The Registered Designs Regulations 2001

SCHEDULE 1CONSEQUENTIAL AMENDMENTS

Chartered Associations (Protection of Names and Uniforms) Act 1926

1.  In section 3 of the Chartered Associations (Protection of Names and Uniforms) Act 1926 (savings)—

(a)for the word “article”, in the first place where it appears, there shall be substituted “product”;

(b)for the words from “in respect of ” to “1907”, there shall be substituted “where a design is applied to, or incorporated in, the product and the design is protected by virtue of registration under the Registered Designs Act 1949”;

(c)for the words “such registered design”, in both places where they appear, there shall be substituted “the design”; and

(d)for the words “such article” there shall be substituted “the product”.

Registered Designs Act 1949

2.  In section 8B(6) of the Registered Designs Act 1949(1) (effect of order for restoration of right)—

(a)for the words “an article” there shall be substituted “a product”; and

(b)for the words “the article” there shall be substituted “the product”.

3.  In section 9(1) of that Act(2) (exemption of innocent infringer from liability for damages)—

(a)for the words “an article” there shall be substituted “a product”; and

(b)for the words “the article” there shall be substituted “, or incorporated in, the product”.

4.—(1) Section 14 of that Act(3) (registration of design where application for protection in convention country has been made) shall be amended as follows.

(2) In subsection (2)—

(a)after the word “whether” there shall be inserted “(and to what extent)”; and

(b)after the word “new” there shall be inserted “or has individual character”.

(3) In subsection (3) for the words “section 3(4)” there shall be substituted “section 3B(2) or (3)”.

5.  In section 15(2) of that Act (extension of time for applications under section 14 in certain cases)—

(a)in paragraph (a), for the word “articles” there shall be substituted “products”; and

(b)in paragraph (e)—

(i)for the word “articles” there shall be substituted “products”; and

(ii)after the word “applied” there shall be inserted “or in which it is incorporated”.

6.—(1) Section 19 (registration of assignments etc.)(4) of that Act shall be amended as follows.

(2) In subsection (3A) for the words “design right”, in both places where they appear, there shall be substituted “national unregistered design right”.

(3) In subsection (3B) for the words “design right”, in the first and third places where they appear, there shall be substituted “national unregistered design right”.

7.—(1) Section 22 of that Act(5) (inspection of registered designs) shall be amended as follows.

(2) In subsection (2) for the words from the beginning to “no” there shall be substituted—

• “Where—

  (a)

  a design has been registered;

  (b)

  a product to which the design was intended to be applied or in which it was intended to be incorporated was specified, in accordance with rules made under section 36 of this Act, in the application for the registration of the design; and

  (c)

  the product so specified falls within any class prescribed for the purposes of this subsection,

  no”.

(3) Also in subsection (2)—

(a)for the word “articles” there shall be substituted “products”; and

(b)for the words from “it is the same” to “trade” there shall be substituted “, by reference to the first-mentioned design, it is not new or does not have individual character”.

(4) In subsection (3) for the words from “design” to “class” there shall be substituted “registered design and a specified product which falls within any class”.

8.—(1) Section 25 of that Act(6) (certificate of contested validity of registration) shall be amended as follows.

(2) In subsection (1) after the words “the design is” there shall be inserted “, to any extent,”.

(3) In subsection (2) for the word “cancellation” there shall be substituted “invalidation”.

9.  In section 30(3)(a) of that Act(7) (costs and security for costs) for the word “cancellation” there shall be substituted “invalidation”.

10.—(1) Section 35 of that Act(8) (fine for falsely representing a design as registered) shall be amended as follows.

(2) In subsection (1)—

(a)for the words “any article” there shall be substituted “, or incorporated in, any product”;

(b)the words “in respect of that article” shall be omitted;

(c)for the words “an article” there shall be substituted “a product”;

(d)for the words “the article”, in the first and second places where they appear, there shall be substituted “, or incorporated in, the product”; and

(e)the words “in respect of the article” shall be omitted.

(3) In subsection (2)—

(a)for the words “any article” there shall be substituted “any product”;

(b)after the word “applied” there shall be inserted “or in which it has been incorporated”; and

(c)for the words “such article” there shall be substituted “such product”.

11.  In section 36(1A) of that Act(9) (general power of Secretary of State to make rules etc.), after paragraph (a), there shall be inserted—

“(ab)requiring applications for registration of designs to specify—

(i)the products to which the designs are intended to be applied or in which they are intended to be incorporated;

(ii)the classification of the designs by reference to such test as may be prescribed;”.

12.  In section 37(2) of that Act for the words from “section”, where it first appears, to “Act”, where it first appears, there shall be substituted “section 15 of this Act”.

13.  In section 43(2) of that Act (savings) for the word “articles” there shall be substituted “products”.

14.—(1) Section 44 of that Act (interpretation) shall be amended as follows.

(2) In subsection (1), in the definition of “design”(10) for the words “section 1(1)” there shall be substituted “section 1(2)”.

(3) In subsection (1), at the appropriate places, there shall be inserted—

• ““complex product” has the meaning assigned to it by section 1(3) of this Act;”;

““national unregistered design right” means design right within the meaning of Part III of the Copyright, Designs and Patents Act 1988;”;

• ““product” has the meaning assigned to it by section 1(3) of this Act;”.

(4) In subsection (4) for the words from “section”, where it first appears, to “Act” there shall be substituted “section 14 of this Act”.

15.—(1) Schedule 1 to that Act (use of registered designs for the services of the Crown) shall be amended as follows.

(2) In paragraph 1(6)(11) and (7), for the word “articles”, in each place where it appears, there shall be substituted “products”.

(3) In paragraph 2(1)(12) for the words “design right” there shall be substituted “national unregistered design right”.

(4) In paragraph 2A(1) and (4)(13)—

(a)for the word “articles” there shall be substituted “products”; and

(b)after the word “applied” there shall be inserted “or in which it is incorporated”.

(5) In paragraph 3(2)(a)—

(a)after the word “proceedings” there shall be inserted “and the department are a relevant person within the meaning of section 20 of this Act”;

(b)for the word “cancellation” there shall be substituted “invalidation”; and

(c)for the word “cancelled” there shall be substituted “declared invalid”.

(6) In paragraph 3(2)(b)—

(a)after the word “case” there shall be inserted “and provided that the department would be the relevant person within the meaning of section 20 of this Act if they had made an application on the grounds for invalidity being raised”; and

(b)for the word “cancellation” there shall be substituted “invalidation”.

Copyright, Designs and Patents Act 1988

16.  In section 53(1)(b) of the Copyright, Designs and Patents Act 1988(14) (things done in reliance on registration of design) after the word “cancellation” there shall be inserted “or invalidation”.