STATUTORY INSTRUMENTS 
2006 No. 1028  
INTELLECTUAL PROPERTY 
The Intellectual Property (Enforcement, etc.) Regulations 2006 
Made - - - - 5th April 2006  
Laid before Parliament 6th April 2006 Coming into force - - 29th April 2006 
The Secretary of State has been designated for the purposes of section 2(2) of the European 
Communities Act 1972( a) in relation to intellectual property (including both registered and 
unregistered rights)( b). 
He makes the following Regulations under the powers conferred by that section: 
Citation and commencement 
1. These Regulations may be cited as the Intellectual Property (Enforcement, etc.) Regulations 
2006 and shall come into force on 29th April 2006. 
Amendments of legislation 
2.—(1) Schedule 1 (amendments to the Registered Designs Act 1949) shall have effect. 
(2) Schedule 2 (amendments to other prima ry legislation) shall have effect. 
(3) Schedule 3 (amendments to secondary legislation) shall have effect. 
(4) The enactments set out in Schedule 4 (repeals) shall be repealed or revoked to the extent 
specified. 
Assessment of damages 
3.—(1) Where in an action for infringement of an intellectual property right the defendant knew, 
or had reasonable grounds to know, that he engaged in infringing activity, the damages awarded to 
the claimant shall be appropriate to the actual prejudice he suffered as a result of the infringement. 
(2) When awarding such damages— 
(a) all appropriate aspects shall be taken into  account, including in particular— 
(i) the negative economic consequences, including any lost profits, which the claimant 
has suffered, and any unfair profits made by the defendant; and 
(ii) elements other than economic factors, including the moral prejudice caused to the 
claimant by the infringement; or 
                                                                                                                                                              
 
 
(a) 1972 c. 68. Under section 57(1) of the Scotland Act 1998 (c. 46), despite the transfer to Scottish Ministers of functions in 
relation to implementing obligations under Community law in relation to devolved matters, the function of the Secretary of State in relation to implementing those obligations continues to be exercisable by him as regards Scotland. 
(b) SI 2006/608.  2(b) where appropriate, they may be awarded on the basis of the royalties or fees which would 
have been due had the defendant obtained a licence. 
(3) This regulation does not affect th e operation of any enactment or rule of law relating to 
remedies for the infringement of intellectual prope rty rights except to the extent that it is 
inconsistent with the provisions of this regulation. 
(4) In the application of this regulation to— 
(a) Scotland, “claimant” includes pursuer; “defendant” includes defender; and “enactment” 
includes an enactment comprised in, or an instru ment made under, an Act of the Scottish 
Parliament; and 
(b) Northern Ireland, “claimant ” includes plaintiff. 
Order in Scotland for disclosure of information 
4.—(1) This regulation applies to proceedings in  Scotland concerning an infringement of an 
intellectual property right. 
(2) The pursuer may apply to the court for an order that information regarding the origin and 
distribution networks of goods or services which in fringe an intellectual property right shall be 
disclosed to him by the relevant person. 
(3) The court may only order the information to be disclosed where it considers it just and 
proportionate having regard to the rights and priv ileges of the relevant person and others; such an 
order may be subject to such conditions as the court thinks fit. 
(4) The relevant person is— 
(a) the alleged infringer, 
(b) any person who— 
(i) was found in possession of the infri nging goods on a commercial scale, 
(ii) was found to be using the infringi ng services on a commercial scale, or 
(iii) was found to be providing services on a commercial scale, which are used in 
activities which infringe an intellectual property right, or 
(c) any person who has been identified by a person specified in sub-paragraph (b) as being 
involved in— 
(i) the production, manufacture or distribu tion of the infringing goods, or 
(ii) the provision of the infringing services. 
(5) For the purposes of paragraph (3), the court may order the disclosure of any of the following 
types of information— 
(a) the names and addresses of— 
(i) each producer, manufacturer, distributor or supplier of the infringing goods or 
services; 
(ii) any person who previously possessed the infringing goods; and 
(iii) the intended wholesaler and retailer of the infringing goods or services; and 
(b) information relating to— 
(i) the quantities of infringing goods or the amount of infringing services provided, 
produced, manufactured, delivered, received or ordered; and 
(ii) the price paid for the infringing goo ds or infringing services in question. 
