Made | 27th July 2006 | ||
Laid before Parliament | 28th July 2006 | ||
Coming into force | 1st October 2006 |
1. | Citation and commencement |
2. | Interpretation |
3. | Forms |
4. | Applications |
5. | Formal requirements |
6. | Partial disclaimers |
7. | Convention applications |
8. | Substantive and formal examination of application |
9. | Representation of design for publication |
10. | Time limits under section 3(5) and section 3B |
11. | Publication |
12. | Extension of duration of right in registered design |
13. | Restoration of a lapsed right in a design under section 8A |
14. | Cancellation of registration |
15. | Procedure for applying for a declaration of invalidity |
16. | Evidence rounds |
17. | Decision of registrar on invalidity |
18. | Exercise of discretionary powers of registrar |
19. | General powers of registrar in relation to proceedings before him |
20. | Hearings in public |
21. | Evidence in proceedings before the registrar |
22. | Costs of proceedings |
23. | Security for costs |
24. | Registrar shall have the powers of official referee |
25. | Minimum notice of hearing |
26. | Certificate of registration |
27. | Registration of interests |
28. | Inspection of register, representations and specimens |
29. | Inspection of documents |
30. | Confidential information |
31. | Information about rights in registered designs |
32. | Copies of entries in, or extracts from, the register |
33. | Copies of representations and specimens |
34. | Alteration of name or address |
35. | Notice of rectification of the register |
36. | Agents |
37. | Appointing advisers |
38. | Correction of irregularities |
39. | Extension of times or periods prescribed by Rules |
40. | Interrupted days |
41. | Delays in communication services |
42. | Address for service |
43. | Failure to furnish an address for service |
44. | The journal |
45. | Hours of business |
46. | Excluded days |
47. | Transitional provisions and revocation |
SCHEDULE 1— | FORMS |
SCHEDULE 2— | TRANSITIONAL PROVISIONS |
SCHEDULE 3— | REVOCATIONS |
(2) Where a time or period has been altered under rules 19(1) or 39 to 41, any reference in these Rules to the time or period shall be construed as a reference to the time or period as altered.
Forms
3.
—(1) The forms of which the use is required by these Rules are those set out in Schedule 1.
(2) Such a requirement to use a form is satisfied by the use of a form which is acceptable to the registrar and contains the information required by the form as so set out.
the registrar shall notify that person accordingly.
(5) A representation or specimen filed under paragraph (1)(b) may be accompanied by a brief description of the design.
(6) A specimen may not be filed under paragraph (1)(b) if it is hazardous or perishable; and where such a specimen is so filed it shall be disregarded.
(7) An application for the registration of a design which is a repeating surface pattern shall only be treated as such if—
Formal requirements
5.
—(1) An application for the registration of a design shall comply with the first and second requirement.
(2) The first requirement is that the applicant has specified the product to which the design is intended to be applied or in which it is intended to be incorporated.
(3) The second requirement is that the dimensions of any specimen of the design filed under rule 4(1)(b)(ii) shall not exceed 29.7cm x 21cm x 1cm.
(4) Where the applicant files a representation of the design after being notified under rule 8(1) that the application does not comply with the second requirement—
(5) Nothing done to comply with the first requirement shall be taken to affect the scope of the protection conferred by the registration of a design.
(3) The applicant shall, before the end of the period of 3 months beginning with the date on which the application was filed, file at the Patent Office a copy of the representation of the design that was the subject of each convention application.
(4) A copy of the representation filed under paragraph (3) shall be—
(5) Paragraph (3) shall not apply where a copy of the convention application is kept at the Patent Office.
(6) Where any document relating to the convention application is in a language other than English or Welsh, the registrar may direct the applicant to provide a translation of the whole or any part of that document.
(7) The translation shall be filed before the end of the period of 3 months beginning with the date of the direction.
(8) Where the applicant—
the convention application shall be disregarded for the purposes of section 14(2).
(9) In this rule "convention application" means an application for the protection of a design which has been made in a convention country.
he shall notify the applicant accordingly.
