The Designs (International Registration of Industrial Designs) Order 2018

JurisdictionUK Non-devolved
CitationSI 2018/23

2018 No. 23

Designs

The Designs (International Registration of Industrial Designs) Order 2018

Made 11th January 2018

Coming into force in accordance with article 1(2)

The Secretary of State makes this Order in exercise of the power conferred by section 15ZA of the Registered Designs Act 19491.

In accordance with section 37(4B) of the Registered Designs Act 1949, a draft of the Order has been laid before and approved by resolution of, each House of Parliament.

S-1 Citation, commencement and extent

Citation, commencement and extent

1.—(1) This Order may be cited as the Designs (International Registration of Industrial Designs) Order 2018.

(2) This Order comes into force on the date on which the United Kingdom becomes bound by the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs2pursuant to article 28(3)(b) of that Act.

(3) This Order extends to England and Wales, Scotland, Northern Ireland and the Isle of Man.

S-2 Interpretation

Interpretation

2. In this Order—

“the 2006 Rules” means the Registered Design Rules 20063;

“the Act” means the Registered Designs Act 1949 and “section” means a section of that Act;

“Common Regulations” means the regulations adopted under Article 24 of the Geneva Act with effect from 1st January 2017;

“Geneva Act” means the Geneva Act of the Hague Agreement concerning the international registration of industrial designs adopted by the diplomatic conference on 2nd July 19994;

“holder”, in relation to an international registration, means the person in whose name an international registration is recorded in the International Register;

“International Bureau” means the International Bureau of the World Intellectual Property Organisation;

“International Register” means the register of industrial designs maintained by the International Bureau for the purposes of the Geneva Act;

“international registration” means a registration of a design in the International Register for the purpose of the Geneva Act and the Common Regulations;

“protected international registration (UK)” means a grant of protection under Rule 18bis of the Common Regulations for a design which is the subject of a request for international registration (UK), and references to “protection” and “protected” are construed accordingly;

“request for international registration (UK)”means a request for international registration made in pursuance of Article 5(1) of the Geneva Act in respect of which the United Kingdom is a designated Contracting Party.

S-3 International registration

International registration

3. The provisions of the Act (except those listed in Part 1 of Schedule 1) and the 2006 Rules (except those listed in Part 2 of Schedule 1) apply to a design which is the subject of a protected international registration (UK) and a request for international registration (UK) with the following modifications—

(a) references to a registered design are to include references to a design which is the subject of a protected international registration (UK);

(b) references to a registered proprietor are to include references to a holder of an international registration in respect of which a protected international registration (UK) applies;

(c) references to an application for registration of a design are to include references to a request for international registration (UK);

(d) references to an applicant for registration are to include references to the holder of an international registration making a request for an international registration (UK);

(e) references to registration of a design are to include the conferring of protection for a design so that it becomes a protected international registration (UK) and include any changes to the registration;

(f) references to the register are to the International Register;

(g) the modifications to the Act and the 2006 Rules set out in Schedule 2; and

(h) such further modifications as the context requires for the purpose of giving effect to those provisions as applied by this Order.

S-4 Communication of information to the International Bureau

Communication of information to the International Bureau

4. Notwithstanding any other enactment or rule of law, the registrar may communicate to the International Bureau any information which the registrar is required to communicate under the Act (as it has effect by virtue of this Order) or pursuant to the Geneva Act or Common Regulations.

Sam Gyimah

Minister of State for Universities, Science and Innovation

Department for Business, Energy & Industrial Strategy

11th January 2018

SCHEDULE 1

Article 3

LEGISLATIVE DISAPPLICATIONS

1 PROVISIONS OF THE ACT WHICH DO NOT APPLY TO PROTECTED INTERNATIONAL REGISTRATIONS (UK) OR REQUESTS FOR INTERNATIONAL REGISTRATION (UK)

PART 1

PROVISIONS OF THE ACT WHICH DO NOT APPLY TO PROTECTED INTERNATIONAL REGISTRATIONS (UK) OR REQUESTS FOR INTERNATIONAL REGISTRATION (UK)

section 3 (application for registration)

section 3A(2) (determination of applications for registration)

section 3B (modification of applications for registration)

section 3C(2) and (3) (date of registrations of designs)

section 5 (provisions for secrecy of certain designs)

section 8A (restoration of lapsed right in design)

section 8B (effect of order for restoration of right)

section 11 (cancellation of registration)

section 11ZD (modification of registration)

section 14(1) and (3) (registration of design where application for protection in a convention country has been made)

section 15 (extension of time for application under s. 14 in certain cases)

section 15B(2) (assignment, &c. of registered designs and applications for registered designs)

section 17 (register of designs etc.) except section 17(8)

section 18 (certificate of registration)

section 19 (registration of assignments, etc.)

section 20 (rectification of register)

section 21 (power to correct clerical errors)

section 22 (inspection of registered designs)

section 31A(1)(a) (power to require to use forms)

section 33 (offences under s. 5)

section 36(1A)(ab) and (d) (general power of Secretary of State to make rules, etc.)

2 PROVISIONS OF THE 2006 RULES WHICH DO NOT APPLY TO PROTECTED INTERNATIONAL REGISTRATIONS (UK) OR REQUESTS FOR INTERNATIONAL REGISTRATION (UK)

PART 2

PROVISIONS OF THE 2006 RULES WHICH DO NOT APPLY TO PROTECTED INTERNATIONAL REGISTRATIONS (UK) OR REQUESTS FOR INTERNATIONAL REGISTRATION (UK)

rule 4 (applications)

rule 5 (formal requirements)

rule 6 (partial disclaimers)

rule 7(2) and (5) (convention applications)

rule 9 (representation of design for publication)

rule 10 (time limits under section 3(5) and section 3B)

rule 11 (publication)

rule 12 (extension of duration of right in registered design)

rule 13 (restoration of a lapsed right in a design under section 8A)

rule 14 (cancellation of registration)

rule 26 (certificate of registration)

rule 27 (registration of interests) (except paragraph (4) of rule 27)

rule 28 (inspection of register, representations and specimens)

rule 31 (information about rights in registered designs)

rule 32 (copies of entries in, or extracts from, the register)

rule 33 (copies of representations and specimens)

rule 34 (alteration of name or address)

rule 35 (notice of rectification of the register)

SCHEDULE 2

Article 3(g)

SCHEDULE 2

1 MODIFICATIONS TO PROVISIONS OF THE ACT APPLIED TO PROTECTED INTERNATIONAL REGISTRATIONS (UK) AND REQUESTS FOR INTERNATIONAL REGISTRATION (UK)

PART 1

MODIFICATIONS TO PROVISIONS OF THE ACT APPLIED TO PROTECTED INTERNATIONAL REGISTRATIONS (UK) AND REQUESTS FOR INTERNATIONAL REGISTRATION (UK)

SCH-2.1

1. The Act is modified as follows.

SCH-2.2

2. Section 1B (requirement of novelty and individual character) applies with the omission in subsection (7) of “3B(2), (3) or (5) or”.

SCH-2.3

3. Section 3A (determination of applications for registration) applies—

(a) with the...

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