Office of Public Sector Information
(1) Design right is a property right which subsists in accordance with this Part in an original design.
(2) In this Part “design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.
(3) Design right does not subsist in—
(a) a method or principle of construction,
(b) features of shape or configuration of an article which—
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or
(c) surface decoration.
(4) A design is not “original” for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.
(5) Design right subsists in a design only if the design qualifies for design right protection by reference to—
(a) the designer or the person by whom the design was commissioned or the designer employed (see sections 218 and 219), or
(b) the person by whom and country in which articles made to the design were first marketed (see section 220),
or in accordance with any Order under section 221 (power to make further provision with respect to qualification).
(6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design.
(7) Design right does not subsist in a design which was so recorded, or to which an article was made, before the commencement of this Part.
(1) In this Part the “designer”, in relation to a design, means the person who creates it.
(2) In the case of a computer-generated design the person by whom the arrangements necessary for the creation of the design are undertaken shall be taken to be the designer.
(1) The designer is the first owner of any design right in a design which is not created in pursuance of a commission or in the course of employment.
(2) Where a design is created in pursuance of a commission, the person commissioning the design is the first owner of any design right in it.
(3) Where, in a case not falling within subsection (2) a design is created by an employee in the course of his employment, his employer is the first owner of any design right in the design.
(4) If a design qualifies for design right protection by virtue of section 220 (qualification by reference to first marketing of articles made to the design), the above rules do not apply and the person by whom the articles in question are marketed is the first owner of the design right.
(1) Design right expires—
(a) fifteen years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever first occurred, or
(b) if articles made to the design are made available for sale or hire within five years from the end of that calendar year, ten years from the end of the calendar year in which that first occurred.
(2) The reference in subsection (1) to articles being made available for sale or hire is to their being made so available anywhere in the world by or with the licence of the design right owner.
(1) In this Part—
“qualifying individual” means a citizen or subject of, or an individual habitually resident in, a qualifying country; and
“qualifying person” means a qualifying individual or a body corporate or other body having legal personality which—
(a) is formed under the law of a part of the United Kingdom or another qualifying country, and
(b) has in any qualifying country a place of business at which substantial business activity is carried on.
(2) References in this Part to a qualifying person include the Crown and the government of any other qualifying country.
(3) In this section “qualifying country” means—
(a) the United Kingdom,
(b) a country to which this Part extends by virtue of an Order under section 255,
(c) another member State of the European Economic Community, or
(d) to the extent that an Order under section 256 so provides, a country designated under that section as enjoying reciprocal protection.
(4) The reference in the definition of “qualifying individual” to a person’s being a citizen or subject of a qualifying country shall be construed—
(a) in relation to the United Kingdom, as a reference to his being a British citizen, and
(b) in relation to a colony of the United Kingdom, as a reference to his being a British Dependent Territories' citizen by connection with that colony.
(5) In determining for the purpose of the definition of “qualifying person” whether substantial business activity is carried on at a place of business in any country, no account shall be taken of dealings in goods which are at all material times outside that country.
(1) This section applies to a design which is not created in pursuance of a commission or in the course of employment.
(2) A design to which this section applies qualifies for design right protection if the designer is a qualifying individual or, in the case of a computer-generated design, a qualifying person.
(3) A joint design to which this section applies qualifies for design right protection if any of the designers is a qualifying individual or, as the case may be, a qualifying person.
(4) Where a joint design qualifies for design right protection under this section, only those designers who are qualifying individuals or qualifying persons are entitled to design right under section 215(1) (first ownership of design right: entitlement of designer).
(1) A design qualifies for design right protection if it is created in pursuance of a commission from, or in the course of employment with, a qualifying person.
(2) In the case of a joint commission or joint employment a design qualifies for design right protection if any of the commissioners or employers is a qualifying person.
(3) Where a design which is jointly commissioned or created in the course of joint employment qualifies for design right protection under this section, only those commissioners or employers who are qualifying persons are entitled to design right under section 215(2) or (3) (first ownership of design right: entitlement of commissioner or employer).
(1) A design which does not qualify for design right protection under section 218 or 219 (qualification by reference to designer, commissioner or employer) qualifies for design right protection if the first marketing of articles made to the design—
(a) is by a qualifying person who is exclusively authorised to put such articles on the market in the United Kingdom, and
(b) takes place in the United Kingdom, another country to which this Part extends by virtue of an Order under section 255, or another member State of the European Economic Community.
(2) If the first marketing of articles made to the design is done jointly by two or more persons, the design qualifies for design right protection if any of those persons meets the requirements specified in subsection (1)(a).
