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Number 39of2001
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INDUSTRIAL DESIGNS ACT, 2001
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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.[No. 39.] Industrial Designs Act , 2001. [2001.]
2Section
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.[2001.] Industrial Designs Act , 2001. [ No. 39.]
Section
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.
3[No. 39.] Industrial Designs Act , 2001. [2001.]
4Section
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 prod-
ucts 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.[2001.] Industrial Designs Act , 2001. [ No. 39.]
Chapter 14
Exhaustion of Design Right
Section
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
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5[No. 39.] Industrial Designs Act , 2001. [2001.]
6Acts Referred to
Companies Acts, 1963 to 1999
Copyright Act, 1963 1963, No. 10Copyright and Related Rights Act, 2000 2000, No. 28Customs ActsIndustrial and Commercial Property (Protection) Acts, 1927 to 1958Industrial and Commercial Property (Protection) Act, 1927 1927, No. 16Industrial 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. 23Patents Act, 1992 1992, No. 1Petty Sessions (Ireland) Act, 1851 1851, c. 93Public Offices Fees Act, 1879 1879, c. 58Solicitors Act, 1954 1954, No. 36Statute of Limitations, 1957 1957, No. 6Trade Marks Act, 1996 1996, No. 6[2001.] Industrial Designs Act , 2001. [ No. 39.]
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Number 39of2001
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INDUSTRIAL DESIGNS ACT, 2001
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AN ACT TO MAKE PROVISION FOR THE PROTECTION OF
DESIGNS, TO GIVE EFFECT TO DIRECTIVE 98/71/EC OFTHE EUROPEAN PARLIAMENT AND OF THE COUN-CIL OF 13 OCTOBER 1998
1ON THE LEGAL PROTEC-
TION OF DESIGNS, TO GIVE EFFECT TO THE GENEVAACT OF THE HAGUE AGREEMENT CONCERNING THEINTERNATIONAL REGISTRATION OF INDUSTRIALDESIGNS ADOPTED AT GENEVA ON 2 JULY, 1999, ANDTO PROVIDE FOR RELATED MATTERS.
[27th November, 2001]
BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:
PART 1
Preliminary and General
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 referenceto any particular purpose appoint, and different days may be soappointed for different purposes or different provisions of this Act.
2.—(1) In this Act—
‘‘Agreement establishing the World Trade Organisation’’ means the
Agreement establishing the World Trade Organisation signed atMarrakesh 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 applicationrelates is not liable to exceed such sum as stands specifiedby an enactment to be the jurisdiction of the DistrictCourt 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 applicationrelates is not liable to exceed such sum as stands specified
1O.J. No. L289/28, 28.10.98.
7Short title and
commencement.
Interpretation.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.1 S.2
8by 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 reas-sembly 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 sup-plemented by any protocol to that Convention which is for the timebeing 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 1998
1on the legal pro-
tection 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, col-our, shape, texture or materials of the product itself or its orna-mentation;
‘‘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 regis-
tration or otherwise, or exhibited, used in trade or otherwise dis-closed, except where these events could not reasonably have becomeknown in the normal course of business to the circles specialised inthe 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 atOporto on 2 May 1992, as adjusted by the Protocol signed at Brusselson 17 March 1993 and as amended from time to time;
1O.J. No. L289/28, 28.10.98.‘‘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, get-up, graphic symbols and typographical typefaces, but not includingcomputer 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 Organisationsigned 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 intendedor otherwise indicated.
(3) In this Act, a reference to a subsection, paragraph or subpara-
graph is a reference to the subsection, paragraph or subparagraph ofthe provision in which the reference occurs, unless there is an indica-tion 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 forthis purpose a court shall have regard to the provisions of the CouncilDirective, 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 underany 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 per-
son under explicit or implicit conditions of confi-dentiality,
(b) where it is made available less than one year before the
filing date or, where priority is claimed, the date ofpriority, by a person as a result of information providedor action taken by the author or his or her successor intitle, or
(c) where a design has been made available to the public with-
out the authorisation of the author or his or her successorin title.
3.—The expenses incurred by the Minister in the administration
of this Act shall, to such extent as may be sanctioned by the Ministerfor Finance, be paid out of moneys provided by the Oireachtas.
9Pt.1 S.2
Expenses.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.1
Transitional
provisions andrepeals.
Prosecution of
offences.
Offences by bodies
corporate.
Offences by
members ofpartnership.
Service of notices.
104.—(1) The First Schedule shall have effect with respect to tran-
sitional 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.
5.—Notwithstanding the provisions of section 10(4) of the Petty
Sessions (Ireland) Act, 1851, summary proceedings for an offenceunder this Act may be commenced at any time within 12 monthsfrom the date on which the offence was committed.