(6) Nothing in this regulation affects— 
(a) any right of the pursuer to receive information under any other enactment (including an 
enactment comprised in, or an instrument made under, an Act of the Scottish Parliament) 
or rule of law; and 
(b) any other power of the court.  3(7) For the purposes of this regulation and regula tion 5, “court” means the Court of Session or 
the sheriff. 
Order in Scotland for publication of judgments 
5. In Scotland, where the court finds that an intellectual property right has been infringed, the 
court may, at the request of the pursuer, order appropriate measures for the dissemination and 
publication of the judgment to  be taken at the defender’s expense. 
 
 
  Barry Gardiner  
 Minister for Competitiveness 
5th April 2006 Department for Trade and Industry  4 
 SCHEDULE 1 Regulation 2(1) 
Amendments to the Registered Designs Act 1949 
1. The Registered Designs Act 1949( a) shall be amended as follows. 
2. After section 15 there shall be inserted— 
“Property in and dealing with registered designs and applications 
15A The nature of registered designs 
A registered design or an application for a registered design is personal property (in 
Scotland, incorporeal moveable property). 
15B Assignment, &c of registered designs and applications for registered designs 
(1) A registered design or an application for a registered design is transmissible by 
assignment, testamentary dispos ition or operation of law in the same way as other personal 
or moveable property, subject to the following provisions of this section. 
(2) Any transmission of a registered design or an  application for a registered design is 
subject to any rights vested in  any other person of which notice is entered in the register of 
designs, or in the case of applications, notice is given to the registrar. 
(3) An assignment of, or an assent relating to, a registered design or application for a 
registered design is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative. 
(4) Except in Scotland, the requirement in subsection (3) may be satisfied in a case where 
the assignor or personal representative is a body corporate by the affixing of its seal. 
(5) Subsections (3) and (4) apply to assignment by way of security as in relation to any 
other assignment. 
(6) A registered design or application for a registered design may be the subject of a 
charge (in Scotland, security) in the same way as other personal or moveable property. 
(7) The proprietor of a registered design may grant  a licence to use that registered design. 
(8) Any equities (in Scotland, rights) in respect of a registered design or an application for 
a registered design may be enforced in like manner as in respect of any other personal or moveable property. 
15C Exclusive licences 
(1) In this Act an “exclusive licence” means a licence in writing signed by or on behalf of 
the proprietor of the register ed design authorising the licensee to  the exclusion of all other 
persons, including the person granting the li cence, to exercise a right which would 
otherwise be exercisable exclusively by  the proprietor of the registered design. 
(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.”. 
3. Before section 25 there shall be inserted— 
“24A Action for infringement  
(1) An infringement of the right in a regist ered design is actionable by the registered 
proprietor. 
                                                                                                                                                              
 
 
(a) 1949 c. 88; section 26(2) was amended by section 272 of, and paragraph 15 of Schedule 3 to, the Copyright, Designs and 
Patents Act 1988; there are other amending but none is relevant.  5(2) In an action for infringement all such relief by way of damages, injunctions, accounts 
or otherwise is available to him as is ava ilable in respect of the infringement of any other 
property right. 
(3) This section has effect subject to section 24B of this Act (exemption of innocent 
infringer from liability). 
24B Exemption of innocent infringer from liability 
(1) In proceedings for the infringement of the right in a registered design damages shall 
not be awarded, and no order shall be made for an account of profits, against a defendant 
who proves that at the date of the infri ngement he was not aware, and had no reasonable 
ground for supposing, that the design was registered. 
(2) For the purposes of subsection (1), a person shall not be deemed to have been aware 
or to have had reasonable grounds for supposing th at the design was registered by reason 
only of the marking of a product with— 
(a) the word “registered” or any abbreviation thereof, or (b) any word or words expressing or implying that the design applied to, or 
incorporated in, the product has been registered, 
unless the number of the design accompanied the word or words or the abbreviation in 
question. 
(3) Nothing in this section shall affect the power of the court to grant an injunction in any 
proceedings for infringement of the right in a registered design. 
24C Order for delivery up 
(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 desi gn which is a registered design, knowing or 
having reason to believe that it has been or is to be used to make an infringing 
article, 
the registered proprietor 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 24D of this 
Act (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 art icle or thing in question was made, subject 
to subsection (4). 
