Industrial Designs Act, 2001

Industrial Designs Act, 2001 Skip to content Disclaimer Feedback Helpdesk Gaeilge Léim go dtí an t-ábhar Séanadh Aiseolas Deasc chabhrach English Gaeilge English Produced by the Office of the Attorney General Táirgthe ag Oifig an Ard-Aighne Home Legislation Acts of the Oireachtas Statutory Instruments Pre-1922 Legislation Constitution External Resources Bills (Houses of the Oireachtas) Iris Oifigiúil / Official Gazette Revised Acts (LRC) Classified List of Legislation (LRC) Translations (acts.ie) Translations (Houses of the Oireachtas) Government Publications for Sale EU Law (EUR-Lex) FAQ Disclaimer Feedback Helpdesk Search Baile Reachtaíocht Achtanna an Oireachtais Ionstraimí Reachtúla Reachtaíocht Réamh-1922 Bunreacht Acmhainní Seachtracha Billí (Tithe an Oireachtais) Iris Oifigiúil Achtanna Athbhreithnithe (CAD) (An Coimisiún um Athchóiriú an Dlí) Liosta Rangaithe Reachtaíochta Aistriúcháin (achtanna.ie) Aistriúcháin (Tithe an Oireachtais) Foilseacháin Rialtais ar Díol Dlí AE (EUR-Lex) CCanna (Ceisteanna Coitianta) Séanadh Aiseolas Deasc chabhrach Cuardach TitleTeideal Year(s) or rangeBliain nó blianta nó raon TypeCineál All Legislation Acts Statutory Instruments Advanced SearchCuardach Casta HomeBaile ActsAchtanna 2001 Industrial Designs Act, 2001 Industrial Designs Act, 2001 Permanent Page URL View by SectionAmharc de réir Ailt View Full ActAmharc ar an Acht Iomlán Bill History Stair Bille Commencement, Amendments, SIs made under the Act Tosach Feidhme, Leasuithe, IRí arna ndéanamh faoin Acht Open PDFOscail PDF Print Full ActPriontáil an tAcht Iomlán Number 39 of 2001 INDUSTRIAL DESIGNS ACT, 2001 ARRANGEMENT OF SECTIONS PART 1 Preliminary and General Section 1. Short title and commencement. 2. Interpretation. 3. Expenses. 4. Transitional provisions and repeals. 5. Prosecution of offences. 6. Offences by bodies corporate. 7. Offences by members of partnership. 8. Service of notices. 9. Fees. 10. Laying of regulations before Houses of Oireachtas. PART 2 Design Registration Chapter 1 Registrable Designs 11. Registrable design. 12. Novelty. 13. Individual character. 14. Protection requirements. 15. Conflict with prior design. 16. Designs dictated by their technical function and designs of interconnections. Chapter 2 Authorship and Ownership of Designs 17. Ownership of designs. 18. Joint ownership of designs. 19. Treatment of author of design. Chapter 3 Proceedings for Registration 20. Application in prescribed form. 21. Power of Controller to refuse registration. 22. Application for registration of design as a property right. 23. Deemed abandonment of applications. 24. Classification. 25. Filing date. 26. Priority right. 27. Claiming priority. 28. Effect of priority right. 29. Date of registration. Chapter 4 Register of Designs 30. Register of designs. 31. Certificate of registration. 32. Publication of registration and deferment of publication. 33. Right to apply to court for rectification of register. 34. Right to apply to Controller for rectification of register. 35. Effect of rectification of register. 36. Adaptation of entries to new classification. 37. Power of Controller to correct errors. 38. Inspection of designs register. 39. Right to information. 40. Information as to existence of right in registered design. 41. Registration and publication of assignments, licences, etc. Chapter 5 Effect of Registration 42. Design right. 43. Duration of protection. 44. Restoration of design right. 45. Effect of order for restoration of design right. 46. Surrender of design right. 47. Invalidation of registration. Chapter 6 Exceptions to Design Right Protection 48. Acts permitted. 49. Compulsory licences. 50. Prior use. Chapter 7 Infringement of Design Right 51. Infringement of design right. 52. Secondary infringement of design right. 53. Secondary infringement: providing means for infringement. 54. Meaning of infringing product and article. Chapter 8 Remedies 55. Certificate of contested validity of registration. 56. Groundless threats. 57. Infringement actionable by registered proprietor. 58. Innocent infringement. 59. Award of damages in infringement action. 60. Undertakings concerning licences of right. 61. Order for delivery up in civil cases. 62. Application to District Court for seizure of infringing products or articles. Chapter 9 Rights and Remedies of Exclusive Licensees 63. Rights and remedies of exclusive licensees. 64. Exercise of concurrent rights. Chapter 10 Rights and Remedies of Licensees 65. Rights and remedies of licensees. Chapter 11 Offences 66. Offences. 67. Falsification of register. 68. False representation. 69. Order for delivery up in criminal proceedings. 70. Search and seizure in criminal cases. Chapter 12 Delivery Up and Disposal 71. Period after which remedy of delivery up is not available. 72. Order as to disposal of infringing product or article. Chapter 13 Provision for Preventing Importation 73. Infringing products or articles may be treated as prohibited goods. 74. Power of Revenue Commissioners to make regulations. Chapter 14 Exhaustion of Design Right 75. Exhaustion of design right. Chapter 15 Assignment and Licensing 76. Assignment. 77. Exclusive licences. 78. Licensing of registered designs. Chapter 16 International Arrangements 79. Geneva Act of the Hague Agreement. Chapter 17 Proceedings before the Controller or the Courts 80. Exercise of discretionary powers of Controller. 81. Costs and security for costs. 82. Evidence before the Controller. 83. Costs of Controller in proceedings. 84. Appeals. Chapter 18 Miscellaneous 85. Power of Minister to make regulations. 86. Rights of State in respect of registered designs. 87. Privileged communications. 88. Recognition of agents. 89. Amendment to Copyright and Related Rights Act, 2000. FIRST SCHEDULE Transitional Provisions SECOND SCHEDULE Repeals Acts Referred to Companies Acts, 1963 to 1999 Copyright Act, 1963 1963, No. 10 Copyright and Related Rights Act, 2000 2000, No. 28 Customs Acts Industrial and Commercial Property (Protection) Acts, 1927 to 1958 Industrial and Commercial Property (Protection) Act, 1927 1927, No. 16 Industrial and Commercial Property (Protection) (Amendment) Act, 1929 1929, No. 13 Industrial and Commercial Property (Protection) (Neuchatel Agreement) Act, 1947 1947, No. 45 Industrial and Commercial Property (Protection) (Amendment) Act, 1949 1949, No. 32 Industrial and Commercial Property (Protection) (Amendment) Act, 1957 1957, No. 13 Industrial and Commercial Property (Protection) (Amendment) Act, 1958 1958, No. 21 Local Government Act, 1941 1941, No. 23 Patents Act, 1992 1992, No. 1 Petty Sessions (Ireland) Act, 1851 1851, c. 93 Public Offices Fees Act, 1879 1879, c. 58 Solicitors Act, 1954 1954, No. 36 Statute of Limitations, 1957 1957, No. 6 Trade Marks Act, 1996 1996, No. 6 Number 39 of 2001 INDUSTRIAL DESIGNS ACT, 2001 AN ACT TO MAKE PROVISION FOR THE PROTECTION OF DESIGNS, TO GIVE EFFECT TO DIRECTIVE 98/71/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL OF 13 OCTOBER 19981 ON THE LEGAL PROTECTION OF DESIGNS, TO GIVE EFFECT TO THE GENEVA ACT OF THE HAGUE AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS ADOPTED AT GENEVA ON 2 JULY, 1999, AND TO PROVIDE FOR RELATED MATTERS. [27th November, 2001] BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS: PART 1 Preliminary and General Short title and commencement. 