Made | 14th November 2001 | ||
Coming into force | 9th December 2001 |
2.
- (1) The 1949 Act shall have effect in the Isle of Man[3] subject to the modifications specified in Schedule 1 to this Order.
(2) The 1949 Act is further modified in its application to the Isle of Man in accordance with Schedule 2 to this Order in relation to registrations under that Act made, and applications for registration made but not determined, before the coming into force of this Order.
3.
Part IV (registered designs) of, and Schedules 3 and 4 to, the 1988 Act shall extend to the Isle of Man subject to the exceptions and modifications specified in Schedule 3 to this Order.
4.
The Orders specified in Schedule 4 to this Order are revoked to the extent specified in column 3 of that Schedule.
A. K. Galloway
Clerk of the Privy Council
Substantive grounds for refusal of registration
1A.
- (1) The following shall be refused registration under this Act -
(2) A design ("the later design") shall be refused registration under this Act if it is not new or does not have individual character when compared with a design which -
(3) In subsection (2) above "the relevant date" means the date on which the application for the registration of the later design was made or is treated by virtue of section 3B(2), (3) or (5) or 14(2) of this Act as having been made.
Requirement of novelty and individual character
1B.
- (1) A design shall be protected by a right in a registered design to the extent that the design is new and has individual character.
(2) For the purposes of subsection (1) above, a design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.
(3) For the purposes of subsection (1) above, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.
(4) In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.
(5) For the purposes of this section, a design has been made available to the public before the relevant date if -
(6) A disclosure falls within this subsection if -
(7) In subsections (2), (3), (5) and (6) above "the relevant date" means the date on which the application for the registration of the design was made or is treated by virtue of section 3B(2), (3) or (5) or 14(2) of this Act as having been made.
(8) For the purposes of this section, a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character -
(9) In subsection (8) above "normal use" means use by the end user; but does not include any maintenance, servicing or repair work in relation to the product.
Designs dictated by their technical function
1C.
- (1) A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product's technical function.
(2) A right in a registered design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function.
(3) Subsection (2) above does not prevent a right in a registered design subsisting in a design serving the purposes of allowing multiple assembly or connection of mutually interchangeable products within a modular system.
Designs contrary to public policy or morality
1D.
A right in a registered design shall not subsist in a design which is contrary to public policy or to accepted principles of morality."
6.
In section 2(2)[5] (proprietorship of designs), omit -
7.
For section 3[6] (proceedings for registration) substitute -
the registrar may, for the purpose of deciding whether and to what extent the design is new or has individual character, direct that the subsequent application shall be treated as having been made on the date on which the earlier application was, or is treated as having been, made.
(4) Where an application for the registration of a design has been refused on any ground mentioned in section 1A(1)(b) or (c) of this Act, the application may be modified by the applicant if it appears to the registrar that -
(5) An application modified under subsection (4) above shall be treated as the original application and, in particular, as made on the date on which the original application was made or is treated as having been made.
(6) Any modification under this section may, in particular, be effected by making a partial disclaimer in relation to the application.
Date of registration of designs
3C.
- (1) Subject as follows, a design, when registered, shall be registered as of the date on which the application was made or is treated as having been made.
(2) Subsection (1) above shall not apply to an application which is treated as having been made on a particular date by section 14(2) of this Act or by virtue of the operation of section 3B(3) or (5) of this Act by reference to section 14(2) of this Act.
(3) A design, when registered, shall be registered as of -
Appeals in relation to applications for registration
3D.
An appeal lies from any decision of the registrar under section 3A or 3B of this Act."
8.
Omit section 4[7] (registration of same design in respect of other articles).
9.
- (1) In section 5(2)[8] (provisions for secrecy of certain designs), omit paragraph (b) and the word "and" immediately preceding it.
(2) In section 5(3)(b), omit the words from ", or any" to "above,".
10.
Omit section 6[9] (provisions as to confidential disclosure etc.).
11.
For section 7[10] (right given by registration) substitute -
(3) In determining for the purposes of subsection (1) above whether a design produces a different overall impression on the informed user, the degree of freedom of the author in creating his design shall be taken into consideration.
(4) The right conferred by subsection (1) above is subject to any limitation attaching to the registration in question (including, in particular, any partial disclaimer or any declaration by the registrar or a court of partial invalidity).
Infringements of rights in registered designs
7A.
- (1) Subject as follows, the right in a registered design is infringed by a person who, without the consent of the registered proprietor, does anything which by virtue of section 7 of this Act is the exclusive right of the registered proprietor.