(4) If during the whole or any part of that period the registered proprietor— 
(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 Limitation Act 1980; (b) in Scotland, means legal disability within the meaning of the Prescription and 
Limitation (Scotland) Act 1973;  6(c) in Northern Ireland, has the same meaning as in the 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 24D of this Act is not made, retain it pending the making of an order, or the deci sion not to make an order, under that 
section. 
(7) The reference in subsection (1) to an act being done in relation to an article for 
“commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business. 
(8) Nothing in this section affects any other power of the court. 
24D Order as to disposal of infringing articles, &c 
(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 24C of this Act shall be— 
(a) forfeited to the registered proprietor, 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 infri ngement of the right in a registered design 
would be adequate to compensate the regist ered proprietor and to prot ect his interests. 
(3) 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. 
(4) 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 is entitled to its return. 
(5) References in this section to a person havi ng an interest in an article or other thing 
include any person in whose favour an order could be made in respect of it— 
(a) under this section;  (b) under section 19 of Trade Marks Act 1994 (incl uding that section as applied by 
regulation 4 of the Community Trade Mark Regulations 2006 (SI 2006/1027));  
(c) under section 114, 204 or 231 of the Copy right, Designs and Patents Act 1988; or 
(d) under regulation 1C of the Community  Design Regulations 2005 (SI 2005/2339). 
24E Jurisdiction of county court and sheriff court 
(1) In Northern Ireland a county court may entertain proceedings under the following 
provisions of this Act— 
section 24C (order for delivery up of infringing article, &c.), 
section 24D (order as to disposal of infringing article, &c.), or section 24F(8) (application by excl usive 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 Court of 
Session or the High Court in Northern Ireland. 
24F Rights and remedies of exclusive licensee 
(1) In relation to a registered design, an  exclusive licensee has, except against the 
registered proprietor, the same rights and remed ies in respect of matters occurring after the 
grant of the licence as if the licence had been an assignment.  7(2) His rights and remedies are concurrent with  those of the registered proprietor; and 
references to the registered proprietor in the prov isions of this Act relating to infringement 
shall be construed accordingly. 
(3) In an action brought by an exclusive li censee 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 registered proprietor. 
(4) Where an action for infringement of the ri ght in a registered design brought by the 
registered proprietor or an exclusive  licensee relates (wholly or part ly) to an infringement in 
respect of which they have concurrent rights of action, the proprietor 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 claimant or added as a defendant.   
(5) A registered proprietor or exclusive licensee who is added as a defendant in pursuance 
of subsection (4) is not liable for any costs in  the action unless he takes part in the 
proceedings.   
(6) Subsections (4) and (5) do not affect the granting of interlocutory relief on the 
application of the registered proprietor or an exclusive licensee. 
(7) Where an action for infringement of the right  in a registered design is brought which 
relates (wholly or partly) to an infringemen t in respect of which the registered proprietor 
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 pro prietor and the exclusive licensee are both 
parties to the action. 
(8) The registered proprietor shall notify an y exclusive licensee having concurrent rights 
before applying for an order under section 24C of this Act (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. 
24G Meaning of “infringing article” 
(1) In this Act “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 
the right in a registered 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 Unit ed Kingdom would have been an infringement 
of the right in a registered design or a breach of an exclusive licensing agreement 
relating to that registered design. 
(4) Where it is shown that an article is made to a design which is or has been a registered 
design, it shall be presumed until the contrary is proved that the article was made at a time when the right in the registered design subsisted. 
(5) Nothing in subsection (3) shall be construed as applying to an article which may be 
lawfully imported into the United Kingdom by virtue of an enforceable Community right 
within the meaning of section 2(1) of the European Communities Act 1972.”.  84. In section 26 (remedy for groundless threats of infringement proceedings), in subsection (2), 
for the word “plaintiff”, in both places it occurs, there shall be substituted “claimant”. 
5. For section 45 there shall be substituted— 
“45 Application to Scotland  
(1) In the application of this Act to Scotland— 
“account of profits” means accounting and payment of profits; “accounts” means count, reckoning and payment; “arbitrator” means arbiter; “assignment” means assignation; “claimant” means pursuer; 
“costs” means expenses; 
“defendant” means defender; “delivery up” means delivery; “injunction” means interdict; “interlocutory relief” means interim remedy. 