1.—(1) This Act may be cited as the Industrial Designs Act, 2001. (2) This Act shall come into operation on such day or days as the Minister may by order or orders either generally or with reference to any particular purpose appoint, and different days may be so appointed for different purposes or different provisions of this Act. Interpretation. 2.—(1) In this Act— “Agreement establishing the World Trade Organisation” means the Agreement establishing the World Trade Organisation signed at Marrakesh on the 15th day of April, 1994; “appropriate court” means— (a) the District Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the District Court for actions in contract or tort, (b) the Circuit Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the Circuit Court for actions in contract or tort, and (c) in any other case, the High Court; “author” has the meaning assigned to it by section 17 ; “complex product” means a product which is composed of multiple components which can be replaced permitting disassembly and reassembly of the product; “computer-generated” has the meaning assigned to it by section 17 ; “Controller” means the Controller of Patents, Designs and Trade Marks; “Convention” means the Paris Convention for the Protection of Industrial Property of March 20th 1883, as amended or supplemented by any protocol to that Convention which is for the time being in force in the State; “Convention country” means a country, territory, state or area, which is a party to the Convention, other than the State; “Council Directive” means Directive No. 98/71/EC of the European Parliament and of the Council of 13 October 19981 on the legal protection of designs; “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colour, shape, texture or materials of the product itself or its ornamentation; “design of joint authorship” has the meaning assigned to it by section 18 ; “design right” shall be construed in accordance with section 42 ; “disability” has the same meaning as in section 48 of the Statute of Limitations, 1957; “filing date” shall be construed in accordance with section 25 ; “infringing article” has the meaning assigned to it by section 54 ; “infringing product” has the meaning assigned to it by section 54 ; “made available to the public” means published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within a Member State of the EEA; “member of the World Trade Organisation” means a party to the Agreement establishing the World Trade Organisation; “Member State of the EEA” means a state which is a contracting party to the Agreement on the European Economic Area signed at Oporto on 2 May 1992, as adjusted by the Protocol signed at Brussels on 17 March 1993 and as amended from time to time; “Minister” means the Minister for Enterprise, Trade and Employment; “prescribed” means prescribed by regulations made by the Minister; “product” means any industrial or handicraft item, including parts intended to be assembled into a complex product, packaging, getup, graphic symbols and typographical typefaces, but not including computer programs; “Register” has the meaning assigned to it by section 30 ; “World Trade Organisation” means the Organisation established under the Agreement establishing the World Trade Organisation signed at Marrakesh on the 15th day of April 1994. (2) In this Act, a reference to a section, Part or Schedule, is a reference to a section or Part of, or Schedule to this Act, unless there is an indication that a reference to any other enactment is intended or otherwise indicated. (3) In this Act, a reference to a subsection, paragraph or subparagraph is a reference to the subsection, paragraph or subparagraph of the provision in which the reference occurs, unless there is an indication that a reference to some other provision is intended. (4) A word or expression that is used in this Act and is also used in the Council Directive has, unless the contrary intention appears, the meaning in this Act that it has in the Council Directive. (5) In construing a provision of this Act, a court shall give to it a construction that will give effect to the Council Directive, and for this purpose a court shall have regard to the provisions of the Council Directive, including the preambles. (6) In this Act, a reference to any enactment shall be construed as a reference to that enactment as amended or adapted by or under any subsequent enactment. (7) A design shall not be deemed to have been made available to the public— (a) for the sole reason that it has been disclosed to another person under explicit or implicit conditions of confidentiality, (b) where it is made available less than one year before the filing date or, where priority is claimed, the date of priority, by a person as a result of information provided or action taken by the author or his or her successor in title, or (c) where a design has been made available to the public without the authorisation of the author or his or her successor in title. Expenses. 3.—The expenses incurred by the Minister in the administration of this Act shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas. Transitional provisions and repeals. 4.—(1) The First Schedule shall have effect with respect to transitional matters. (2) Subject to subsection (1), the Acts mentioned in column (2) of Part 1 of the Second Schedule are hereby repealed to the extent mentioned in column (3) of that Schedule. Prosecution of offences. 5.—Notwithstanding the provisions of section 10(4) of the Petty Sessions (Ireland) Act, 1851 , summary proceedings for an offence under this Act may be commenced at any time within 12 months from the date on which the offence was committed. Offences by bodies corporate. 6.—Where an offence under this Act is committed by a body corporate and is proved to have been so committed with the consent, connivance or approval of or to be attributable to any neglect on the part of a person being a director, manager, secretary or other officer of the body corporate, or any other person who was acting or purporting to act in any such capacity, that person as well as the body corporate shall be guilty of an offence and be liable to be proceeded against and punished as if he or she were guilty of the first-mentioned offence. Offences by members of partnership. 7.—(1) Without prejudice to any liability of a partner under subsection (3), where an offence under this Act is committed by a partnership, any proceedings shall be brought against the partnership in the name of the partnership and not in the name of the individual partner. (2) A fine imposed on a partnership on its conviction in proceedings brought under subsection (1) shall be paid out of the assets of the partnership. (3) Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent commission of the offence, shall also be guilty of the offence and shall be liable to be proceeded against and punished accordingly. Service of notices. 8.