SCHEDULE 1
Article 2(1)
MODIFICATIONS OF THE REGISTERED DESIGNS ACT 1949 AS IT HAS EFFECT IN THE ISLE OF MAN
1. Any reference to an Act of Parliament (including the 1949 Act) or to a provision of such an Act shall be construed, unless the contrary intention appears, as a reference to that Act or provision as it has effect in the Isle of Man.
2. Notwithstanding section 47, any reference to the United Kingdom which occurs in the expression “His Majesty’s Government in the United Kingdom” does not include the Isle of Man.
3. References to the Crown (but not “crown”) include the Crown in right of the Government of the Isle of Man.
4. References to a Government department shall be construed as including references to a Department of the Government of the Isle of Man, and in relation to such a Department references to the Treasury shall be construed as references to the Treasury of the Isle of Man.
5. For section 14(designs registrable under Act) substitute—
“Registration of designs
1.—(1) A design may, subject to the following provisions of this Act, be registered under this Act on the making of an application for registration.
(2) In this Act “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.
(3) In this Act—
“complex product” means a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product; and
“product” means any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product.
Substantive grounds for refusal of registration
1A.—(1) The following shall be refused registration under this Act—
(a)
(a) anything which does not fulfil the requirements of section 1(2) of this Act;
(b)
(b) designs which do not fulfil the requirements of sections 1B to 1D of this Act;
(c)
(c) designs to which a ground of refusal mentioned in Schedule A1 to this Act applies.
(2) A design (“the later design”) shall be refused registration under this Act if it is not new or does not have individual character when compared with a design which—
(a)
(a) has been made available to the public on or after the relevant date; but
(b)
(b) is protected as from a date prior to the relevant date by virtue of registration under this Act or an application for such registration.
(3) In subsection (2) above “the relevant date” means the date on which the application for the registration of the later design was made or is treated by virtue of section 3B(2), (3) or (5) or 14(2) of this Act as having been made.
Requirement of novelty and individual character
1B.—(1) A design shall be protected by a right in a registered design to the extent that the design is new and has individual character.
(2) For the purposes of subsection (1) above, a design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.
(3) For the purposes of subsection (1) above, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.
(4) In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.
(5) For the purposes of this section, a design has been made available to the public before the relevant date if—
(a)
(a) it has been published (whether following registration or otherwise), exhibited, used in trade or otherwise disclosed before that date; and
(b)
(b) the disclosure does not fall within subsection (6) below.
(6) A disclosure falls within this subsection if—
(a)
(a) it could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the European Economic Area and specialising in the sector concerned;
(b)
(b) it was made to a person other than the designer, or any successor in title of his, under conditions of confidentiality (whether express or implied);
(c)
(c) it was made by the designer, or any successor in title of his, during the period of 12 months immediately preceding the relevant date;
(d)
(d) it was made by a person other than the designer, or any successor in title of his, during the period of 12 months immediately preceding the relevant date in consequence of information provided or other action taken by the designer or any successor in title of his; or
(e)
(e) it was made during the period of 12 months immediately preceding the relevant date as a consequence of an abuse in relation to the designer or any successor in title of his.
(7) In subsections (2), (3), (5) and (6) above “the relevant date” means the date on which the application for the registration of the design was made or is treated by virtue of section 3B(2), (3) or (5) or 14(2) of this Act as having been made.
(8) For the purposes of this section, a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character—
(a)
(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the complex product; and
(b)
(b) to the extent that those visible features of the component part are in themselves new and have individual character.
(9) In subsection (8) above “normal use” means use by the end user; but does not include any maintenance, servicing or repair work in relation to the product.
Designs dictated by their technical function
1C.—(1) A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product’s technical function.
(2) A right in a registered design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function.
(3) Subsection (2) above does not prevent a right in a registered design subsisting in a design serving the purposes of allowing multiple assembly or connection of mutually interchangeable products within a modular system.
Designs contrary to public policy or morality
1D A right in a registered design shall not subsist in a design which is contrary to public policy or to accepted principles of morality.”
6. In section 2(2)5(proprietorship of designs), omit—
(a) the words from “, or the” to “any article,” and
(b) the words from “or as”, in the second place, onwards.
7. For section 36(proceedings for registration) substitute—
“Applications for registration
3.—(1) An application for the registration of a design shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner.
(2) An application for the registration of a design shall be made by the person claiming to be the proprietor of the design.
(3) An application for the registration of a design in which national unregistered design right subsists shall be made by the person claiming to be the design right owner.
(4) For the purpose of deciding whether, and to what extent, a design is new or has individual character, the registrar may make such searches (if any) as he thinks fit.
(5) An application for the registration of a design which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within such time as may be prescribed...