(2) References to the Crown shall be construed as including references to the Crown in 
right of the Scottish Administration.”. 
6. In section 46 (application to Northern Irel and), after subsection (4) there shall be inserted— 
“(4A) Any reference to a claimant includes a reference to a plaintiff.”.  9 SCHEDULE 2 Regulation 2(2) 
Amendments to other primary legislation 
Amendment of the Patents Act 1977 
1. The Patents Act 1977( a) shall be amended as follows. 
2. In section 62 (restrictions on recovery of damages for infringement), in subsection (3) for the 
words from “no damages” to the end of the subsection there shall be substituted— 
“the court or the comptroller shall, when awarding damages or making an order for an 
account of profits in proceedings for an infringement of the patent committed before the 
decision to allow the amendment, take into account the following— 
(a) whether at the date of infringement the defendant or defender knew, or had 
reasonable grounds to know, that he was infringing the patent; 
(b) whether the specification of the patent as published was framed in good faith and 
with reasonable skill and knowledge; 
(c) whether the proceedings are brought in good faith.”. 
3. In section 63 (relief for infringement of partially valid patent), in subsection (2) for the words 
from “not grant relief” to the end of the subsection there shall be substituted— 
“, when awarding damages, costs or expenses or making an order for an account of profits, 
take into account the following— 
(a) whether at the date of the infringement the defendant or defender knew, or had 
reasonable grounds to know, that he was infringing the patent; 
(b) whether the specification of the patent was framed in good faith and with 
reasonable skill and knowledge; 
(c) whether the proceedings are brought in good faith;  
and any relief granted shall be subject to the discretion of the court or the comptroller as to 
costs or expenses and as to the date from which damages or an account should be reckoned.
”. 
4. In section 68 (effect of non-registration on infringement proceedings)— 
(a) the words from “, the court or comptro ller shall” to “occurring” shall be omitted; and 
(b) before the word “unless”, there shall be inserted “, in proceedings for such an 
infringement, the court or comptroll er shall not award him costs or expenses”.  
5.—(1) In section 130 (interpretation), in subsection (1), in the definition of “formal 
requirements” for “section 17” there shall be substituted “section 15A”. 
(2) Sub-paragraph (1) does not apply to an application for a patent to which article 20, 21 or 22 
of the Regulatory Reform (Patents) Order 2004( b) applies. 
Amendment of the Copyright, Designs and Patents Act 1988 
6. The Copyright, Designs and Patents Act 1988( c) is amended as follows. 
                                                                                                                                                               
 
(a) 1977 c. 37;  there are amendments but none is relevant. 
(b) SI 2004/2357. 
(c) 1988 c. 48; sections 114(6), 204(6) and 231(6) were amended by section 106(1) of, and paragraph 8 of Schedule 3 to, the 
Trade Marks Act 1994; section 172A was inserted by, and sections 179, 211 and 212 were amended by, SI 1995/3297; section 172A and 179 were amended by SI 1996/2967; there are other amendments but none is relevant.  107. In section 114 (order as to disposal of infringing copy or other article), in subsection (6) for 
the words from “under this section” to the end of the subsection there shall be substituted— 
“(a) under this section or under section 204 or 231 of this Act;  
(b) under section 24D of the Registered Designs Act 1949; (c) under section 19 of Trade Marks Act 1994 (incl uding that section as applied by 
regulation 4 of the Community Trade Mark Regulations 2006 (SI 2006/1027)); or 
(d) under regulation 1C of the Community Design Regulations 2005 (SI 2005/2339).”. 
8.—(1) Section 172A (meaning of EEA and related expressions) shall be amended as follows. 
(2) For subsection (1) there shall be substituted— 
“(1) In this Part— 
“the EEA” means the European Economic Area; and “EEA state” means a member State, Iceland, Liechtenstein or Norway.”. 
(3) In subsection (2), for the words “an EEA nati onal” there shall be substituted “a national of 
an EEA State”. 
9. In section 179 (index of defined expressions), for th e words “EEA, EEA national and EEA 
state” there shall be substituted “the EEA, EE A state and national of an EEA state”. 