—(1) A notice required to be served or given under this Act shall, subject to subsection (2), be addressed to the person concerned by name, and may be served on or given to the person in one of the following ways— (a) by delivering it to the person, (b) by leaving it at the address at which the person ordinarily resides or, in a case in which an address for service has been furnished, at that address, (c) by sending it by post in a prepaid letter to the address at which the person ordinarily resides or, in a case in which an address for service has been furnished, to that address, (d) where the address at which the person ordinarily resides cannot be ascertained by reasonable enquiry and notice is required to be served on, or given to, him or her in respect of any premises, by delivering it to a person over the age of 16 years of age resident in or employed at the premises or by affixing it in a conspicuous position on or near the premises, and (e) by sending it by such other method (including electronic method) as may be prescribed. (2) Where a notice under this Act is to be served on or given to a person who is the owner or occupier of any premises and the name of the person cannot be ascertained by reasonable enquiry, it may be addressed to the person by using the words “the owner” or, as the case may require, “the occupier”. (3) For the purposes of this section, a company within the meaning of the Companies Acts, 1963 to 1999, shall be deemed to be ordinarily resident at its registered office, and every other body corporate, unincorporated body or person, including a partnership, shall be deemed to be ordinarily resident at its principal office or place of business. (4) A person shall not at any time during the period of 3 months after a notice is affixed under subsection (1)(d) remove, alter, damage or deface the notice without lawful authority. (5) A person who contravenes subsection (4) shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding €1,905 (£1,500). Fees. 9.—(1) There shall be charged by the Controller, and paid in respect of registration of designs and applications therefor and in respect of other matters arising under this Act, such fees as may from time to time be prescribed by the Minister with the consent of the Minister for Finance. (2) Provision may be made by rules to enable the payment of a single fee in respect of two or more matters. (3) All fees charged by the Controller shall be collected and accounted for in such manner as shall be determined by the Minister with the consent of the Minister for Finance. (4) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under this section. Laying of regulations before Houses of Oireachtas. 10.—(1) Subject to subsection (2), every regulation made under this Act shall be laid before each House of the Oireachtas as soon as may be after it is made and, if a resolution annulling the regulation is passed by either such House within the next 21 days on which that House has sat after the regulation is laid before it, the regulation shall be annulled accordingly, but without prejudice to the validity of anything previously done thereunder. (2) Where a regulation is proposed to be made under section 79 , subsection (1) of this section shall not apply and a draft of a regulation to be made under that section shall be laid before both Houses of the Oireachtas, and the regulation shall not be made until a resolution approving the draft has been passed by each House. PART 2 Design Registration Chapter 1 Registrable Designs Registrable design. 11.—(1) A design that is new and has individual character shall be registrable under this Act. (2) A design shall not be registrable under this Act if the applicant for registration of the design is not the proprietor of the design. Novelty. 12.—(1) A design shall be considered to be new where no design identical to it has been previously made available to the public before the filing date for registration or, where priority is claimed, the date of priority. (2) A design shall be deemed to be identical to a design which has been previously made available to the public where its features differ only in immaterial details. Individual character. 13.—(1) A design shall be deemed to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by a design which has been made available to the public before the filing date of the application for registration or, where priority is claimed, the date of priority. (2) In assessing individual character, the degree of freedom of the author of the design in developing the design shall be taken into consideration. Protection requirements. 14.—(1) 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— (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the complex product, and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character under sections 12 and 13. (2) In this section “normal use” means use by the end user, excluding maintenance, servicing or repair work. Conflict with prior design. 15.—(1) A design which is in conflict with a prior design shall not be registrable under this Act. (2) In this section “prior design” means a design which has been made available to the public after the filing date of the application for registration of another design, or where priority is claimed, after the date of priority of that other design, and which is protected from a date prior to the said filing date or, as the case may be, the said priority date by a design right under this Act or by an application for such a right. Designs dictated by their technical function and designs of interconnections. 16.—(1) The features of appearance of a product which are solely dictated by its technical function shall not be registrable under this Act. (2) The features of appearance of a product which are necessarily reproduced in their exact form and dimensions in order 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 shall not be registrable under this Act. (3) Notwithstanding subsection (2), and subject to compliance with sections 12 and 13, a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system shall be registrable under this Act. Chapter 2 Authorship and Ownership of Designs Ownership of designs. 17.—(1) In this Act, the “author” in relation to a design means the person who creates the design. (2) In the case of a design which is computer-generated, “author” means the person by whom the arrangements necessary for the creation of the design are undertaken. (3) In this Act, “computer-generated”, in relation to a design, means that the design is generated by computer in circumstances where the author of the design is not an individual. Joint ownership of designs. 18.—(1) In this Act, “design of joint authorship” means a design produced by two or more authors in which the contribution of each author is not distinct from that of the other author or authors. (2) References in this Act to the author of a design shall, unless otherwise provided, be construed in relation to a design of joint authorship as references to all the authors of the design. (3) Where a right conferred by this Act (or any aspect of such right) is owned by more than one person jointly, references in this Act to registered proprietor are to all the owners, and any requirement of the licence of the registered proprietor requires the licence of all the owners. Treatment of author of design. 