(3) In such a case only the persons who meet those requirements are entitled to design right under section 215(4) (first ownership of design right: entitlement of first marketer of articles made to the design).
(4) In subsection (1)(a) “exclusively authorised” refers—
(a) to authorisation by the person who would have been first owner of design right as designer, commissioner of the design or employer of the designer if he had been a qualifying person, or by a person lawfully claiming under such a person, and
(b) to exclusivity capable of being enforced by legal proceedings in the United Kingdom.
(1) Her Majesty may, with a view to fulfilling an international obligation of the United Kingdom, by Order in Council provide that a design qualifies for design right protection if such requirements as are specified in the Order are met.
(2) An Order may make different provision for different descriptions of design or article; and may make such consequential modifications of the operation of sections 215 (ownership of design right) and sections 218 to 220 (other means of qualification) as appear to Her Majesty to be appropriate.
(3) A statutory instrument containing an Order in Council under this section shall be subject to annulment in pursuance of a resolution of either House of Parliament.
(1) Design right is transmissible by assignment, by testamentary disposition or by operation of law, as personal or moveable property.
(2) An assignment or other transmission of design right may be partial, that is, limited so as to apply—
(a) to one or more, but not all, of the things the design right owner has the exclusive right to do;
(b) to part, but not the whole, of the period for which the right is to subsist.
(3) An assignment of design right is not effective unless it is in writing signed by or on behalf of the assignor.
(4) A licence granted by the owner of design right is binding on every successor in title to his interest in the right, except a purchaser in good faith for valuable consideration and without notice (actual or constructive) of the licence or a person deriving title from such a purchaser; and references in this Part to doing anything with, or without, the licence of the design right owner shall be construed accordingly.
(1) Where by an agreement made in relation to future design right, and signed by or on behalf of the prospective owner of the design right, the prospective owner purports to assign the future design right (wholly or partially) to another person, then if, on the right coming into existence, the assignee or another person claiming under him would be entitled as against all other persons to require the right to be vested in him, the right shall vest in him by virtue of this section.
(2) In this section—
“future design right” means design right which will or may come into existence in respect of a future design or class of designs or on the occurrence of a future event; and
“prospective owner” shall be construed accordingly, and includes a person who is prospectively entitled to design right by virtue of such an agreement as is mentioned in subsection (1).
(3) A licence granted by a prospective owner of design right is binding on every successor in title to his interest (or prospective interest) in the right, except a purchaser in good faith for valuable consideration and without notice (actual or constructive) of the licence or a person deriving title from such a purchaser; and references in this Part to doing anything with, or without, the licence of the design right owner shall be construed accordingly.
Where a design consisting of a design in which design right subsists is registered under the [1949 c. 88.] Registered Designs Act 1949 and the proprietor of the registered design is also the design right owner, an assignment of the right in the registered design shall be taken to be also an assignment of the design right, unless a contrary intention appears.
(1) In this Part an “exclusive licence” means a licence in writing signed by or on behalf of the design right owner authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the design right owner.
(2) The licensee under an exclusive licence has the same rights against any successor in title who is bound by the licence as he has against the person granting the licence.
(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes—
(a) by making articles to that design, or
(b) by making a design document recording the design for the purpose of enabling such articles to be made.
(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.
(3) Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner.
(4) For the purposes of this section reproduction may be direct or indirect, and it is immaterial whether any intervening acts themselves infringe the design right.
(5) This section has effect subject to the provisions of Chapter III (exceptions to rights of design right owner).
(1) Design right is infringed by a person who, without the licence of the design right owner—
(a) imports into the United Kingdom for commercial purposes, or
(b) has in his possession for commercial purposes, or
(c) sells, lets for hire, or offers or exposes for sale or hire, in the course of a business,
an article which is, and which he knows or has reason to believe is, an infringing article.
(2) This section has effect subject to the provisions of Chapter III (exceptions to rights of design right owner).
(1) In this Part “infringing article”, in relation to a design, shall be construed in accordance with this section.
(2) An article is an infringing article if its making to that design was an infringement of design right in the design.
(3) An article is also an infringing article if—
(a) it has been or is proposed to be imported into the United Kingdom, and
(b) its making to that design in the United Kingdom would have been an infringement of design right in the design or a breach of an exclusive licence agreement relating to the design.
(4) Where it is shown that an article is made to a design in which design right subsists or has subsisted at any time, it shall be presumed until the contrary is proved that the article was made at a time when design right subsisted.
