The Community Design Regulations 2005

Introductory and interpretationU.K.

1.—(1) These Regulations may be cited as the Community Design Regulations 2005 and shall come into force on 1st October 2005.

(2) In these Regulations—

[F1“design court” has the meaning given by Article 81 of the Design Regulation;]

[F1“Design Regulation” means Council Regulation (EC) No 6/2002 of 12th December 2001 on Community Designs as amended by regulation 4(1) of, and Part 1 of Schedule 1 to, the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2018; and]

[F1“supplementary unregistered design” has the meaning given by Article 1 of the Design Regulation.]

F2(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

[F3Infringement proceedingsU.K.

1A.—(1) This regulation and regulations 1B to 1D are without prejudice to the duties of the F4... design court under the provisions of Article 89(1)(a) to (c) of the F4... Design Regulation.

(2) [F5Subject to [F6paragraph] (5), in an action] for infringement of a [F7supplementary unregistered] design all such relief by way of damages, injunctions, accounts or otherwise is available to the holder of the [F7supplementary unregistered] design as is available in respect of the infringement of any other property right.

F8(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F9(4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

[F10(5) In an action for the infringement of [F11a supplementary] unregistered F12... design, damages shall not be awarded against a person who proves that at the date of the infringement that they were not aware, and had no reason to believe, that the design to which the action relates was protected as [F11a supplementary] unregistered F12... design.]

Order for delivery upU.K.

1B.—(1) Where a person—

(a)has in his possession, custody or control for commercial purposes an infringing article, or

(b)has in his possession, custody or control anything specifically designed or adapted for making articles to a particular design which is a [F13supplementary unregistered] design, knowing or having reason to believe that it has been or is to be used to make an infringing article,

the holder of the [F13supplementary unregistered] design in question may apply to the F14... design court for an order that the infringing article or other thing be delivered up to him or to such other person as the [F15design] court may direct.

(2) An application shall not be made after the end of the period specified in the following provisions of this regulation; and no order shall be made unless the [F16design] court also makes, or it appears to the [F16design] court that there are grounds for making, an order under regulation 1C (order as to disposal of infringing articles, &c.).

(3) An application for an order under this regulation may not be made after the end of the period of six years from the date on which the article or thing in question was made, subject to paragraph (4).

(4) If during the whole or any part of that period the holder of the [F17supplementary unregistered] design—

(a)is under a disability, or

(b)is prevented by fraud or concealment from discovering the facts entitling him to apply for an order,

an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

(5) In paragraph (4) “disability”—

(a)in England and Wales, has the same meaning as in the Limitation Act 1980;

(b)in Scotland, means legal disability within the meaning of the Prescription and Limitation (Scotland) Act 1973;

(c)in Northern Ireland, has the same meaning as in the Statute of Limitations (Northern Ireland) 1958.

(6) A person to whom an infringing article or other thing is delivered up in pursuance of an order under this regulation shall, if an order under regulation 1C is not made, retain it pending the making of an order, or the decision not to make an order, under that regulation.

(7) The reference in paragraph (1) to an act being done in relation to an article for “commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business.

(8) Nothing in this regulation affects any other power of the [F18design] court.

Order as to disposal of infringing articles, &cU.K.

1C.—(1) An application may be made to the F19... design court for an order that an infringing article or other thing delivered up in pursuance of an order under regulation 1B shall be—

(a)forfeited to the holder of the [F20supplementary unregistered] design, or

(b)destroyed or otherwise dealt with as the [F21design] court may think fit,

or for a decision that no such order should be made.

(2) In considering what order (if any) should be made, the [F22design] court shall consider whether other remedies available in an action for infringement of the right in a [F23supplementary unregistered] design would be adequate to compensate the holder and to protect his interests.

(3) Where there is more than one person interested in an article or other thing, the [F24design] court shall make such order as it thinks just and may (in particular) direct that the thing be sold, or otherwise dealt with, and the proceeds divided.