10. After section 197 there shall be inserted— 
“197A  Presumptions relevant to recordings of performances  
(1) In proceedings brought by virtue of this Part with respect to the rights in a 
performance, where copies of a recording of the performance as issued to the public bear a 
statement that a named person was the performer, the statement shall be admissible as 
evidence of the fact stated and shall be presumed to be correct until the contrary is proved. 
(2) Subsection (1) does not apply to proceedings for an offence under section 198 
(criminal liability for making etc. illicit recordings); but without prejudice to its application 
in proceedings for an order under section 199 (order for delivery up in criminal 
proceedings).”.  
11. In section 204 (order as to disposal of illicit recording), in subsection (6) for the words from 
“under this section” to the end of the subsection there shall be substituted— 
“(a) under this section or under section 114 or 231 of this Act;  
(b) under section 24D of the Registered Designs Act 1949; (c) under section 19 of Trade Marks Act 1994 (incl uding that section as applied by 
regulation 4 of the Community Trade Mark Regulations 2006 (SI 2006/1027)); or 
(d) under regulation 1C of the Community Design Regulations 2005 (SI 2005/2339).”. 
12. In section 211(1) (expressions having same meaning as in copyright provisions), for the 
entry “EEA national,” there shall be subs tituted the entries “the EEA,” and “EEA state,”. 
13. In section 212 (index of defined expressions), for the words “EEA national” there shall be 
substituted “the EEA and EEA state”. 
14. In section 231 (orders as to disposal of infringi ng articles, &c), in subsection (6) for the 
words from “under this section” to the end of the subsection there shall be substituted— 
“(a) under this section or under section 114 or 204 of this Act;  
(b) under section 24D of the Registered Designs Act 1949; (c) under section 19 of Trade Marks Act 1994 (incl uding that section as applied by 
regulation 4 of the Community Trade Mark Regulations 2006 (SI 2006/1027)); or 
(d) under regulation 1C of the Community Design Regulations 2005 (SI 2005/2339).”.  11Amendment of the Trade Marks Act 1994 
15. The Trade Marks Act 1994( a) shall be amended as follows. 
16. In section 19 (order as to disposal of infringing goods, materials or articles), in subsection 
(6) for the words from “under this section” to the end of the subsection there shall be substituted— 
“(a) under this section (including that sec tion as applied by regulation 4 of the 
Community Trade Mark Regulations 2006 (SI 2006/1027));  
(b) under section 24D of the Registered Designs Act 1949; 
(c) under section 114, 204 or 231 of the Copy right, Designs and Patents Act 1988; or 
(d) under regulation 1C of the Community Design Regulations 2005 (SI 2005/2339).”. 
17. In section 25 (registration of transactions affecting registered trade mark), in subsection (4), 
for the words from “, then unless” to the end of the subsection there shall be substituted— 
“and the mark is infringed before the prescribed particulars of the transaction are registered, 
in proceedings for such an infringement, the court shall not award him costs unless— 
(a) an application for registration of the prescribed particulars of the transaction is 
made before the end of the period of six months beginning with its date, or 
(b) the court is satisfied that it was not practicable  for such an application to be made 
before the end of that period and that an application was made as soon as 
practicable thereafter.”. 
18. In section 55 (the Paris Convention), in subsection (1)(b) after the words “that Convention” 
there shall be inserted “or to that Agreement”. 
                                                                                                                                                               
 
(a) 1994 c. 26; section 55 was amended by SI 1999/1899; there are other amendments but none is relevant.  12 
 SCHEDULE 3 Regulation 2(3) 
Amendments to secondary legislation 
Amendment of the Duration of Copyright and Rights in Performances Regulations 1995 
1. In regulation 2 of the Duration of Copy right and Rights in Performances Regulations 1995( a) 
for the definition of “EEA state” there is substituted— 
““EEA state” means a member State, Iceland, Liechtenstein or Norway.”. 
Amendment of the Copyright and Related Rights Regulations 1996 
2. The Copyright and Related Rights Regulations 1996( b) shall be amended as follows. 
3. In regulation 2, for the definition of “EEA state” there shall be substituted— 
““EEA state” means a member State, Iceland, Liechtenstein or Norway.”. 
