The Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019

JurisdictionUK Non-devolved
CitationSI 2019/1335

2019No. 1335

EXITING THE EUROPEAN UNION

DESIGNS

TRADE MARKS

The Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019

Made8thOctober2019

Coming into force in accordance with article 1

At the Court at Buckingham Palace, the 8th day of October 2019

Present,

The Queen's Most Excellent Majesty in Council

Her Majesty, in exercise of the powers conferred on Her by sections 37(5) and 47 of the Registered Designs Act 1949( 1) and section 108(2) of the Trade Marks Act 1994( 2), is pleased, by and with the advice of Her Privy Council, to make the following Order:

Citation and commencement

1. This Order may be cited as the Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019 and comes into force on exit day.

Amendments to Schedule 1 to the Registered Designs (Isle of Man) Order 2013

2. Schedule 1 to the Registered Designs (Isle of Man) Order 2013( 3) is amended in accordance with Schedule 1 to this Order.

Amendments to the Schedule to the Trade Marks (Isle of Man) Order 2013

3. The Schedule to the Trade Marks (Isle of Man) Order 2013( 4) is amended in accordance with Schedule 2 to this Order.

Ceri King

Deputy Clerk of the Privy Council

SCHEDULE 1

Article 2

Amendments to the Registered Designs (Isle of Man) Order 2013

1. Schedule 1 to the Registered Designs (Isle of Man) Order 2013 is amended as follows.

2. In paragraph 5, in the inserted section 1B (requirement of novelty and individual character), in subsection (6)(a), for “the European Economic Area”, substitute “the geographical area comprising the United Kingdom and the European Economic Area”.

3. In paragraph 11, in the inserted section 7A (infringements of rights in registered designs), in subsection (4), after “market in” insert “the United Kingdom or”.

4. In paragraph 16—

(a) in the inserted section 11ZA (grounds for invalidity of registration), in subsection (1A)(b) omit subparagraphs (i) and (ii) and insert “by virtue of registration under this Act or an application for such registration.”;

(b) in the inserted section 11ZB (applications for declaration of invalidity), in subsection (4)—

(i) omit “or the Community Design Regulation”;

(ii) omit “, the holder of the registered Community design”.

5. After paragraph 18 insert—

18A. Before section 13, insert—

Application of the Act to certain registered Community designs

12A. Schedule 1A makes provision—

(a) for registered Community designs (including certain designs whose registration has expired or which have been removed from the register) to be treated as registered under this Act with effect from exit day, and

(b) about certain applications for registered Community designs made before exit day.

Application of the Act to certain international designs

12B. Schedule 1B makes provision—

(a) for certain designs which are registered in the international register maintained by the International Bureau of the World Intellectual Property Organization in respect of which the European Union is designated (including certain designs whose registration has expired) to be treated as registered under this Act with effect from exit day, and

(b) about certain applications made before exit day to register in the international register maintained by the International Bureau of the World Intellectual Property Organization a design in respect of which the European Union is designated.”.”.

6. In paragraph 25(2), in the inserted section 20(1B)—

(a) omit “or the Community Design Regulation”;

(b) omit “, the holder of the registered Community design”.

7. In paragraph 28—

(a) in the inserted section 24D(5)—

(i) in paragraph (b), omit “(including that section as applied in relation to Community trade marks by any statutory provision having effect in the Isle of Man)”;

(ii) at the end of paragraph (d) at the end of the paragraph (after the semi-colon in that paragraph) insert “or”;

(iii) at the end of paragraph (e) omit “or”;

(iv) omit paragraph (f);

(b) in subsection (5) of the inserted section 24G, for the words from “an enforceable” to the end substitute “anything which forms part of retained EU law as a result of section 3 or 4 of the European Union (Withdrawal) Act 2018”.

8. After paragraph 29, insert—

29A. After section 25 (certificate of contested validity of registration), insert—

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

25A.—(1) This section applies to communications as to any matter relating to the protection of a design as a registered design.