(2) The notification shall include a statement of why it appears to the registrar that he should refuse to register the design (for the purposes of this rule the "statement of objections").
(3) The applicant may, before the end of the period of 2 months beginning with the date of the notification, send his written observations on the statement of objections to the registrar.
(4) The registrar shall give the applicant an opportunity to be heard.
(5) Where the registrar refuses to register a design included in an application, he shall send to the applicant the written reasons for his decision.
(6) The date on which the written reasons were sent to the applicant shall be deemed to be the date of the decision for the purposes of any appeal.
Representation of design for publication
9.
—(1) Where the registrar decides that he should not refuse to register the design for the reasons mentioned in rule 8(1)(a) or (b) and—
the registrar shall direct the applicant to provide a suitable representation.
(2) Where a direction is given, the applicant shall, before the end of the period of 3 months beginning with the date of the direction, file a suitable representation (otherwise the registrar may refuse to register the design: see section 3A(2)).
(3) Where a suitable representation has been filed, the applicant shall file his consent for its publication on Form DF2C.
(4) But paragraph (3) shall not apply where the applicant consented to publication in accordance with rule 4(3).
(5) In this rule "suitable representation" means a representation of the design which is suitable for publication.
Time limits under section 3(5) and section 3B
10.
—(1) The time prescribed for the purposes of section 3(5) shall be 12 months beginning with the date on which the application for registration of the design was made or treated as made (disregarding section 14).
(2) The period prescribed for the purposes of section 3B(3) shall be the period of 2 months beginning with the date on which the earlier application was modified under section 3B(3).
(2) The period prescribed for the purposes of section 8A(1) shall be the period of 12 months beginning with the date on which the registered design ceased to have effect.
(3) The notice of the application shall be published in the journal.
(4) Where, upon consideration of that evidence, the registrar is not satisfied that a case for an order under section 8A has been made out, he shall notify the applicant accordingly.
(5) The applicant may, before the end of the period of 1 month beginning with the date of that notification, request to be heard by the registrar.
(6) Where the applicant requests a hearing, the registrar shall give him an opportunity to be heard; after which the registrar shall determine whether the application under section 8A shall be granted or refused.
(7) Where the registrar decides not to make the order he shall give the applicant written reasons for his refusal.
Cancellation of registration
14.
A request under section 11 to cancel the registration of a design shall be made on Form DF19C.
(2) The statement of grounds shall include a concise statement of the facts and grounds on which the applicant relies and shall be verified by a statement of truth.
(3) The registrar shall send a copy of Form DF19A and the statement of case to the registered proprietor.
(4) The registrar shall specify a period within which the registered proprietor shall file a counter-statement.
(5) The registered proprietor, within that period, shall—
otherwise the registrar may treat him as not opposing the application.
(6) In his counter-statement the registered proprietor shall—
and it shall be verified by a statement of truth.
(7) In this Part—
Evidence rounds
16.
—(1) When the period specified under rule 15(4) has expired, the registrar shall specify the periods within which evidence may be filed by the parties.
(2) Where the applicant for a declaration of invalidity files no evidence (other than his statement of grounds) in support of his application, the registrar may treat him as having withdrawn his application.
(3) The registrar may, at any time if he thinks fit, give leave to either party to file evidence upon such terms as he thinks fit.
(4) Under this rule, evidence shall only be considered to be filed when—
(5) The registrar shall give the parties an opportunity to be heard.
(6) Where any party requests to be heard, the registrar shall send to the parties notice of a date for the hearing.
Decision of registrar on invalidity
17.
—(1) When the registrar has made a decision on the application for a declaration of invalidity, he shall send to the parties written notice of it, stating the reasons for his decision.
(2) The date on which the decision was sent to the applicant shall be deemed to be the date of the decision for the purposes of any appeal.
Exercise of discretionary powers of registrar
18.
The registrar shall give to any applicant for registration of a design an opportunity to be heard before exercising adversely to the applicant any discretion vested in the registrar by or under the Act.
General powers of registrar in relation to proceedings before him
19.