19.—(1) The author of a design shall be treated as the first proprietor of the design unless the design is created by an employee in the course of employment, in which case the employer is the first proprietor of the design, subject to any agreement to the contrary. (2) Where a design becomes vested, whether by assignment, transmission or operation of law, in any person other than the first proprietor either alone or jointly with the first proprietor, that other person, or as the case may be, the first proprietor and that other person shall be treated as the proprietor of the design. (3) Where the first proprietor of a design is not the author of the design, the author shall have the right to be cited as the author in the application for registration and in the Register. Chapter 3 Proceedings for Registration Application in prescribed form. 20.—(1) A person claiming to be the proprietor of a registrable design may apply in the prescribed form and manner to the Controller for registration of the design under this Act. (2) Subject to subsections (3) and (4), an application under subsection (1) may be amended, at the request of the applicant and with the approval of the Controller, at any time prior to registration. (3) An amendment to an application for registration of a design under this section shall not be approved of by the Controller if the amendment affects the identity of the design. (4) Where an amendment to an application for the registration of a design under this section is made the filing date of the application shall be retained. Power of Controller to refuse registration. 21.—(1) The Controller may refuse an application for the registration of a design— (a) where the design is contrary to public policy or to accepted principles of morality, (b) on the application of the copyright owner or on the initiative of the Controller, where the design constitutes an infringement of a copyright work under the Copyright and Related Rights Act, 2000 , or (c) on the application of the person concerned by the use or on the initiative of the Controller, where the design consists of or includes any thing which would not be registered by virtue of section 9, 62 or 63 of the Trade Marks Act, 1996 . (2) Where an application for the registration of a design has been refused under subsection (1), the Controller may register the design in an amended form, where that form complies with the requirements for registration under this Act and the identity of the design is retained. (3) Where an amendment to an application for the registration of a design under this section is made the filing date of the application shall be retained. Application for registration of design as a property right. 22.—(1) An application for the registration of a design shall be personal property. (2) Sections 18, 41, 76, 77 and 78 shall apply, with the necessary modifications, in relation to an application for the registration of a design as they apply in relation to a design right. (3) In section 41 insofar as it applies in relation to a transaction affecting an application for the registration of a design, the references to the entry of particulars in the Register, and to the making of an application to register particulars, shall be construed as references to the giving of notice to the Controller of those particulars. (4) The Minister shall prescribe a procedure to be followed subsequent to the giving of the notice specified in subsection (3). Deemed abandonment of applications. 23.—An application which, owing to any fault or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within such time as may be prescribed, shall be deemed to be abandoned. Classification. 24.—(1) A design shall be classified for the purposes of registration according to a prescribed system of classification. (2) Any question arising as to the class within which a design falls shall be determined by the Controller, whose decision shall be final and not appealable. Filing date. 25.—The filing date of an application for registration of a design shall be the date on which the applicant pays the prescribed filing fee and files at the Patents Office documents which contain in the prescribed form— (a) a request for registration of the design, (b) a representation of the design suitable for reproduction, and (c) the name and address of the applicant. Priority right. 26.—(1) A person or his or her successor in title who has filed an application for registration of a design in, or in respect of, a Convention country or a member of the World Trade Organisation shall enjoy, for the purpose of registering the same design under this Act, a right of priority for the period of 6 months after the filing date of the first application, subject to compliance with any conditions as may be prescribed by the Minister. (2) Every filing referred to in subsection (1) that is equivalent to a regular national filing under the national law of the state, country, territory or area, where it was made (including the State), or under a bilateral or multilateral agreement to which the State and that state, country, territory or area is a party, shall be recognised as giving rise to a right of priority. (3) In this section “regular national filing” means any filing of an application for registration of a design in, or in respect of, a Convention country or a member of the World Trade Organisation that establishes the date on which the application was filed, whatever the outcome of the application may be. (4) An application for the registration of a design that was the subject of a previous application, and that is filed in or in respect of the same Convention country or member of the World Trade Organisation, shall be considered as the first application for the purpose of determining priority where, and only where, on the filing date of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. (5) Where the first filing has been made in a country, territory, state or area which is not a party to the Convention or is not a member of the World Trade Organisation, subsections (1) to (4) shall apply where the Government makes an order to that effect under this subsection consequent upon bilateral or multilateral agreements under which the State grants, on the basis of a first filing made in or for that country, territory, state or area and subject to conditions equivalent to those laid down in the Convention or in the Agreement establishing the World Trade Organisation, a right of priority having equivalent effect. (6) A right of priority arising as a result of an application under the Convention, the Agreement establishing the World Trade Organisation or under a bilateral or multilateral agreement referred to in subsection (5) may be assigned or otherwise transmitted, either with the application or independently and the reference in subsection (1) to the successor in title of the applicant shall be construed accordingly. Claiming priority. 27.—(1) An applicant shall file a claim for right of priority in the prescribed manner. (2) A right of priority shall only be granted to applicants who apply in accordance with regulations made under subsection (1). Effect of priority right. 