(2) Any such communication—

(a) between a person and a professional designs representative; or

(b) for the purposes of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing a professional designs representative,

is privileged from, or in Scotland protected against, disclosure in legal proceedings in the same way as a communication between a person and a solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing a solicitor.

(3) In subsection (2) “professional designs representative” means a person whose name appears on the special list of professional representatives for design matters maintained by the European Union Intellectual Property Office referred to in Article 78(4) of Council Regulation (EC) 6/2002 of 12th December 2001 on Community designs as it has effect in EU law.”.”.

9. After paragraph 35, insert—

35A. In section 35ZA( 5) (offence of unauthorised copying etc of design in course of business), omit subsection (7).”.

10. In paragraph 40(1)(c), omit the inserted definitions of “Community Design Regulation” and “registered Community design”.

11. After paragraph 43, insert—

44. After Schedule 1, insert—

“SCHEDULE 1A

Section 12A

EUROPEAN COMMUNITY REGISTERED DESIGNS

PART 1

Existing registered Community designs

Designs registered as Community designs to be treated as registered under the Act

1.—(1) A design which, immediately before exit day, is entered in the RCD register and has been published in the Community Designs Bulletin as mentioned in Article 73(1) (an “existing registered Community design”) is to be treated on and after exit day as if an application for its registration had been made, and it had been registered, under this Act.

(2) A registered design which comes into being by virtue of sub-paragraph (1) is referred to in this Schedule as a “re-registered design”.

(3) This Act applies to a re-registered design as it applies to other registered designs except as otherwise provided in this Schedule.

(4) For the purposes of this Act—

(a) the date of registration of a re-registered design is the date on which the existing registered Community design from which the re-registered design derives was treated as registered under the Community Design Regulation, and

(b) the date of the application of a re-registered design is the date treated, under Article 38, as the date of filing of the application for the registration of the existing registered Community design from which the re-registered design derives.

(5) Any fee provided for by regulations under Schedule 4 to the European Union (Withdrawal) Act 2018 in respect of any matter relating to a re-registered design applies in the Isle of Man in respect of that matter.

(6) The following provisions of this Act do not apply to a re-registered design—

(a) section 7A(6);

(b) section 18.

(7) In this Schedule—

(a) “the RCD register” means the register of registered Community designs maintained under Article 72;

(b) “the Community Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as it had effect immediately before exit day.

Entries to be made in the register in relation to designs treated as registered under this Act

2.—(1) The registrar must as soon as reasonably practicable on or after exit day enter a re-registered design in the register of designs.

(2) The obligation under section 22(1) (inspection of registered designs) applies to a reregistered design on and after the day on which the re-registered design is entered in the register (notwithstanding that no certificate of registration has been granted).

Opt out

3.—(1) Subject to sub-paragraph (2), the proprietor of an existing registered Community design may at any time on or after exit day serve a notice on the registrar that the design is not to be treated as if it had been registered under this Act.

(2) A notice under sub-paragraph (1) may not be served where on or after exit day—

(a) the re-registered design which derives from the existing registered Community design (or any interest in it)—

(i) has been assigned or otherwise transferred except by an assent by personal representatives, or

(ii) has had an interest created in it by a mortgage, licence or other instrument; or

(b) proceedings based on the re-registered design have been initiated by the proprietor or with the proprietor's consent.

(3) A notice served under sub-paragraph (1) must—

(a) identify the existing registered Community design; and

(b) include the name and address of any person having an interest in the existing registered Community design which had effect before exit day in the United Kingdom and in respect of which an entry was recorded in the RCD register.

(4) A notice under sub-paragraph (1) is of no effect unless the proprietor in that notice certifies that any such person—

(a) has been given not less than three months' notice of the proprietor's intention to serve such a notice; or

(b) is not affected by, or if affected consents to, the notice.

(5) Where a notice has been served under sub-paragraph (1)—

(a) the design ceases with effect from exit day to be treated as if it had been registered under this Act,

(b) the obligation imposed on the registrar under paragraph 2 (entries to be made in the register in relation to designs...

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