(4) If the [F25design] court decides that no order should be made under this regulation, the person in whose possession, custody or control the article or other thing was before being delivered up is entitled to its return.

(5) References in this regulation to a person having an interest in an article or other thing include any person in whose favour an order could be made in respect of it—

(a)under this regulation;

(b)under section 24D of the Registered Designs Act 1949;

(c)under section 114, 204 or 231 of the Copyright, Designs and Patents Act 1988; or

(d)under section 19 of the Trade Marks Act 1994 F26...

Meaning of “infringing article”U.K.

1D.—(1) In these Regulations “infringing article”, in relation to a design, shall be construed in accordance with this regulation.

(2) An article is an infringing article if its making to that design was an infringement of a [F27supplementary unregistered] design.

(3) An article is also an infringing article if—

(a)it has been or is proposed to be imported into the United Kingdom, and

(b)its making to that design in the United Kingdom would have been an infringement of a [F28supplementary unregistered] design or a breach of an exclusive licensing agreement relating to that [F28supplementary unregistered] design.

(4) Where it is shown that an article is made to a design which is or has been a [F29supplementary unregistered] design, it shall be presumed until the contrary is proved that the article was made at a time when the right in the [F29supplementary unregistered] design subsisted.

(5) Nothing in paragraph (3) shall be construed as applying to an article which—

[F30(a)may be lawfully imported into the United Kingdom by virtue of anything which forms part of assimilated law as a result of section 3 of the European Union (Withdrawal) Act 2018, or

(b)has been or is proposed to be imported into the United Kingdom after being put on the market in the European Economic Area by or with the consent of the holder of the supplementary unregistered design.]]

[F31(5A) In subsection (5)(a), the reference to assimilated law is to be read, until the coming into force of paragraph 2(6) of Schedule 2 to the Retained EU Law (Revocation and Reform) Act 2023, as a reference to retained EU law.]

[F32Unjustified threats: threats of infringement proceedingsU.K.

2.—(1) A communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that—

(a)a [F33supplementary unregistered] design exists, and

(b)a person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the [F33supplementary unregistered] design by—

(i)an act done in the United Kingdom, or

(ii)an act which, if done, would be done in the United Kingdom.

(2) References in this regulation and in regulation 2C to a “recipient” include, in the case of a communication directed to the public or a section of the public, references to a person to whom the communication is directed.

Unjustified threats: actionable threatsU.K.

2A—(1) Subject to paragraphs (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat.

(2) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of—

(a)making an article for disposal, or

(b)importing an article for disposal.

(3) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of an act which, if done, would constitute an infringement of a kind mentioned in paragraph (2)(a) or (b).

(4) A threat of infringement proceedings is not actionable if the threat—

(a)is made to a person who has done, or intends to do, an act mentioned in paragraph (2)(a) or (b) in relation to an article, and

(b)is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that article.

(5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.

(6) In regulations 2C and 2D an “actionable threat” means a threat of infringement proceedings that is actionable in accordance with this regulation.

Unjustified threats: permitted communicationsU.K.

2B—(1) For the purposes of regulation 2A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—

(a)the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

(b)all of the information that relates to the threat is information that—

(i)is necessary for that purpose (see paragraph (5)(a) to (c) for some examples of necessary information), and

(ii)the person making the communication reasonably believes is true.

(2) Each of the following is a “permitted purpose”—

(a)giving notice that a [F34supplementary unregistered] design exists;

(b)discovering whether, or by whom, a [F34supplementary unregistered] design has been infringed by an act mentioned in regulation 2A(2)(a) or (b);

(c)giving notice that a person has a right in or under a [F34supplementary unregistered] design, where another person's awareness of the right is relevant to any proceedings that may be brought in respect of the [F34supplementary unregistered] design.

(3) The [F35design] court may, having regard to the nature of the purposes listed in paragraph (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

(4) But the following may not be treated as a “permitted purpose”—

(a)requesting a person to cease doing, for commercial purposes, anything in relation to an article made to a design, in which a design is incorporated or to which it is applied,

(b)requesting a person to deliver up or destroy an article made to a design, in which a design is incorporated or to which it is applied, or

(c)requesting a person to give an undertaking relating to an article made to a design, in which a design is incorporated or to which it is applied.