4. In regulation 16(7) after the word “regulation” there shall be inserted “and regulation 17A”. 
5. After regulation 17 there shall be inserted— 
“Presumptions relevant to works subject to publication right 
17A. In proceedings brought by virtue of Chapter 6 of Part 1 of the Copyright, Designs 
and Patents Act 1988, as applied to publicati on right by regulation 17, with respect to a 
work, where copies of the work as issued to the public bear a statement that a named person 
was the owner of publication right in the work at the date of issue of the copies, the 
statement shall be admissible as evidence of the fact stated and shall be presumed to be 
correct until the contrary is proved. 
Application of presumptions in relation to an order for delivery up in criminal 
proceedings 
17B. Regulation 17A does not apply to proceedings for an offence under section 107 of 
the Copyright, Designs and Patents Act 1988 as applied and modified by regulation 17 in 
relation to publication right; but without prejudice to its application in proceedings for an 
order under section 108 of the Copyright, Designs and Patents Act 1988 as that section 
applies to publication right  by virtue of regulation 17.”. 
Amendment of the Copyright and Rights in Databases Regulations 1997 
6. For regulation 23 of the Copyright and Rights in Databases Regulations 1997( c) there shall be 
substituted— 
“Application of copyright provisions to database right 
23. The following provisions of the 1988 Act apply in relation to database right and 
databases in which that right subsists as they apply in relation to copyright and copyright 
works— 
                                                                                                                                                               
 
(a) SI 1995/3297. 
(b) SI 1996/2967. 
(c) SI 1997/3032.  13sections 90 to 93 (dealing with rights in copyright works) 
sections 96 to 102 (rights and remedi es of copyright owner and exclusive licensee) 
sections 113 and 114 (supplementary prov isions relating to delivery up) 
section 115 (jurisdiction of county court and sheriff court).”. 
Amendment of the Community Design Regulations 2005 
7. The Community Design Regulations 2005( a) shall be amended as follows. 
8. In regulation 1(2) (interpretation), at th e appropriate place, there shall be inserted— 
““Community design court” means a court design ated as such by the Community 
Designs (Designation of Community  Design Courts) Regulations 2005( b);”. 
9. After regulation 1 there shall be inserted— 
“Infringement proceedings 
1A.—(1)  This regulation and regulations 1B to 1D are without prejudice to the duties of 
the Community design court under the provisions of Article 89(1)(a) to (c) of the 
Community Design Regulation. 
(2) In an action for infringement of a Community design all such relief by way of 
damages, injunctions, accounts or otherwise is available to the holder of the Community design as is available in respect of th e infringement of any other property right. 
Order for delivery up 
1B.—(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 which is a Community design, knowing 
or having reason to believe that it has been or is to be used to make an infringing 
article, 
the holder of the Community design in questi on may apply to the Community design 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 regulation; and no order sha ll be made unless the court also makes, or it 
appears to the court that there are grounds for making, an order under regulation 1C (order 
as to disposal of infringing articles, &c.). 
(3) An application for an order under this regula tion may not be made after the end of the 
period of six years from the date on which the art icle or thing in question was made, subject 
to paragraph (4). 
(4) If during the whole or any part of that period the holder of the Community design— 
(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. 
                                                                                                                                                              
 
 
(a) SI 2005/2339. 
(b) SI 2005/696.  14(5) In paragraph (4) “disability”— 
(a) in England and Wales, has the same meaning as in the Limitation Act 1980; (b) in Scotland, means legal disability within the meaning of the Prescription and 
Limitation (Scotland) Act 1973; 
(c) in Northern Ireland, has the same meaning as in the 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 regulation shall, if an order under regulation 1C is not made, retain it 
pending the making of an order, or the decision not to make an order, under that regulation. 
(7) The reference in paragraph (1) to an act being done in relation to an article for 
“commercial purposes” are to its being done with a view to the article in question being 
sold or hired in the course of a business. 
(8) Nothing in this regulati on affects any other power of the court. 
Order as to disposal of infringing articles, &c 
1C.—(1) An application may be made to the Community design court for an order that an 
infringing article or other thing deliv ered up in pursuance of an order under regulation 1B 
shall be— 
(a) forfeited to the holder of the Community design, 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 infri ngement of the right in a Community design 
would be adequate to compensate the holder and to protect his interests. 