28.—(1) A right of priority shall have the effect that the filing date of the application claimed under section 27 shall be regarded as being the filing date of the application for registration under this Act. (2) Where an application for the registration of a design is filed under this Act and the priority of a previous application is claimed under section 27 then, notwithstanding any other provision of this Act, the application shall not be refused and the registration of the design under this Act shall not be invalidated by reason only of the fact that the previous application has been made available to the public at any time after the filing date of the previous application. Date of registration. 29.—A design shall be registered with effect from the filing date of the application for registration. Chapter 4 Register of Designs Register of designs. 30.—(1) The Controller may register designs in accordance with this Act and shall maintain, in the prescribed form, a register of designs, in this Act referred to as the “Register”. (2) There shall be entered in the Register— (a) the names and addresses of proprietors of registered designs; (b) notices of assignments and transmissions of registered designs; and (c) such other matters relating to registered designs as may be prescribed by the Minister or as the Controller may think fit. (3) The Register shall be prima facie evidence of any matters required or authorised by or under this Act to be entered therein. (4) No notice of any trust, whether express, implied or constructive, shall be entered in the Register, and the Controller shall not be affected by any such notice. (5) A certificate purporting to be signed by the Controller and certifying that an entry which he or she is authorised by or under this Act to make in the Register has or has not been made, or that any other thing which he or she is so authorised to do has or has not been done, shall be prima facie evidence of the matters so certified. (6) Nothing in subsection (3) shall oblige the Controller to satisfy himself or herself of the matters referred to in that subsection when considering an application for registration under this Act. Certificate of registration. 31.—(1) On the registration of a design under this Act, the Controller shall issue to the registered proprietor a certificate of registration in the prescribed form. (2) The Controller may, where he or she is satisfied that the certificate of registration has been lost or destroyed, or in any other case in which he or she thinks it expedient, furnish one or more copies of the certificate. Publication of registration and deferment of publication. 32.—(1) The Controller shall, subject to subsection (2), as soon as practicable after a design has been registered, publish in the prescribed form a notice of the registration in the Patents Office Journal. (2) When filing an application for registration of a design an applicant may request that the publication of the registered design under subsection (1) be deferred for such period as may be prescribed by the Minister and the Controller shall comply with such request. Right to apply to court for rectification of register. 33.—(1) An aggrieved person may apply to the High Court for an order for the rectification of the Register by the making of an entry in the Register or the variation or deletion of an entry in the Register. (2) For the purposes of this Act “a rectification of the Register” under this section shall include— (a) entering any change in the name or address of a person who is entered on the Register, or (b) entering a disclaimer or memorandum on the Register relating to a registered design which does not in any way extend the rights given by the existing registration of such design. (3) The High Court may, in proceedings under this section, decide any question that it may be necessary or expedient to decide in connection with the rectification of the Register. (4) Notice of an application under this section shall be given in the prescribed manner to the Controller and the Controller shall be entitled to appear and be heard by the High Court, and shall appear if so directed by the High Court in any hearing held for the purposes of this section. (5) Unless otherwise directed by the High Court, the Controller may, in lieu of appearing and being heard by the High Court, submit to the High Court a statement in writing, signed by him or her, giving particulars of: (a) the proceedings before him or her in relation to the matter in issue, (b) the grounds of any decision given by him or her, (c) the practice of the Patents Office in like cases, if any, and (d) such matters relevant to the issues and within his or her knowledge as Controller as he or she thinks fit, and that statement shall be deemed to form part of the evidence in the proceedings. (6) An order made by the High Court for the rectification of the Register shall direct that notice of the order shall be served on the Controller in the prescribed manner, and on receipt of such notice the Controller shall rectify the Register in accordance with the terms of the order to which the notice relates. (7) In this section, “aggrieved person” shall include a person who is entitled to the design right in a registered design where that person would be entitled to apply for the invalidation of the registration of the design under subsection (3) of section 47 . Right to apply to Controller for rectification of register. 34.—(1) An application for an order for the rectification of the Register under section 33 may, at the option of the applicant, be made in the first instance to the Controller. (2) In the case to which subsection (1) applies, the Controller shall have all the powers of the High Court under section 33 to decide the matter. Effect of rectification of register. 35.—A rectification of the Register under section 33 or 34 shall have effect as follows— (a) an entry made has effect from the date on which it should have been made, (b) an entry varied has effect as if it had originally been made in its varied form, and (c) an entry deleted shall be deemed never to have had effect, unless the High Court or, as the case may be, the Controller directs otherwise. Adaptation of entries to new classification. 36.—(1) The Minister may make regulations authorising the Controller to do such things as the Controller considers necessary to implement any amended or substituted classification for the purposes of the registration of designs and, without prejudice to the generality of the aforesaid, the Minister may make regulations in respect of the amendment of existing entries on the Register so as to accord with the new classification. (2) Any power of amendment effected under this section shall not be exercised so as to extend the rights conferred by the registration, except where it appears to the Controller that compliance with this requirement would involve undue complexity and that any extension would not be substantial and would not adversely affect the rights of any person. (3) Regulations made under this section may empower the Controller— (a) to require the registered proprietor of a registered design, within such time as may be prescribed, to file a proposal for the amendment of the Register, and (b) to cancel or refuse to renew the registration of the design in the event of the proprietor failing to do so. (4) A proposal under subsection (3)(a) shall be advertised and may be opposed, in such manner as may be prescribed. Power of Controller to correct errors. 