(5) If any of the following information is included in a communication made for a permitted purpose, it is information that is “necessary for that purpose” (see paragraph (1)(b)(i))—

(a)a statement—

F36(i). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

F37(ii). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(iii)that a design is protected as [F38a supplementary] unregistered F39... design;

(b)details of the [F40supplementary unregistered] design, or of a right in or under the [F40supplementary unregistered] design, which—

(i)are accurate in all material respects, and

(ii)are not misleading in any material respect; and

(c)information enabling the identification of the article that is alleged to be infringing an article in relation to the design.

Unjustified threats: remedies and defencesU.K.

2C—(1) Proceedings in respect of an actionable threat may be brought against the person who made the threat for—

(a)a declaration that the threat is unjustified;

(b)an injunction against the continuance of the threat;

(c)damages in respect of any loss sustained by the aggrieved person by reason of the threat.

(2) It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of the [F41supplementary unregistered] design.

(3) It is a defence for the person who made the threat to show—

(a)that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in regulation 2A(2)(a) or (b) in relation to the article which is the subject of the threat, and

(b)that the person notified the recipient, before or at the time of making the threat, of the steps taken.

Unjustified threats: professional advisersU.K.

2D—(1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in paragraph (3) are met.

(2) In this section “professional adviser” means a person who, in relation to the making of the communication containing the threat—

(a)is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and

(b)is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).

(3) The conditions are that—

(a)in making the communication the professional adviser is acting on the instructions of another person, and

(b)when the communication is made the professional adviser identifies the person on whose instructions the adviser is acting.

(4) This section does not affect any liability of the person on whose instructions the professional adviser is acting.

(5) It is for a person asserting that paragraph (1) applies to prove (if required) that at the material time—

(a)the person concerned was acting as a professional adviser, and

(b)the conditions in paragraph (3) were met.

Unjustified threats: supplementary: pending registrationU.K.

F422E  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Unjustified threats: supplementary: proceedings for delivery up etc.U.K.

2F  In regulation 2(1)(b) the reference to proceedings for infringement of the [F43supplementary unregistered] design includes a reference to—

(a)proceedings for an order under regulation 1B (order for delivery up), and

(b)proceedings for an order under regulation 1C (order as to disposal of infringing articles).]

Falsely representing a design as a registered Community designU.K.

F443.  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Privilege for communications with those on the special list of professional design representativesU.K.

4.—(1) This regulation applies to communications as to any matter relating to the protection of [F45a supplementary unregistered] design.

(2) Any such communication—

(a)between a person and his 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 his 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 his 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 his solicitor.

[F46(3) In paragraph (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 had effect immediately before IP completion day.]

Use of [F47supplementary unregistered] design for services of the CrownU.K.

5.  The provisions of the Schedule to these Regulations shall have effect with respect to the use of F48... [F49supplementary] unregistered F50... designs for the services of the Crown and the rights of third parties in respect of such use.

[F51Application to Scotland and Northern IrelandU.K.

5A.—(1) In the application of these Regulations to Scotland—

“accounts” means count, reckoning and payment;

“claimant” means pursuer;

[F52“declaration” means “declarator”;]

“defendant” means defender;

“delivery up” means delivery;

“injunction” means interdict.

(2) In the application of these Regulations to Northern Ireland, “claimant” includes plaintiff.]

Amendment of section 35 of the Registered Designs Act 1949U.K.

6.  In section 35 of the Registered Designs Act 1949 M1 (fine for falsely representing a design as registered), after subsection (2) there shall be inserted—

“(3) For the purposes of this section, the use in the United Kingdom in relation to a design—

(a)of the word “registered”, or

(b)of any other word or symbol importing a reference (express or implied) to registration,

shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in the United Kingdom and that the design is in fact so registered.”.