send the notice of appeal and the statement to the appointed person.

• (5) Where any person other than the appellant was a party to the proceedings before the registrar in which the original decision was made (“the respondent”), the registrar must send to the respondent a copy of the notice and the statement and the respondent may, within the period of 21 days beginning immediately after the date of the notice and statement, file a notice responding to the notice of appeal.

• (6) The respondent’s notice must specify any grounds on which the respondent considers the original decision should be maintained where these differ from or are additional to the grounds given by the registrar or comptroller in the original decision.

• (7) The registrar must send a copy of the respondent’s notice to the appointed person and a copy to the appellant.

Determination whether appeal should be referred to court

6

• (1) Within 28 days of the date on which the notice of appeal is sent to the respondent by the registrar under rule 5(5)—

• (a) the registrar; or

• (b) any person who was a party to the proceedings in which the decision appealed against was made,

may request that the appointed person refer the appeal to the court.

• (2) Where the registrar requests that the appeal be referred to the court, the registrar must send a copy of the request to each party to the proceedings.

• (3) A request under paragraph (1)(b) must be sent to the registrar following which the registrar must send it to the appointed person and must send a copy of the request to any other party to the proceedings.

• (4) Within 28 days of the date on which a copy of a request is sent by the registrar under paragraph (2) or (3), the person to whom it is sent may make representations as to whether the appeal should be referred to the court.

• (5) In any case where it appears to the appointed person that a point of general legal importance is involved in the appeal, the appointed person must send to the registrar and to every party to the proceedings in which the decision appealed against was made, notice to that effect.

• (6) Within 28 days of the date on which a notice is sent under paragraph (5), the person to whom it was sent may make representations as to whether the appeal should be referred to the court.

Hearing and determination of appeal

7

• (1) Where the appointed person does not refer the appeal to the court, the appointed person must send written notice of the time and place appointed for the oral hearing of the appeal—

• (a) where no person other than the appellant was a party to the proceedings in which the decision appealed against was made, to the registrar and to the appellant; and

• (b) in any other case, to the registrar and to each person who was a party to those proceedings.

• (2) The appointed person must send the notice at least fourteen days before the time appointed for the oral hearing.

• (3) If all the persons notified under paragraph (1) inform the appointed person that they do not wish to make oral representations then—

• (a) the appointed person may hear and determine the case on the basis of any written representations; and

• (b) the time and place appointed for the oral hearing may be vacated.

• (4) Rules 19, 22, 23, and 24 of the 2006 Rules apply to the appointed person and to proceedings before the appointed person as they apply to the registrar and to proceedings before the registrar.

• (5) If there is an oral hearing of the appeal then rule 20 of the 2006 Rules applies to the appointed person and to proceedings before the appointed person as it applies to the registrar and to proceedings before the registrar.

• (6) A copy of the decision of the appointed person must be sent, with a statement of the reasons for the decision, to the registrar and to each person who was a party to the appeal.

SCHEDULE

Signed

Neville-Rolfe — Parliamentary Under Secretary of State for Business, Innovation and Skills — Department for Business, Innovation and Skills — 5th February 2015

Explanatory note

(This note is not part of the Rules)

EXPLANATORY NOTE

These Rules set out the process and time period for appealing against decisions of the registrar (or comptroller in the case of the UK unregistered design right) to the appointed person. The appointed person is able to hear and determine appeals against decisions of the registrar under the Registered Designs Act 1949 (in respect of UK registered designs) and the Copyright, Designs and Patents Act 1988 (in respect of the UK unregistered design right).

These Rules do not cover appeals against decisions of the registrar under the opinions service for designs (section 28A of the Registered Designs Act 1949 and section 249A of the Copyright, Designs and Patents Act 1988).

A full impact assessment in respect of the effect that the introduction of appeals to the appointed person will have on the costs of business and the public sector was completed in preparation for the Intellectual Property Bill (now the Intellectual Property Act 2014) and is available from the Intellectual Property Office, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ and is published with the Explanatory Memorandum alongside this instrument on www.legislation.gov.uk.

Footnotes

[^f00001]: 1949 c.88; section 36 was amended by the Copyright, Designs and Patents Act 1988 (c.48), Schedule 3, paragraph 26, S.I. 2001/3949, Schedule 1, paragraph 11 and the Intellectual Property Ac 2014 (c.18), section 12(3).

[^f00002]: 1988 c.48.

[^f00003]: S.I. 2006/1975.