37.—(1) The Controller may, in accordance with this section, correct an error in an application for the registration or in the representation of a design, or any error in the Register. (2) A correction may be made under this section upon a request in writing made by any person interested and accompanied by the prescribed fee, or on the initiative of the Controller. (3) Where the Controller is requested under this section to correct an error in the Register, he or she shall determine the matter in the prescribed manner. (4) Where the Controller proposes to make a correction under this section on his or her initiative, he or she shall give notice of the proposal to the registered proprietor or the applicant for registration of the design, as the case may be, and to any other person who appears to him or her to be concerned, and shall give them an opportunity to be heard before making the correction. (5) A correction of the Register under this section shall have the effect that the error in question shall be deemed never to have been made. Inspection of designs register. 38.—(1) Subject to subsection (3), the public shall have a right to inspect the Register at such times and in such manner as may be prescribed by the Minister. (2) Where a request is made to the Controller for a certified or uncertified copy of, or extract from, an entry in the Register, other than an entry that is not open to public inspection by virtue of subsection (3), the Controller shall issue a copy of the entry or extract to the person making the request on payment of the prescribed fee. (3) Where deferment of publication is requested under section 32 , the Register shall not be open to public inspection, in relation to that design, until the expiry of that period of deferment. (4) In relation to any portion of the Register kept otherwise than in documentary form— (a) the right of inspection conferred by subsection (1) is a right to inspect the material on the Register, and (b) the right to a copy or extract conferred by subsection (2) is a right to a copy or extract in a form in which it can be taken away and in which it is visible and legible. (5) Each of the following— (a) a copy of an entry in the Register or an extract from the Register which is supplied under subsection (2), or (b) a copy of any representation or document kept in the Patents Office or an extract from any such document, which purports to be a certified copy or certified extract shall be admitted in evidence in civil or criminal proceedings without further proof and without production of an original. (6) In this section, “certified copy” and “certified extract” means a copy and an extract certified by the Controller and sealed with the seal of the Controller. Right to information. 39.—(1) Subject to subsection (2), after the registration of a design and upon the filing of a written request by any person in the prescribed manner, the Controller shall, subject to compliance with the prescribed conditions, give the person making the request such information, and permit him or her to inspect such documents, relating to the application for registration of the design concerned as may be specified in the request. (2) Where deferment of publication is granted under section 32 , no information or documents constituting or relating to the application shall, without the consent of the registered proprietor or the applicant (as the case may be), be published or communicated to any other person by the Controller under subsection (1) until the expiry of that period of deferment. (3) Subsection (2) shall not prevent the Controller from publishing or communicating to others any prescribed information relating to an application for registration of a design. (4) Where a person is notified that an application for registration of a design has been made and that the applicant shall, if the design is registered, bring proceedings against that person in the event of his or her doing an act specified in the notification, that person may make a request under subsection (1), notwithstanding that the design has not been registered or that deferment of publication has been granted, and that subsection shall apply accordingly. (5) Where an application for the registration of a design has been abandoned or refused, neither the application for registration nor any other material or information filed in pursuance thereof shall at any time be open to inspection at the Patents Office or be published by the Controller. Information as to existence of right in registered design. 40.—On the request of a person furnishing any information to enable the Controller to identify the design, and on payment of the prescribed fee, the Controller shall inform that person— (a) whether the design is registered and, if so, the class in which it is registered, (b) whether any disclaimers, memoranda or declarations of partial invalidity of the design right have been registered, and (c) whether an extension of the period for which the design right in the design shall subsist has been granted, and shall state the date of registration and name and address of the registered proprietor. Registration and publication of assignments, licences, etc. 41.—(1) Where a person becomes entitled by assignment, transmission or operation of law to the design right in a design or to a share in that design right, or becomes entitled as mortgagee, licensee or otherwise to any other interest in the design right in a design, he or she shall apply to the Controller in the prescribed manner for the registration of his or her title as proprietor or co-proprietor or, as the case may be, of notice of his or her interest, in the Register. (2) Without prejudice to subsection (1), an application for the registration of the title of a person becoming entitled by assignment to the design right in a design or a share in that design right, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in the design right in a design, may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be. (3) Where an application is made under this section for the registration of the title of any person, the Controller shall, upon proof of title to his or her satisfaction— (a) where that person is entitled to the design right in a design or a share in that design right, register him or her in the Register as proprietor or co-proprietor of the registered design, and enter in the Register particulars of the instrument or event by which he or she derives title, or (b) where that person is entitled to any other interest in the design right, enter in the Register notice of his or her interest, with particulars of the instrument (if any) creating it, and shall publish the entry in the prescribed manner. (4) Except for the purposes of an application to rectify the Register under section 33 or 34 of this Act, a document in respect of which no entry has been made in the Register under subsection (3) shall not be admitted in court as evidence of the title of a person to the design right in a design or share of or interest in the design right in a design unless the court otherwise directs. Chapter 5 Effect of Registration Design right. 