(2) The right in a registered design is not infringed by -
(3) The conditions mentioned in this subsection are -
(4) The right in a registered design is not infringed by an act which relates to a product in which any design protected by the registration is incorporated or to which it is applied if the product has been put on the market in the European Economic Area by the registered proprietor or with his consent.
(5) The right in a registered design of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration.
(6) No proceedings shall be taken in respect of an infringement of the right in a registered design committed before the date on which the certificate of registration of the design under this Act is granted."
12.
Omit section 8(5) and (6)[11] (duration of right).
13.
In section 8B(6)[12] (effect of order for restoration of right) -
14.
In section 9(1)[13] (exemption of innocent infringer from liability for damages) -
15.
Omit section 10 (compulsory licence in respect of registered design).
16.
For section 11[14] (cancellation of registration) substitute -
17.
- (1) In section 11A(3)[15] (powers exercisable for protection of the public interest), omit -
(2) Omit section 11A(4) and (5).
18.
Omit section 11B[16].
19.
- (1) In section 14(2)[17] (registration of design where application for protection in convention country has been made) -
(2) In section 14(3) for "section 3(4)" substitute "section 3B(2) or (3)".
20.
In section 15(2)[18] (extension of time for applications under section 14 in certain cases) -
21.
Omit section 16[19] (protection of designs communicated under international agreements).
22.
- (1) In section 19(3A)[20] (registration of assignments etc.), for "design right", in both places, substitute "national unregistered design right".
(2) In section 19(3B) for "design right", in the first and third places, substitute "national unregistered design right".
23.
- (1) In section 20(1)[21] (applications for rectification) for "any person aggrieved" substitute "the relevant person".
(2) After section 20(1) insert -
(1B) In subsection (1A) above "the appropriate person" means, in relation to an earlier design protected by virtue of registration under this Act or an application for such registration, the registered proprietor of the design or (as the case may be) the applicant."
(3) After section 20(5) insert -
24.
- (1) In section 22(1)[22] (inspection of registered designs), omit paragraph (b) and the word "and" immediately preceding it.
(2) In section 22(2) -
no";
(3) In section 22(3) for the words from "design" to "class" substitute "registered design and a specified product which falls within any class".
25.
In section 23(a)[23], omit "and, if so, in respect of what articles".
26.
- (1) In section 25(1)[24] (certificate of contested validity of registration), after "the design is" insert ", to any extent,".
(2) In section 25(2), for "cancellation" substitute "invalidation".
27.
For section 27[25] substitute -
28.
In section 28(5)[26], for paragraphs (a) and (b) substitute "in the Isle of Man, in the same way as an execution issued out of the court".
29.
- (1) In section 30(2)[27] (costs and security for costs), for paragraphs (a) and (b) substitute "in the Isle of Man, in the same way as an execution issued out of the court".
(2) In section 30(3) -
30.
In section 33(1)(a)[28], for "indictment" substitute "information".
31.
In section 34(a)[29], for "indictment" substitute "information".
32.
- (1) In section 35(1)[30] (fine for falsely representing a design as registered) -
(2) In section 35(2) -
33.
In section 36(1A)[31] (general power of Secretary of State to make rules etc.), after paragraph (a) insert -
34.
In section 37(2)[32] for the words from "section", where it first appears, to "Act", where it first appears, substitute "section 15 of this Act".
35.
- (1) Omit section 43(1) (savings).
(2) In section 43(2), for "articles" substitute "products".
36.
- (1) In section 44(1)[33] (interpretation) -
(2) After section 44(1) insert -
(3) Omit section 44(2) and (3).
(4) In section 44(4) for the words from "section", where it first appears, to "Act" substitute "section 14 of this Act".
37.
Omit section 45 (Scotland) and 46 (Northern Ireland).
38.
Omit section 48(5) (transitional provision).
39.
Before Schedule 1 insert -
unless it appears to the registrar that consent for such use has been given by or on behalf of Her Majesty or (as the case may be) the relevant member of the Royal family.
(2) A design shall be refused registration under this Act if it involves the use of -
and it appears to the registrar that the use would be misleading or grossly offensive.
(3) A design shall be refused registration under this Act if it involves the use of -
unless it appears to the registrar that consent for such use has been given by or on behalf of the person concerned and the use is not in any way contrary to the law of arms.
(4) A design shall be refused registration under this Act if it involves the use of a controlled representation within the meaning of the Olympic Symbol etc. (Protection) Act 1995 unless it appears to the registrar that -
(5) References in this section to the Olympic Symbol etc (Protection) Act 1995 are to that Act as it has effect in the United Kingdom.