(5) Nothing in subsection (3) shall be construed as applying to an article which may lawfully be imported into the United Kingdom by virtue of any enforceable Community right within the meaning of section 2(1) of the [1972 c. 68.] European Communities Act 1972.
(6) The expression “infringing article” does not include a design document, notwithstanding that its making was or would have been an infringement of design right.
(1) An infringement of design right is actionable by the design right owner.
(2) In an action for infringement of design right all such relief by way of damages, injunctions, accounts or otherwise is available to the plaintiff as is available in respect of the infringement of any other property right.
(3) The court may in an action for infringement of design right, having regard to all the circumstances and in particular to—
(a) the flagrancy of the infringement, and
(b) any benefit accruing to the defendant by reason of the infringement,
award such additional damages as the justice of the case may require.
(4) This section has effect subject to section 233 (innocent infringement).
(1) Where a person—
(a) has in his possession, custody or control for commercial purposes an infringing article, or
(b) has in his possession, custody or control anything specifically designed or adapted for making articles to a particular design, knowing or having reason to believe that it has been or is to be used to make an infringing article,
the owner of the design right in the design in question may apply to the court for an order that the infringing article or other thing be delivered up to him or to such other person as the court may direct.
(2) An application shall not be made after the end of the period specified in the following provisions of this section; and no order shall be made unless the court also makes, or it appears to the court that there are grounds for making, an order under section 231 (order as to disposal of infringing article, &c.).
(3) An application for an order under this section may not be made after the end of the period of six years from the date on which the article or thing in question was made, subject to subsection (4).
(4) If during the whole or any part of that period the design right owner—
(a) is under a disability, or
(b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an order,
an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.
(5) In subsection (4) “disability”—
(a) in England and Wales, has the same meaning as in the [1980 c. 58.] Limitation Act 1980;
(b) in Scotland, means legal disability within the meaning of the [1973 c. 52.] Prescription and Limitation (Scotland) Act 1973;
(c) in Northern Ireland, has the same meaning as in the [1958 c. 10 (N.I.).] Statute of Limitations (Northern Ireland) 1958.
(6) A person to whom an infringing article or other thing is delivered up in pursuance of an order under this section shall, if an order under section 231 is not made, retain it pending the making of an order, or the decision not to make an order, under that section.
(7) Nothing in this section affects any other power of the court.
(1) An application may be made to the court for an order that an infringing article or other thing delivered up in pursuance of an order under section 230 shall be—
(a) forfeited to the design right owner, or
(b) destroyed or otherwise dealt with as the court may think fit,
or for a decision that no such order should be made.
(2) In considering what order (if any) should be made, the court shall consider whether other remedies available in an action for infringement of design right would be adequate to compensate the design right owner and to protect his interests.
(3) Provision shall be made by rules of court as to the service of notice on persons having an interest in the article or other thing, and any such person is entitled—
(a) to appear in proceedings for an order under this section, whether or not he was served with notice, and
(b) to appeal against any order made, whether or not he appeared;
and an order shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal.
(4) Where there is more than one person interested in an article or other thing, the court shall make such order as it thinks just and may (in particular) direct that the thing be sold, or otherwise dealt with, and the proceeds divided.
(5) If the court decides that no order should be made under this section, the person in whose possession, custody or control the article or other thing was before being delivered up or seized is entitled to its return.
(6) References in this section to a person having an interest in an article or other thing include any person in whose favour an order could be made in respect of it under this section or under section 114 or 204 of this Act or section 58C of the [1938 c. 22.] Trade Marks Act 1938 (which make similar provision in relation to infringement of copyright, rights in performances and trade marks).
(1) In England, Wales and Northern Ireland a county court may entertain proceedings under—
section 230 (order for delivery up of infringing article, &c.),
section 231 (order as to disposal of infringing article, &c.), or
section 235(5) (application by exclusive licensee having concurrent rights),
where the value of the infringing articles and other things in question does not exceed the county court limit for actions in tort.
(2) In Scotland proceedings for an order under any of those provisions may be brought in the sheriff court.
(3) Nothing in this section shall be construed as affecting the jurisdiction of the High Court or, in Scotland, the Court of Session.
(1) Where in an action for infringement of design right brought by virtue of section 226 (primary infringement) it is shown that at the time of the infringement the defendant did not know, and had no reason to believe, that design right subsisted in the design to which the action relates, the plaintiff is not entitled to damages against him, but without prejudice to any other remedy.
