Changes in Recent Years to Designs Legislation.

On 1 October 2005, the Community Designs Regulations 2005 (the “Regulations”) came into force. This made various changes to simplify UK designs legislation by ensuring compatibility of the UK and European Community designs systems.

The changes occurred in four areas, as follows: groundless threats of infringement of a Community design in the UK false claims in the UK that a design is protected as a Community Design privilege of communications with professional representatives and crown use of Community Designs.

In each case the changes introduced equivalent provisions for Community Registered and Unregistered Designs to those which existed for UK registered designs. In this way the UK and Community systems now operate consistently as far as possible.

Threats of infringement: There exist provisions for UK registered and unregistered designs which provide a remedy for any persons who are aggrieved by groundless threats being made to bring infringement proceedings in relation to UK registered designs. The Regulations provide an equivalent remedy when such acts are done in the UK in relation to Community Designs (registered or unregistered).

False claims of protection: Section 35 of the Registered Designs Act 1949 makes it an offence to falsely claim that a design is registered. This protects competitors from unfairly being warded off from competition in an area where there is in fact no protection. The Regulations introduced equivalent offences for false claims regarding Community Registered Designs as apply to UK registered designs. The Regulations also amended Section 35 to provide a defence to an accusation of false claims where reference is being made to a design registered outside the UK (i.e. a Community Registered Design).

Communications with professional representatives: In general communications between a person and a recognised intellectual property practitioner (registered patent agent or registered trade mark agent) as to any matter relating to the protection of a design (and various other IP-related matters) are privileged.

The Community Design Regulation (in Article 78) recognised a new group of people who are entitled to practice before OHIM in matters relating to designs. In most cases communications with these people in respect of matters relating to the protection of designs will be privileged anyway because of their status as a patent agent, trade mark agent or representative before OHIM on Trade Mark matters. Nevertheless, it is possible for people to qualify for this status without being in any of the other categories and privilege should apply then also.

The Regulations explicitly included those on the list referred to in Article 78 of the EC Regulation on Community Designs (6/2002) as being “professional design representatives” so that they can benefit from privileged communications.

Crown use: Although the Crown use provisions for designs are used rarely, they are important to meet essential defence and security needs. The Regulations set out provisions to allow Crown use of a Community Design to the extent that use of the design is necessary for essential defence or security needs. Similar provisions are applied to UK unregistered designs under sections 240 to 244 and section 252 of the Copyright, Designs and Patents Act 1988 (c. 48) and to UK registered designs in accordance with the First Schedule to the Registered Designs Act 1949 (c. 88).

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