(2) A design shall be refused registration under this Act if it involves the use of the armorial bearings or any other state emblem of a Paris Convention country which is protected under the Paris Convention unless the authorisation of the competent authorities of that country has been given for the registration.
(3) A design shall be refused registration under this Act if -
unless the authorisation of the competent authorities of that country has been given for the registration.
(4) The provisions of this paragraph as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.
(5) Nothing in this paragraph prevents the registration of a design on the application of a national of a country who is authorised to make use of a state emblem, or official sign or hallmark, of that country, notwithstanding that it is similar to that of another country.
of international intergovernmental organisations of which one or more Paris Convention countries are members.
(2) A design shall be refused registration under this Act if it involves the use of any such emblem, abbreviation or name which is protected under the Paris Convention unless -
(3) The provisions of this paragraph as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.
(4) Nothing in this paragraph affects the rights of a person whose bona fide use of the design in question began before 4th January 1962 (when the relevant provisions of the Paris Convention entered into force in relation to the United Kingdom).
(2) For the purposes of paragraph 3 above the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention only if, or to the extent that -
(3) Notification under Article 6ter(3) of the Paris Convention shall have effect only in relation to applications for the registration of designs made more than two months after the receipt of the notification.
40.
- (1) Schedule 1[35] (use of registered designs for the services of the Crown) is modified as follows.
(2) In paragraph 1(6) and (7), for "articles", in each place, substitute "products".
(3) In paragraph 2(1) for "design right" substitute "national unregistered design right".
(4) In paragraph 2A(1) and (4) -
(5) In paragraph 3(2)(a) -
(6) In paragraph 3(2)(b) -
(7) for "cancellation" substitute "invalidation".
the difference between the two dates shall be added to the first period of five years for which the right in the registered design is to subsist.
(8) Any reference in section 8 of the 1949 Act to a period of five years shall, in the case of any such period which is extended by virtue of paragraph (7), be treated as a reference to the extended period.
(9) The omission by this Order of the proviso to section 4(1) of the 1949 Act and of the reference to it in section 8 of that Act shall not apply to the right in a design to which a transitional registration applies.
Post-1989 registrations
3.
- (1) This paragraph applies to -
(b) any registration under the 1949 Act which -
(c) any registration which subsequently ceases to fall within paragraph (b) because the right in the registered design has been treated or restored as mentioned in paragraph (ii) of that sub-paragraph.
(2) The 1949 Act as it has effect in the Isle of Man immediately before the coming into force of this Order shall continue to apply in relation to registrations to which this paragraph applies ("post-1989 registrations") so far as the Act relates to the cancellation or invalidation of such registrations (other than cancellation by virtue of section 11(3) of that Act and by reference to an expiry of copyright occurring on or after the coming into force of this Order).
(3) Accordingly the modifications made by Schedule 1 to this Order shall, so far as they relate to the cancellation or invalidation of registrations, not apply in relation to post-1989 registrations.
(4) The modifications made by Schedule 1 to this Order shall otherwise apply (subject to subparagraphs (5) to (9) and paragraph 5 of this Schedule) in relation to post-1989 registrations.
(5) In the application by virtue of subparagraph (4) of sections 7 and 7A of the 1949 Act (as substituted by Schedule 1 to this Order), the fact that post-1989 registrations are in respect of any articles, or sets of articles, shall be disregarded.
(6) Sections 3 to 3D of the 1949 Act (as substituted by Schedule 1 to this Order) shall not operate so as to alter the dates of registration of designs to which post-1989 registrations apply.
(7) Where -
the difference between the two dates shall be added to any period of five years which is current on the coming into force of this Order or, if no such period is current but a subsequent extension or restoration is effected under section 8, or sections 8A and 8B, of the 1949 Act, to the period resulting from that extension or restoration.
(8) Any reference in section 8 of the 1949 Act to a period of five years shall, in the case of any such period which is extended by virtue of subparagraph (7), be treated as a reference to the extended period.
(9) The omission by this Order of the proviso in section 4(1) of the 1949 Act and the reference to it in section 8 of that Act shall not apply to the right in a design to which a post-1989 registration applies.
Pre-1989 registrations
4.
- (1) This paragraph applies to -
(b) any registration under the 1949 Act which -
(c) any registration which subsequently ceases to fall within paragraph (b) because the copyright in the registered design has come back into force by virtue of an extension of the period of copyright under section 8(2) of the 1949 Act as amended by subparagraph (8).
(2) Subject as follows, the amendments and repeals made by this Order shall not apply to any provision of the 1949 Act which only has effect in relation to applications for registration made before 1st August 1989 or any registrations resulting from such applications.