42.—(1) There shall be a property right to be known and in this Act referred to as a design right, which shall subsist in a registered design. (2) The registered proprietor of a design shall be the owner of the design right in the design. (3) The design right in a registered design shall also apply to any design which does not produce on the informed user a different overall impression, taking into consideration the degree of freedom the author had in developing the design. (4) The design right shall confer on its owner the exclusive right to use the design and to authorise others to use it, including the right to make, offer, put on the market, import, export or use a product in which the design is incorporated or to which it is applied, or to stock such a product for those purposes. (5) The design right shall not apply to the use of a component part of a complex product for the purpose of repair of that product so as to restore its original appearance. Duration of protection. 43.—(1) Subject to subsection (2), the design right in a design shall expire 5 years after the date of registration. (2) The period for which the design right subsists may be renewed, for a second, third, fourth and fifth period of 5 years, by applying to the Controller for an extension in the prescribed manner and paying the prescribed renewal fee. (3) Subject to subsection (4), where a period during which design right subsists expires without an application for renewal and payment of the prescribed fee being made, the design right shall expire, and the Controller shall notify the registered proprietor in the prescribed manner. (4) Where during the period of 6 months immediately following the end of a period of subsistence of the design right the renewal fee and any prescribed additional fee are paid, the design right shall be deemed not to have expired, and accordingly— (a) anything undertaken under or in relation to the design right by or with the consent of the registered proprietor during that period shall be treated as valid, (b) an act which would have constituted an infringement of the design right if it had not expired shall be treated as an infringement, and (c) an act which would have constituted use for the service of the State under section 86 if the design right had remained in force during the period between expiry and restoration shall be deemed to constitute use for the service of the State. Restoration of design right. 44.—(1) Where the design right has expired by reason of a failure to extend, in accordance with subsection (2) or subsection (4) of section 43 , the period for which the right subsists, an application for the restoration of the right may be made in the prescribed manner to the Controller within the prescribed period. (2) The application under subsection (1) may be made by the person who was the registered proprietor of the design or by any other person who would have been entitled to the design right if it had not expired and where the design right was held by two or more persons jointly, the application may, with the leave of the Controller, be made by one or more of them without joining the others. (3) Where the Controller is satisfied that the proprietor took reasonable care to see that the period for which the design right subsisted was extended in accordance with subsection (2) or subsection (4) of section 43 , the Controller shall, on payment of any unpaid renewal fee and any prescribed additional fee, order the restoration of the design right. (4) An order made under subsection (3) may be made subject to such conditions as the Controller thinks fit, and if the proprietor of the design does not comply with any condition the Controller may revoke the order and give such consequential directions as he or she thinks fit. (5) Notice of the restoration of a design right shall be published by the Controller in the prescribed manner. (6) The Minister may prescribe that the period prescribed for the purposes of subsection (1) may be altered, subject to any transitional provisions and savings as appear to the Minister to be necessary or expedient. Effect of order for restoration of design right. 45.—(1) An act undertaken or authorisation given under or in relation to the design right in a design during the period between expiry and restoration of the design right shall be treated as valid. (2) An act undertaken during the period between expiry and restoration of the design right which would have constituted an infringement if the design right had not expired shall be treated as an infringement— (a) if undertaken at a time when it was possible for an application for extension to be made under section 43 , or (b) if it was a continuation or repetition of an earlier infringing act. (3) Where it is no longer possible for an application for extension to be made under section 43 , and before publication of notice of the restoration, a person— (a) began in good faith to undertake an act which would have constituted an infringement of the design right if it had not expired, or (b) made in good faith effective and serious preparations to undertake such an act, he or she has the right to continue to undertake the act, or, as the case may be, to undertake the act, notwithstanding the restoration of the design right. (4) Subsection (3) does not extend to granting a licence to another person to undertake the act. (5) If the act referred to in subsection (3) was undertaken, or preparations were made, in the course of a business, trade or profession, the person entitled to the right conferred by subsection (3) may— (a) authorise the undertaking of that act by any of his or her partners for the time being in that business, trade or profession, and (b) (i) assign that right, or (ii) transmit that right by testamentary disposition (or in the case of a body corporate on its dissolution), to any person who acquired that part of the business, trade or profession during the time when the act was being undertaken or the preparations were being made. (6) Where a product is disposed of to another person in exercise of the rights conferred by subsection (3) or subsection (5), that other person and any person claiming under him or her may use the product in the same way as if it had been disposed of by the registered proprietor of the design. (7) An act referred to in this section which would have constituted use for service of the State of the design if the design right remained in force during the period between expiry and restoration shall be deemed to constitute use for the service of the State. Surrender of design right. 46.—(1) The design right in a design may be surrendered by the registered proprietor. (2) The Minister may make regulations: (a) as to the manner and effect of the surrender of a design right; and (b) for protecting the interests of other persons having an interest in that design right. Invalidation of registration. 