—(1) The registrar may extend or shorten (or further extend or shorten) any period which has been specified under any provision of this Part.
(2) At any stage of proceedings before him, the registrar may direct that the parties to the proceedings attend a case management conference or pre-hearing review.
(3) Except where the Act or these Rules otherwise provide, the registrar may give such directions as to the management of the proceedings as he thinks fit, and in particular he may—
(4) The registrar may control the evidence by giving directions as to—
and the registrar may use his power under this paragraph to exclude evidence which would otherwise be admissible.
(5) When the registrar gives directions under any provision of this Part, he may—
Hearings in public
20.
—(1) Subject to paragraphs (3) and (4), any hearing before the registrar of proceedings between two or more parties relating to an application for a registered design or a registered design, shall be held in public.
(2) Any party to the proceedings may apply to the registrar for the hearing to be held in private.
(3) The registrar shall only grant an application under paragraph (2) where—
and where the application is granted the hearing shall be in private.
(4) Any hearing of an application under paragraph (2) shall be held in private.
(5) In this rule a reference to a hearing includes any part of a hearing.
(6) Nothing in this rule shall prevent a member of the Council of Tribunals or of its Scottish Committee from attending a hearing.
Evidence in proceedings before the registrar
21.
—(1) Subject as follows, evidence filed under this Part may be given—
(2) A witness statement or a statement of case may only be given in evidence if it includes a statement of truth.
(3) The general rule is that evidence at hearings is to be by witness statement unless the registrar or any enactment requires otherwise.
(4) For the purposes of this Part, a statement of truth—
(5) In this Part, a witness statement is a written statement signed by a person that contains the evidence which that person would be allowed to give orally.
(2) The conditions are—
as defined in section 1(3) of the Civil Jurisdiction and Judgments Act 1982[3];
(b) the person is a company or other body (whether incorporated inside or outside the United Kingdom) and there is reason to believe that it will be unable to pay the other person's costs if ordered to do so;
(c) the person has changed his address since filing an address for service with a view to evading the consequences of the proceedings;
(d) the person has furnished an incorrect address for service;
(e) the person has taken steps in relation to his assets that would make it difficult to enforce an order for costs against him;
(f) the person has failed to pay a costs order in relation to previous proceedings before the registrar or a court (whether or not the proceedings were between the same parties).
(3) In default of such security being given the registrar may treat the application or appeal as abandoned.
Registrar shall have the powers of official referee
24.
The registrar shall have the powers of an official referee of the Supreme Court as regards—
but he shall have no power to punish summarily for contempt.
Minimum notice of hearing
25.
The registrar shall not give a person less than 14 days notice of any hearing under the Act.
(2) Any request by the registered proprietor for a copy of the certificate of registration shall—
(3) Before considering the request, the registrar may require the person making the request to provide such information or evidence as the registrar thinks fit.
Registration of interests
27.
—(1) The following matters are prescribed for the purposes of section 17(1)(c)—
(2) An application to the registrar to enter in the register a matter not mentioned in section 17(1)(a) or (b) or paragraph (1) shall be made in writing.
(3) An application under section 19(1) or (2) shall be made on Form DF12A.
(4) Where the registrar has doubts about whether he should enter a matter in the register—
(b) where that document was prepared by the registrar or the Patent Office for internal use only;
(c) where the document includes matter—
(3) Unless, in a particular case, the registrar otherwise directs, no document may be inspected —
(b) where it is treated as a confidential document (under rule 30).
(4) In this rule and rule 30 references to a document include part of a document.
Confidential information
30.
—(1) Where a person files a document at the Patent Office or sends it to the registrar or the Patent Office, any person may request that the document be treated as a confidential document.
(2) A request to treat a document as confidential shall—
(3) Where a request has been made under paragraph (1), the document shall be treated as confidential until the registrar refuses that request or makes a direction under paragraph (4).
(4) Where it appears that there is good reason for the document to remain confidential, the registrar may direct that the document shall be treated as a confidential document; otherwise he shall refuse the request made under paragraph (1).