(2) Where in an action for infringement of design right brought by virtue of section 227 (secondary infringement) a defendant shows that the infringing article was innocently acquired by him or a predecessor in title of his, the only remedy available against him in respect of the infringement is damages not exceeding a reasonable royalty in respect of the act complained of.
(3) In subsection (2) “innocently acquired” means that the person acquiring the article did not know and had no reason to believe that it was an infringing article.
(1) An exclusive licensee has, except against the design right owner, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.
(2) His rights and remedies are concurrent with those of the design right owner; and references in the relevant provisions of this Part to the design right owner shall be construed accordingly.
(3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the design right owner.
(1) Where an action for infringement of design right brought by the design right owner or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the design right owner or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.
(2) A design right owner or exclusive licensee who is added as a defendant in pursuance of subsection (1) is not liable for any costs in the action unless he takes part in the proceedings.
(3) The above provisions do not affect the granting of interlocutory relief on the application of the design right owner or an exclusive licensee.
(4) Where an action for infringement of design right is brought which relates (wholly or partly) to an infringement in respect of which the design right owner and an exclusive licensee have concurrent rights of action—
(a) the court shall, in assessing damages, take into account—
(i) the terms of the licence, and
(ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;
(b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and
(c) the court shall if an account of profits is directed apportion the profits between them as the court considers just, subject to any agreement between them;
and these provisions apply whether or not the design right owner and the exclusive licensee are both parties to the action.
(5) The design right owner shall notify any exclusive licensee having concurrent rights before applying for an order under section 230 (order for delivery up of infringing article, &c.); and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.
Where copyright subsists in a work which consists of or includes a design in which design right subsists, it is not an infringement of design right in the design to do anything which is an infringement of the copyright in that work.
(1) Any person is entitled as of right to a licence to do in the last five years of the design right term anything which would otherwise infringe the design right.
(2) The terms of the licence shall, in default of agreement, be settled by the comptroller.
(3) The Secretary of State may if it appears to him necessary in order to—
(a) comply with an international obligation of the United Kingdom, or
(b) secure or maintain reciprocal protection for British designs in other countries,
by order exclude from the operation of subsection (1) designs of a description specified in the order or designs applied to articles of a description so specified.
(4) An order shall be made by statutory instrument; and no order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.
(1) Where the matters specified in a report of the Monopolies and Mergers Commission as being those which in the Commission’s opinion operate, may be expected to operate or have operated against the public interest include—
(a) conditions in licences granted by a design right owner restricting the use of the design by the licensee or the right of the design right owner to grant other licences, or
(b) a refusal of a design right owner to grant licences on reasonable terms,
the powers conferred by Part I of Schedule 8 to the [1973 c. 41.] Fair Trading Act 1973 (powers exercisable for purpose of remedying or preventing adverse effects specified in report of Commission) include power to cancel or modify those conditions and, instead or in addition, to provide that licences in respect of the design right shall be available as of right.
(2) The references in sections 56(2) and 73(2) of that Act, and sections 10(2)(b) and 12(5) of the [1980 c. 21.] Competition Act 1980, to the powers specified in that Part of that Schedule shall be construed accordingly.
(3) The terms of a licence available by virtue of this section shall, in default of agreement, be settled by the comptroller.
(1) If in proceedings for infringement of design right in a design in respect of which a licence is available as of right under section 237 or 238 the defendant undertakes to take a licence on such terms as may be agreed or, in default of agreement, settled by the comptroller under that section—
(a) no injunction shall be granted against him,
(b) no order for delivery up shall be made under section 230, and
(c) the amount recoverable against him by way of damages or on an account of profits shall not exceed double the amount which would have been payable by him as licensee if such a licence on those terms had been granted before the earliest infringement.
(2) An undertaking may be given at any time before final order in the proceedings, without any admission of liability.
(3) Nothing in this section affects the remedies available in respect of an infringement committed before licences of right were available.
(1) A government department, or a person authorised in writing by a government department, may without the licence of the design right owner—
(a) do anything for the purpose of supplying articles for the services of the Crown, or
(b) dispose of articles no longer required for the services of the Crown;
and nothing done by virtue of this section infringes the design right.
(2) References in this Part to “the services of the Crown” are to—
(a) the defence of the realm,
(b) foreign defence purposes, and
(c) health service purposes.
(3) The reference to the supply of articles for “foreign defence purposes” is to their supply—
(a) for the defence of a country outside the realm in pursuance of an agreement or arrangement to which the government of that country and Her Majesty’s Government in the United Kingdom are parties; or
(b) for use by armed forces operating in pursuance of a resolution of the United Nations or one of its organs.
Copyright, Designs and Patents Act 1988