2006 No. 1028
S-1
Citation and commencementCitation and commencement
1. These Regulations may be cited as the Intellectual Property (Enforcement, etc.) Regulations 2006 and shall come into force on 29th April 2006.
S-2
Amendments of legislationAmendments of legislation
2.—(1) Schedule 1 (amendments to the Registered Designs Act 1949) shall have effect.
(2) Schedule 2 (amendments to other primary legislation) shall have effect.
(3) Schedule 3 (amendments to secondary legislation) shall have effect.
(4) The enactments set out in Schedule 4 (repeals) shall be repealed or revoked to the extent specified.
S-3
Assessment of damagesAssessment of damages
3.—(1) Where in an action for infringement of an intellectual property right the defendant knew, or had reasonable grounds to know, that he engaged in infringing activity, the damages awarded to the claimant shall be appropriate to the actual prejudice he suffered as a result of the infringement.
(2) When awarding such damages—
(a)
(a) all appropriate aspects shall be taken into account, including in particular—
(i) the negative economic consequences, including any lost profits, which the claimant has suffered, and any unfair profits made by the defendant; and
(ii) elements other than economic factors, including the moral prejudice caused to the claimant by the infringement; or
(b)
(b) where appropriate, they may be awarded on the basis of the royalties or fees which would have been due had the defendant obtained a licence.
(3) This regulation does not affect the operation of any enactment or rule of law relating to remedies for the infringement of intellectual property rights except to the extent that it is inconsistent with the provisions of this regulation.
(4) In the application of this regulation to—
(a)
(a) Scotland, “claimant” includes pursuer; “defendant” includes defender; and “enactment” includes an enactment comprised in, or an instrument made under, an Act of the Scottish Parliament; and
(b)
(b) Northern Ireland, “claimant” includes plaintiff.
S-4
Order in Scotland for disclosure of informationOrder in Scotland for disclosure of information
4.—(1) This regulation applies to proceedings in Scotland concerning an infringement of an intellectual property right.
(2) The pursuer may apply to the court for an order that information regarding the origin and distribution networks of goods or services which infringe an intellectual property right shall be disclosed to him by the relevant person.
(3) The court may only order the information to be disclosed where it considers it just and proportionate having regard to the rights and privileges of the relevant person and others; such an order may be subject to such conditions as the court thinks fit.
(4) The relevant person is—
(a)
(a) the alleged infringer,
(b)
(b) any person who—
(i) was found in possession of the infringing goods on a commercial scale,
(ii) was found to be using the infringing services on a commercial scale, or
(iii) was found to be providing services on a commercial scale, which are used in activities which infringe an intellectual property right, or
(c)
(c) any person who has been identified by a person specified in sub-paragraph (b) as being involved in—
(i) the production, manufacture or distribution of the infringing goods, or
(ii) the provision of the infringing services.
(5) For the purposes of paragraph (3), the court may order the disclosure of any of the following types of information—
(a)
(a) the names and addresses of—
(i) each producer, manufacturer, distributor or supplier of the infringing goods or services;
(ii) any person who previously possessed the infringing goods; and
(iii) the intended wholesaler and retailer of the infringing goods or services; and
(b)
(b) information relating to—
(i) the quantities of infringing goods or the amount of infringing services provided, produced, manufactured, delivered, received or ordered; and
(ii) the price paid for the infringing goods or infringing services in question.
(6) Nothing in this regulation affects—
(a)
(a) any right of the pursuer to receive information under any other enactment (including an enactment comprised in, or an instrument made under, an Act of the Scottish Parliament) or rule of law; and
(b)
(b) any other power of the court.
(7) For the purposes of this regulation and regulation 5, “court” means the Court of Session or the sheriff.
S-5
Order in Scotland for publication of judgmentsOrder in Scotland for publication of judgments
5. In Scotland, where the court finds that an intellectual property right has been infringed, the court may, at the request of the pursuer, order appropriate measures for the dissemination and publication of the judgment to be taken at the defender’s expense.
SCHEDULE 1
Regulation 2(1)
Amendments to the Registered Designs Act 1949
1. The Registered Designs Act 1949shall be amended as follows.
2. After section 15 there shall be inserted—
“Property in and dealing with registered designs and applications(15A) The nature of registered designsA registered design or an application for a registered design is personal property (in Scotland, incorporeal moveable property).(15B) Assignment, &c of registered designs and applications for registered designs(1) A registered design or an application for a registered design is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property, subject to the following provisions of this section.(2) Any transmission of a registered design or an application for a registered design is subject to any rights vested in any other person of which notice is entered in the register of designs, or in the case of applications, notice is given to the registrar.(3) An assignment of, or an assent relating to, a registered design or application for a registered design is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative.(4) Except in Scotland, the requirement in subsection (3) may be satisfied in a case where the assignor or personal representative is a body corporate by the affixing of its seal.(5) Subsections (3) and (4) apply to assignment by way of security as in relation to any other assignment.(6) A registered design or application for a registered design may be the subject of a charge (in Scotland, security) in the same way as other personal or moveable property.(7) The proprietor of a registered design may grant a licence to use that registered design.(8) Any equities (in Scotland, rights) in respect of a registered design or an application for a registered design may be enforced in like manner as in respect of any other personal or moveable property.(15C) Exclusive licences(1) In this Act an “exclusive licence” means a licence in writing signed by or on behalf of the proprietor of the registered design authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the proprietor of the registered design.(2) The licensee under an exclusive licence has the same rights against any successor in title who is bound by the licence as he has against the person granting the licence.”.
3. Before section 25 there shall be inserted—
“Action for infringement
24A.—(1) An infringement of the right in a registered design is actionable by the registered proprietor.
(2) In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to him as is available in respect of the infringement of any other property right.
(3) This section has effect subject to section 24B of this Act (exemption of innocent infringer from liability).
Exemption of innocent infringer from liability
24B.—(1) In proceedings for the infringement of the right in a registered design damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered.
(2) For the purposes of subsection (1), a person shall not be deemed to have been aware or to have had reasonable grounds for supposing that the design was registered by reason only of the marking of a product with—
(a)
(a) the word “registered” or any abbreviation thereof, or
(b)
(b) any word or words expressing or implying that the design applied to, or incorporated in, the product has been registered,
unless the number of the design accompanied the word or words or the abbreviation in question.
(3) Nothing in this section shall affect the power of the court to grant an injunction in any proceedings for infringement of the right in a registered design.
Order for delivery up
24C.—(1) Where a person—
(a)
(a) has in his possession, custody or control for commercial purposes an infringing article, or
(b)
(b) has in his possession, custody or control anything specifically designed or adapted for making articles to a particular design which is a registered design, knowing or having reason to believe that it has been or is to be used to make an infringing article,
the registered proprietor in question may apply to the court for an order that the infringing article or other thing be...