(3) 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. 
(4) If the court decides that no order should be  made under this regulation, the person in 
whose possession, custody or control the article  or other thing was before being delivered 
up is entitled to its return. 
(5) References in this regulation to a person ha ving an interest in an article or other thing 
include any person in whose favour an order could be made in respect of it— 
(a) under this regulation; 
(b) under section 24D of the Registered Designs Act 1949; (c) under section 114, 204 or 231 of the Copy right, Designs and Patents Act 1988; or 
(d) under section 19 of the Trade Marks Act 1994 (including that section as applied by 
regulation 4 of the Community Trade Mark Regulations 2006 (SI 2006/1027)). 
Meaning of “infringing article” 
1D.—(1) In these Regulations “infringing articl e”, in relation to a design, shall be 
construed in accordance with this regulation. 
(2) An article is an infringing article if its making to that design was an infringement of a 
Community 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 Unit ed Kingdom would have been an infringement 
of a Community design or a breach of an exclusive licensing agreement relating to that Community design.  15(4) Where it is shown that an article is made to a design which is or has been a 
Community design, it shall be presumed until the contrary is proved that the article was 
made at a time when the right in the Community design subsisted. 
(5) Nothing in paragraph (3) shall be construed as applying to an article which may be 
lawfully imported into the United Kingdom by virtue of an enforceable Community right 
within the meaning of section 2(1) of the European Communities Act 1972.”. 
10. After regulation 5 there shall be inserted— 
“Application to Scotland and Northern Ireland 
5A.—(1) In the application of these Regulations to Scotland— 
“accounts” means count, reckoning and payment; 
“claimant” means pursuer; 
“defendant” means defender; “delivery up” means delivery; “injunction” means interdict. 
(2) In the application of these Regulations to Northern Ireland, “claimant” includes 
plaintiff.”.  16 
 SCHEDULE 4 Regulation 2(4) 
Repeals 
Title Extent of repeal or revocation 
Registered Designs Act 1949 (c. 88) Section 9. 
Section 19(4). In section 28(5), in both places where they 
occur, the words “or expenses”. 
Patents Act 1977 (c. 37) In section 68, the words from “, the court or 
comptroller shall” to “occurring”. 
Copyright, Designs and Patents Act 1988 (c. 
48) In section 144A(1), the word “member”. 
Section 172A(3). In section 231(5), the words “or seized”. 
Patents Act 2004 (c. 16) Section 2(3) and (4). Community Design Regulations 2005 (SI 
2005/2339) Regulation 2(7).  17 
EXPLANATORY NOTE 
(This note is not part  of the Regulations) 
This Instrument implements or further implements the following Community instruments— 
(a) Directive of the European Parliament and of the Council of 29 April 2004 on the 
enforcement of intellectual property rights (2004/48/EC) (OJ L157, 30.4. 2004 p.45, a 
corrigendum was published in OJ L195, 2.6.2004 p.16) (“the Enforcement Directive”); 
(b) Agreement establishing the World Trade Or ganisation (including the Agreement on 
Trade-Related Aspects of Inte llectual Property Rights (Cm. 3044-6, 3080, 3263-4, 3268-
9, 3271, 3275-7 and 3282) (“TRIPS”) which was specified as a Community treaty by SI 
1995/265; 
(c) Directive of the European Parliament and of the Council of 13 October 1998 on the legal 
protection of designs (98/71/EC) (OJ L289, 28.1 0.98 p. 28) (“the Designs Directive”); 
(d) Council Regulation of 12 December 2001 on Community designs (EC) Regulation No. 6 
of 2002 (OJ. L3, 5. 1. 2002 p.1)  (“the  Community Design Regulation”); and 
(e) European Economic Area Agreement (“EEA Agreement”). 
Regulation 3  implements Article 13 of the Enforcement Di rective. It sets out the grounds on which 
damages should be awarded against a person who k nowingly infringes an intellectual property 
right. 
Regulation 4  implements Article 8 of the Enforcement Directive in Scotland. It creates a new type 
of court order, for disclosure of information about infringing goods and services. By reason of the 
House of Lords decision in Norwich Pharmacal v Customs and Excise Commissioners [1974] AC 
133 no provision is necessary to implement this obligation in England and Wales or Northern 
Ireland.  