(5) But, where the registrar believes there is no longer a good reason for the direction under paragraph (4) to remain in force, he shall revoke it.
Information about rights in registered designs
31.
—(1) A request for information under section 23 shall be made on Form DF21 and be accompanied by the prescribed fee.
(2) The request shall—
(2) A request under paragraph (1) shall in relation to an alteration to—
(3) Where the registrar has doubts about whether he should make the alteration to a name or address—
(4) Where the registrar has no doubts (or no longer has doubts) about whether he should make the alteration, it shall be entered in the register or made to the application or document.
Notice of rectification of the register
35.
—(1) The prescribed manner of giving notice to the registrar for the purposes of section 20(3) is by giving written notice.
(2) The prescribed manner of service on the registrar for the purposes of section 20(4) is by filing a copy of the order at the Patent Office.
(b) he has filed Form DF1A.
(3) Where an agent has been authorised under paragraph (1), the registrar may, if he thinks fit in any particular case, require the signature or presence of his principal.
Appointing advisers
37.
—(1) The registrar may appoint an adviser to assist him in any proceedings before him.
(2) The registrar shall settle any question or instructions to be submitted or given to the adviser.
as he may direct.
Extension of times or periods prescribed by Rules
39.
—(1) The registrar may, if he thinks fit, extend (or further extend) any time or period prescribed by these Rules, except the periods prescribed by—
(but those periods may be extended under rules 38, 40 and 41).
(2) Any extension under paragraph (1) shall be made—
as the registrar may direct.
(3) An extension may be granted under paragraph (1) notwithstanding that the time or period prescribed by the relevant rule has expired.
Interrupted days
40.
—(1) The registrar may certify any day as an interrupted day where—
(2) Any certificate of the registrar made under paragraph (1) shall be posted in the Patent Office and advertised in the journal.
(3) The registrar shall, where the time for doing anything under these Rules expires on an interrupted day, extend that time to the next following day not being an interrupted day (or an excluded day).
(4) In this rule—
Delays in communication services
41.
—(1) The registrar shall extend any time or period in these Rules where he is satisfied that the failure to do something under these Rules was wholly or mainly attributed to a delay in, or failure of, a communication service.
(2) Any extension under paragraph (1) shall be—
as the registrar may direct.
(3) In this rule "communication service" means a service by which documents may be sent and delivered and includes post, electronic communications and courier.
(2) The proprietor of a registered design, or any person who has registered any interest in a registered design, may furnish an address for service on Form DF1A.
(3) Where a person has furnished an address for service under paragraph (1) or (2), he may substitute a new address for service by notifying the registrar on Form DF1A.
(4) An address for service furnished under paragraph (1)(a) or (2) shall be an address in the United Kingdom, another EEA State or the Channel Islands.
(5) An address for service furnished under paragraph (1)(b) or (c) shall be an address in the United Kingdom, unless in a particular case the registrar otherwise directs.
(6) In this rule "EEA State" means a member State, Iceland, Liechtenstein or Norway.
Failure to furnish an address for service
43.
—(1) Where—
the registrar shall direct that person to furnish an address for service.
(2) Where a direction has been given under paragraph (1), the person directed shall, before the end of the period of 2 months beginning with the date of the direction, furnish an address for service.
(3) Paragraph (4) applies where—
and the person has failed to furnish an address for service.
(4) Where this paragraph applies—
(5) In this rule an "address for service" means an address which complies with the requirements of rule 42(4) or (5).
(2) In these Rules "the journal" means the journal published under paragraph (1).
Hours of business
45.
—(1) For the transaction of relevant business by the public the Patent Office shall be open—
(2) For the transaction of all other business by the public under the Act the Patent Office shall be open between 9.00am and 5.00pm.
(3) In this Part "relevant business" means the filing of any application or other document except—
Excluded days
46.
—(1) The following shall be excluded days for the transaction by the public of business under the Act—
(2) A Saturday shall be an excluded day for the transaction by the public of business under the Act, except relevant business (see rule 45(1)).
