Guidance On Changes To Design Legislation

On 1 October 2005 the Community Designs Regulations 2005 (the Regulations) came into force. This has introduced various changes in order to ensure the compatibility of the UK and the European systems.

These changes affect to the following areas:

Groundless threats of infringement of a Community design in the UK

In so far the UK legislation provided remedies for the person who was aggrieved by groundless threats made by another, when the threat was unfounded and with the only purpose of preventing the addressee from trading normally.

This only applied to the situation in which the threat was made in relation to a UK registered or unregistered design. With the new changes in the Regulations, this remedy will be available also when the groundless threat of infringement is done in relation to Community Designs.

False claims in the UK that a design is protected as a Community Design

Section 35 of the Registered Designs Act 1949 makes it an offence to falsely claim that a design is registered.

The goal of this provision is, again, to deter competitors from falsely alleging that there is protection on an area where in fact there is no protection, the purpose of which being to gain an advantage in the market by decreasing the competition.

With the new changes operated by the Regulations, new and equivalent offences for false claims regarding Community Registered Designs in UK will be actionable.Â

Privilege of communication with professional representatives

The Copyright, Designs and Patents Act 1988 (section 280) and the Trade Marks Act 1994 (section 87) provide that communications between an intellectual property practitioner and his client will be privileged and confidential.

The Community Design Regulation (article 78) extend this privilege to any “professional design representative” (being lawyer or not) acting before OHIM on Trade Mark matters.

Crown use of community designs

To meet the UK legislation in relation to registered and unregistered designs, the Regulations set out provisions to allow Crown use of a Community Design.

Sections 240, 244 and 252 of the Copyright, Designs and Patents Act 1988 and the First Schedule of the Registered Designs Act 1949 allow the Crown use of a design to the extent that use of the design is necessary for essential defence or security reasons.

Similar provisions are now included by the Regulations concerning community designs.

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