Regulation 5  implements Article 15 of the Enforcement Directive in Scotland. It creates a new 
type of court order, for the dissemination and pub lication of a judgment at the defender’s expense. 
This Article was implemented in England and Wales by changes made to the Civil Procedure 
Rules (by SI 2005/3515 (L. 32)).  
Schedule 1  amends the Registered Designs Act 1949 (c. 88). 
Paragraph 2 of that Schedule inserts new sections 15A and 15B (property in and dealing with 
registered designs and applications) to make further provis ions relating to the Community Design 
Regulation and the Designs Directive. It also inserts a new section 15C which makes provision 
relating to or arising out of Ar ticle 4 of the Enforcement Directive. 
Paragraph 3 of that Schedule inserts new section 24A to 24G (actions for infringement, innocent 
infringement, delivery up and disposal of infri nging articles, rights and remedies of exclusive 
licensees) to implement sections 5 to 7 of the Enforcement Directive. 
Paragraph 5 of that Schedule substitutes a new section 45 for that in the Act, which contains 
definitions for Scotland.  
Schedule 2  amends the Patents Act 1977 (c. 37), the Copyright, Designs and Patents Act 1988 (c. 
48) and the Trade Marks Act 1994 (c.26). 
Paragraphs 1 to 5 of that Schedule amend sections 62, 63 and 68 of the Patents Act 1977  
(restriction on recovery of damages, relief for infri ngement of a partially invalid patent and effect 
of non-registration) to implement Article 13(1) of the Enforcement Directive. They also make a 
minor amendment to section 130 of that Ac t (interpretation) to further implement TRIPS. 
Paragraphs 6 to 14 of that Schedule amend the Copyright, Designs and Patents Act 1988. They 
amend references to the EEA in sections 172A, 179, 211 and 212 in order to re-implement the 
EEA Agreement and amend sections 114, 204 and 231 to include references to the new section  1824D of the Registered Designs Act 1949, the new regulation 1C of the Community Design 
Regulations 2005 and the application of section 19 of the Trade Marks Act 1994 by the 
Community Trade Mark Regulations 2006 (SI 2006/1027 ).  They also insert a new section 197A, 
which creates a new presumption in relation to  recordings of performances, in order to implement 
Article 5 of the Enforcement Directive. 
Schedule 3  makes amendments to the Duration of  Copyright and Rights in Performances 
Regulations 1995 (SI 1995/3297), the Copyright and Related  Rights Regulations 1996 (SI 
1996/2967), the Copyright and Rights in Databa ses Regulations 1997 (SI 1997/3032) and the 
Community Design Regul ations 2005 (SI 2005/696). 
Paragraph 1 of that Schedule  amends the reference to the EEA in regulation 2 of the Duration of 
Copyright and Rights in Pe rformances Regulations 1995. 
Paragraphs 2 to 5  of that Schedule amend the Copyright and Related Rights Regulations 1996.  
They amend the reference to the EEA in regulation 2 and insert new regulations 17A and 17B, 
which create a new presumption in rel ation to publication right, in order to implement Article 5 of 
the Enforcement Directive.  
Paragraph 6 of that Schedule  amends the Copyright and Rights in Database Regulations 1997 by 
substituting a new regulation 23, on the application of copyright provisions to database right, in 
order to implement sections 5 to 7 of the Enforcement Directive.   
Paragraphs 7 to 10 of that Schedule  amend the Community Design Regulations 2005 by inserting 
new regulations 1A to 1D (infringement proceedings, orders for delivery up and disposal of 
infringing articles) and regulation 5A which contains definitions for Scotland. It also makes a 
consequential amendment to regula tion 1(2) of those Regulations. 
Schedule 4  contains repeals and revocations.  
A regulatory impact assessment and transposition not e is available, copies of which have been 
placed in the libraries of both Houses of Parliament. Copies of the assessment and transposition 
note are also available from th e Intellectual Property and Innov ation Directorate, The Patent 
Office, Concept House, Newport NP10 8QQ and the Patent Office website www.patent.gov.uk.   
 STATUTORY INSTRUMENTS 
2006 No. 1028  
INTELLECTUAL PROPERTY 
The Intellectual Property (Enforcement, etc.) Regulations 2006 
£3.50