(3) Any such provision and any other provision of the 1949 Act as it has effect immediately before the coming into force of this Order in relation to registrations which fall within subparagraph (1) ("pre-1989 registrations") shall continue to apply so far as it relates to the cancellation or invalidation of pre-1989 registrations (other than cancellation by virtue of section 11(3) of that Act and by reference to an expiry of copyright occurring on or after the coming into force of this Order).
(4) Accordingly the modifications made by this Order shall, so far as they relate to the cancellation or invalidation of registrations, not apply in relation to pre-1989 registrations.
(5) The modifications made by this Order shall otherwise apply (subject to paragraphs (2) and (9) to (12) and paragraph 5 of this Schedule) in relation to pre-1989 registrations.
(6) Modifications corresponding to the modifications made by Schedule 1 to this Order (other than those relating to the cancellation or invalidation of registrations) shall be treated as having effect, with necessary modifications and subject to paragraph 5 of this Schedule, in relation to any provision of the 1949 Act which only has effect in relation to applications for registration made before 1st August 1989 or any registrations resulting from such applications.
(7) In the application by virtue of subparagraph (6) of modifications relating to sections 7 and 7A of the 1949 Act corresponding to those made by Schedule 1, the fact that pre-1989 registrations are in respect of any articles, or sets of articles, shall be disregarded.
(8) In section 8(2) of the 1949 Act as it has effect in the Isle of Man in relation to pre-1989 registrations (period of copyright) -
(9) Sections 3 to 3D of the 1949 Act (as substituted by Schedule 1 to this Order) shall not operate so as to alter the dates of registration of designs to which pre-1989 registrations apply.
(10) Where -
the difference between the two dates shall be added to any period of five years which is current on the coming into force of this Order or, if no such period is current but a subsequent extension is effected under section 8 of the 1949 Act as modified by subparagraph (8), to the period resulting from that extension.
(11) Any reference in section 8(2) of the 1949 Act as modified by subparagraph (8) to a period of five years shall, in the case of any such period which is extended by virtue of subparagraph (10), be treated as a reference to the extended period.
(12) The omission by this Order of the proviso in section 4(1) of the 1949 Act shall not apply to the right in a design to which a pre-1989 registration applies.
Other transitional modifications
5.
- (1) Any licence which -
shall continue in force, with necessary modifications, on or after the making of this Order.
(2) In determining the effect of any such licence on or after the coming into force of this Order, regard shall be had to the purpose for which the licence was granted; and, in particular, a licence granted for the full term or extent of the right in a registered design or the copyright in a registered design shall be treated as applying, subject to its other terms and conditions, to the full term or extent of that right as extended by virtue of this Order.
(3) The right in a registered design conferred by virtue of this Order in relation to registrations to which paragraph 2, 3 or 4 of this Schedule applies shall not enable the registered proprietor to prevent any person from continuing to carry out acts begun by him before the coming into force of this Order and which, at that time, the registered proprietor or, in the case of registrations to which paragraph 2 applies, a registered proprietor would have been unable to prevent.
(4) The right in a registered design conferred by virtue of this Order in relation to registrations to which paragraph 3 or 4 of this Schedule applies shall, in particular, not apply in relation to infringements committed in relation to those registrations before the coming into force of this Order.
(5) The omission by Schedule 1 to this Order of provisions in section 5 of the 1949 Act shall not apply in relation to any evidence filed in support of an application made before the coming into force of this Order.
(6) The modifications made by Schedule 1 to this Order of section 22 of the 1949 Act (other than the amendment to the proviso in subsection (2) of that section) shall not apply in relation to any registration which has resulted from an application made before the coming into force of this Order.
(7) The modification of the proviso in section 22(2) of the 1949 Act shall not apply where -
(8) The modifications made by Schedule 1 to this Order of section 35 of the 1949 Act shall not apply in relation to any offences committed before the coming into force of this Order.
(9) The omission by Schedule 1 to this Order of provisions in section 44 of the 1949 Act which relate to the meaning of a set of articles shall not apply so far as those provisions are required for the purposes of paragraph 6(2)(a) of Schedule 1 to the Copyright Act 1991 (an Act of Tynwald)[36].
(10) Any modification by Schedule 1 to this Order of a provision in section 44 of the 1949 Act or in any enactment other than the 1949 Act shall not apply so far as that provision is required for the purposes of any other transitional provision made by this Order.
(11) The 1949 Act as it has effect in the Isle of Man immediately before the coming into force of this Order shall continue to apply in relation to former registrations, whose registration resulted from an application made before the coming into force of this Order, so far as the Act relates to the cancellation or invalidation of such registrations.