47.—(1) At any time after a design has been registered, any person with an interest may apply to the Controller for the invalidation of the registration of the design— (a) on the ground that the design was not, at the filing date of the application for registration or, where priority is claimed, at the date of priority, registrable in accordance with sections 11 to 14, (b) on the ground that the design was not registrable in accordance with section 16 , or (c) on any ground on which the Controller could have refused to register the design under section 21 (1)(b), and the Controller may make such order on the application as he or she thinks fit. (2) At any time after a design has been registered, any person may apply to the Controller for invalidation of the registration on the ground that the design would be contrary to public policy or morality, and the Controller may make such order on the application as he or she thinks fit. (3) The Controller may, on the application by a person so entitled for invalidation of the registration of a design on the ground that the person whose name is entered in the Register as the proprietor of the design is not entitled to be so registered, make such order as he or she thinks fit. (4) The Controller may, on the application by a person so entitled, or on the initiative of the Controller, invalidate the registration of a design on the ground that the design is in conflict with a prior design. (5) In this section, “prior design” has the meaning assigned to it by section 15 (2). (6) The Controller may, on the application of any person so entitled for invalidation of the registration of a design on the ground that a distinctive sign which is registered as a trade mark under the Trade Marks Act, 1996 , has been subsequently used in the design, make such order as he or she thinks fit. (7) The Controller may, on the application of the person concerned by the use for the invalidation of the registration of a design or on the initiative of the Controller, where the design consists of or includes anything which would not be registered by virtue of section 9 , 62 or 63 of the Trade Marks Act, 1996 , make such order as he or she thinks fit. (8) For the purposes of this section, “a person so entitled” means— (a) in respect of subsection (3), the person entitled to the design right; (b) in respect of subsections (4) and (6), the holder of the conflicting right. (9) A registration may be declared invalid after it has lapsed or after it has been surrendered in proceedings under section 46 . (10) An invalidation under this section shall take effect from the date of registration or from such later date as the Controller may direct. (11) Where a design has been invalidated under the provisions of subsections (1), (2), (6) or (7), the Controller may register the design in an amended form, where that form complies with the requirements for registration under this Act and the identity of the design is retained. (12) A registration under subsection (11) may be accompanied by a partial disclaimer by the registered proprietor or by entry in the Register of a court decision declaring the partial invalidity of the design right. Chapter 6 Exceptions to Design Right Protection Acts permitted. 48.—(1) The design right is not infringed by— (a) acts done privately and for non-commercial purposes, (b) acts done for experimental purposes, or (c) acts of reproduction for the purposes of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source. (2) The design right is not infringed by— (a) use of equipment on ships and aircraft registered outside the State where these temporarily enter the State, (b) the importation into the State of spare parts and accessories for the purpose of repairing such craft, or (c) the execution of repairs on such craft. Compulsory licences. 49.—(1) At any time after a design has been registered, any person may apply to the Controller for the grant of a compulsory licence in respect of the design on the ground that— (a) a demand in the State for a product incorporating the design is not being met or is not being met on reasonable terms, or (b) a demand in the State for a product incorporating the design is being met by importation other than from a member of the World Trade Organisation, and the Controller may make an order on the application as he or she thinks fit. (2) An order for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed executed by the registered proprietor and all other necessary parties granting a licence in accordance with the order. (3) Where an order granting a compulsory licence has been made under subsection (1), any person may apply to the Controller for an order amending or cancelling that order on the grounds that the circumstances which led to that order have changed or have ceased to exist and are unlikely to recur, and the Controller may make an order on such application upon such terms as he or she thinks fit, including terms which provide for the protection of the interests of the licensee concerned. (4) Subsection (3) shall also apply to an order made under that subsection. Prior use. 50.—(1) Subject to subsection (2), where a person has commenced use within the State, or has made serious preparations to that end, of a design which has not been copied from a registered design, the continued use of that design by that person for that purpose shall not infringe the design right in the registered design. (2) The design referred to in subsection (1) is a design which has not been made available to the public before the filing date of the application for registration of the registered design or, where priority is claimed, the date of priority of the registered design, and the use of which commenced before the said filing date or, as the case may be, the said date of priority. (3) The right conferred by this section may not be transmitted. Chapter 7 Infringement of Design Right Infringement of design right. 51.—(1) The design right is infringed by a person who, without the licence of the registered proprietor of the design and while the design right is in force, undertakes or authorises another to undertake any act which is the exclusive right of the registered proprietor of the design. (2) The design right is not infringed by the reproduction of a feature of the design which is not taken into account in determining whether the design is registrable. Secondary infringement of design right. 52.—A person infringes the design right where he or she without the licence of the registered proprietor of the design and while the design right is in force— (a) sells, rents or offers or exposes for sale or rent, (b) imports into the State, otherwise than for his or her private and domestic use, or (c) in the course of a business, trade or profession, has in his or her possession, custody or control, a product which is, and which he or she knows or has reason to believe is, an infringing product. Secondary infringement: providing means for infringement. 53.—A person infringes the design right where he or she without the licence of the registered proprietor of the design— (a) makes, (b) sells, rents or offers or exposes for sale or rent, (c …