Transitional provisions and revocation
47.
—(1) Schedule 2 (transitional provisions) shall have effect.
(2) The instruments set out in Schedule 3 (revocations) are revoked to the extent specified.
Sainsbury of Turville
Parliamentary Under Secretary of State for Science and Innovation Department of Trade and Industry
27th July 2006
Form number | Title | Rule |
DF1A | Appointment or change of agent or contact address | 36 and 42 |
DF2A | Application to register one or more designs | 4 |
DF2B | Application to register one or more designs divided from an earlier application | 4 |
DF2C | Application to publish one or more designs | 9 |
DF9A | Renewal of design registration | 12 |
DF12A | Application to record a change of ownership or to record or cancel a licence or security | 27 |
DF16A | Change of proprietor's name or address | 34 |
DF19A | Request to invalidate a design registration | 15 |
DF19B | Notice of counter-statement | 15 |
DF19C | Notice by proprietor to cancel a registration | 14 |
DF21 | Request for a search of the UK designs register | 31 |
DF23 | Request for a Certified Copy | 32 |
DF29 | Request to restore a registration | 13 |
Statement of objections
2.
Where—
the objections shall be treated as the "statement of objections" under rule 8 of these Rules and the date on which the objections were sent shall be treated as the date on which the applicant was notified under rule 8(1).
Period prescribed for the purposes of section 3B(3)
3.
Where—
the period prescribed for the purposes of section 3B(3) shall be that mentioned in rule 36A of the old Rules.
Publication
4.
Rules 9 and 11 shall not apply where the application for registration of a design under the Act was made before these Rules come into force.
Restoration
5.
An application made in accordance with rule 41(2) of the old Rules shall be treated as made in accordance with rule 13(1) of these Rules.
Inspection of register
6.
Where the amendments made to section 22, by article 16(2)(b) and (3) of the RRO, do not apply to a registration under the Act (by reason of article 19 of the RRO), rule 69 of the old Rules shall continue to have effect in relation to that registration.
Inspection of documents
7.
Rules 29 and 30 shall not apply to any document filed at the Patent Office before these Rules come into force.
Requests for certified copies
8.
A request under rule 72 of the old Rules for a certified copy of any representation, specimen or document kept at the Patent Office shall be treated as an application under rule 33(1) of these Rules.
Invalidity proceedings
9.
—(1) The time the registrar allowed under rule 53 of the old Rules for the filing of the counter-statement shall be treated as the period specified under rule 15(4) of these Rules.
(2) Where—
the registrar shall, within 28 days of these Rules coming into force, specify the periods within which any evidence may be filed, in accordance with rule 16(1).
Meaning of applied industrially
12.
For the purposes of section 6 of the old Act, the circumstances in which a design shall be regarded as "applied industrially" are—
Applications under section 11(2) of old Act
13.
—(1) Part 4 of these Rules applies to an application under section 11(2) of the old Act for the cancellation of registration as it applies to an application for a declaration of invalidity under section 11ZB of the Act.
(2) Where an application is made under section 11(2) of the old Act, any reference in rule 15(1) to an application for a declaration of invalidity under section 11ZB of the Act shall be construed as a reference to an application under the relevant provision of the old Act.
(3) For the purposes of rule 23(1), an application under section 11(2) of the old Act shall be treated as if it were mentioned in section 30(3) of the Act.
Title and number | Extent of revocation |
Registered Designs Rules 1995 (SI 1995/2912) | The whole rules. |
Registered Designs (Amendment) Rules 1999 (SI 1999/3196) | The whole rules. |
Registered Designs (Amendment) Rules 2001 (SI 2001/3950) | The whole rules. |
Patents, Trade Marks and Designs (Address For Service, etc) Rules 2006 (SI 2006/760) | Rules 10 to 14. |
Trade Marks and Designs (Address For Service) (Amendment) Rules 2006 (2006/1029) | Rule 2. |
[5] SI 1995/ 2912, amended by SI 1999/3196, 2001/3950, 2006/760 and 2006/1029.back