(12) Subparagraph (13) applies in relation to any registration to which paragraph 2, 3 or 4 applies which is in respect of any features of shape, configuration, pattern or ornament which do not fall within the new definition of "design" inserted into section 1 of the 1949 Act by Schedule 1 to this Order.
(13) The 1949 Act shall, so far as it applies in relation to any such registration, apply as if the features concerned were included within the new definition of "design" in that Act.
Reference | Title | Extent of revocation |
SI 1989/982 | The Registered Designs Act 1949 (Isle of Man) Order 1989. | The whole Order. |
SI 1989/1292 | The Copyright, Designs and Patents Act 1988 (Isle of Man) (No.2) Order 1989. | In article 2(1), subparagraphs (a) and (c). |
SI 1990/1505 | The Copyright, Designs and Patents Act 1988 (Isle of Man) Order 1990. | In article 2, paragraphs (a) and (b). In the Schedule, paragraph 2. |
[2] 1988 c. 48. Provisions of the 1988 Act relating to designs were extended to the Isle of Man with modifications by SI 1989/1292 and 1990/1505.back
[3] The 1949 Act was extensively amended by Part IV of, and Schedule 3 to, the 1988 Act (Schedule 8 of which repealed certain provisions). The text of the 1949 Act as it had effect in the Isle of Man immediately before the making of this Order was that set out in Schedule 4 to the 1988 Act as modified by SI 1989/1292 and 1990/1505.back
[4] Section 1 was substituted by the 1988 Act section 265. Subsection (6) was added by the Olympic Symbol etc. (Protection) Act 1995 (c. 32), which does not extend to the Isle of Man.back
[5] Section 2 was amended by the 1988 Act section 267.back
[6] Subsections (2) to (7) of section 3 were substituted by the 1988 Act Schedule 3 paragraph 1.back
[7] Section 4 was amended by the 1988 Act Schedule 3 paragraph 2.back
[8] Section 5 was amended by the 1988 Act Schedule 3 paragraph 3.back
[9] Section 6 was amended by the 1988 Act Schedule 3 paragraph 4.back
[10] Section 7 was substituted by the 1988 Act section 268.back
[11] Section 8 was substituted by the 1988 Act section 269.back
[12] Section 8B was inserted by the 1988 Act section 269.back
[13] Section 9 was amended by the 1988 Act Schedule 3 paragraph 5.back
[14] Section 11 was amended by the 1988 Act Schedule 3 paragraph 6.back
[15] Section 11A was inserted by the 1988 Act section 270.back
[16] Section 11B was inserted by the 1988 Act section 270.back
[17] Subsections (2) and (3) of section 14 were substituted by the 1988 Act Schedule 3 paragraph 7.back
[18] Section 15 was amended by the 1988 Act Schedule 3 paragraph 8.back
[19] Section 16 was amended by the 1988 Act Schedule 3 paragraph 9.back
[20] Section 19 was amended by the 1988 Act Schedule 3 paragraph 10.back
[21] Section 20 was amended by the 1988 Act Schedule 3 paragraph 11.back
[22] Section 22 was amended by the 1988 Act Schedule 3 paragraph 12.back
[23] Section 23 was substituted by the 1988 Act Schedule 3 paragraph 13.back
[24] Section 25 was amended by the 1988 Act Schedule 3 paragraph 14.back
[25] Section 27 was substituted by the 1988 Act Schedule 3 paragraph 16.back
[26] Section 28 was amended by the 1988 Act Schedule 3 paragraph 17.back
[27] Section 30 was substituted by the 1988 Act Schedule 3 paragraph 19.back
[28] Section 33 was amended by the 1988 Act Schedule 3 paragraph 22.back
[29] Section 34 was amended by the 1988 Act Schedule 3 paragraph 23.back
[30] Section 35 was amended by the 1988 Act Schedule 3 paragraph 24.back
[31] Section 36(1A) was inserted by the 1988 Act Schedule 3 paragraph 26.back
[32] Section 37 was amended by the 1988 Act Schedule 3 paragraph 27.back
[33] Section 44 was amended by the 1988 Act Schedule 3 paragraph 31.back
[34] 1991 c. 9 (Isle of Man).back
[35] Paragraph 1 of Schedule 1 was amended by the Defence Contracts Act 1958 (c. 38) section 1; paragraphs 2 to 4 were amended by the 1988 Act Schedule 3 paragraph 37.back
[36] 1991 c. 8 (Isle of Man).back