6.—Where an offence under this Act is committed by a body cor-
porate and is proved to have been so committed with the consent,connivance or approval of or to be attributable to any neglect on thepart of a person being a director, manager, secretary or other officerof the body corporate, or any other person who was acting or pur-porting to act in any such capacity, that person as well as the bodycorporate shall be guilty of an offence and be liable to be proceededagainst and punished as if he or she were guilty of the first-mentionedoffence.
7.—(1) Without prejudice to any liability of a partner under sub-
section (3) , where an offence under this Act is committed by a part-
nership, any proceedings shall be brought against the partnership inthe name of the partnership and not in the name of the individualpartner.
(2) A fine imposed on a partnership on its conviction in pro-
ceedings 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 ignor-ant of or to have attempted to prevent commission of the offence,shall also be guilty of the offence and shall be liable to be proceededagainst and punished accordingly.
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 thefollowing 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 hasbeen 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 whichan 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 noticeis required to be served on, or given to, him or her in[2001.] Industrial Designs Act , 2001. [ No. 39.]
respect of any premises, by delivering it to a person over
the age of 16 years of age resident in or employed at thepremises or by affixing it in a conspicuous position on ornear 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 nameof the person cannot be ascertained by reasonable enquiry, it maybe addressed to the person by using the words ‘‘the owner’’ or, asthe case may require, ‘‘the occupier’’.
(3) For the purposes of this section, a company within the mean-
ing of the Companies Acts, 1963 to 1999, shall be deemed to beordinarily resident at its registered office, and every other body cor-porate, unincorporated body or person, including a partnership, shallbe deemed to be ordinarily resident at its principal office or place ofbusiness.
(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, dam-
age 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 notexceeding \1,905 (£1,500).
9.—(1) There shall be charged by the Controller, and paid in
respect of registration of designs and applications therefor and inrespect of other matters arising under this Act, such fees as may fromtime to time be prescribed by the Minister with the consent of theMinister 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 Ministerwith 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.
10.—(1) Subject to subsection (2) , every regulation made under
this Act shall be laid before each House of the Oireachtas as soonas may be after it is made and, if a resolution annulling the regulationis passed by either such House within the next 21 days on which thatHouse has sat after the regulation is laid before it, the regulationshall be annulled accordingly, but without prejudice to the validityof 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 regu-
lation to be made under that section shall be laid before both Housesof the Oireachtas, and the regulation shall not be made until a resol-ution approving the draft has been passed by each House.
11Pt.1 S.8
Fees.
Laying of
regulations beforeHouses ofOireachtas.[No. 39.] Industrial Designs Act , 2001. [2001.]
Registrable design.
Novelty.
Individual
character.
Protection
requirements.
Conflict with prior
design.
12PART 2
Design Registration
Chapter 1
Registrable Designs
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.
12.—(1) A design shall be considered to be new where no design
identical to it has been previously made available to the public beforethe filing date for registration or, where priority is claimed, the dateof 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 differonly in immaterial details.
13.—(1) A design shall be deemed to have individual character if
the overall impression it produces on the informed user differs fromthe overall impression produced on such a user by a design whichhas been made available to the public before the filing date of theapplication for registration or, where priority is claimed, the date ofpriority.
(2) In assessing individual character, the degree of freedom of the
author of the design in developing the design shall be taken intoconsideration.
14.—(1) A design applied to or incorporated in a product which
constitutes a component part of a complex product shall only beconsidered 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 useof the complex product, and
(b) to the extent that those visible features of the component
part fulfil in themselves the requirements as to noveltyand 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.
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 applicationfor registration of another design, or where priority is claimed, afterthe date of priority of that other design, and which is protected froma date prior to the said filing date or, as the case may be, the saidpriority date by a design right under this Act or by an applicationfor such a right.[2001.] Industrial Designs Act , 2001. [ No. 39.]
16.—(1) The features of appearance of a product which are solely
dictated by its technical function shall not be registrable under thisAct.
(2) The features of appearance of a product which are necessarily
reproduced in their exact form and dimensions in order to permitthe product in which the design is incorporated or to which it isapplied to be mechanically connected to or placed in, around oragainst another product so that either product may perform its func-tion 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 prod-ucts within a modular system shall be registrable under this Act.
Chapter 2
Authorship and 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 thecreation 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 circumstanceswhere the author of the design is not an individual.
18.—(1) In this Act, ‘‘design of joint authorship’’ means a design
produced by two or more authors in which the contribution of eachauthor 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 jointauthorship 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 thisAct to registered proprietor are to all the owners, and any require-ment of the licence of the registered proprietor requires the licenceof all the owners.
19.—(1) The author of a design shall be treated as the first pro-
prietor of the design unless the design is created by an employee inthe course of employment, in which case the employer is the firstproprietor of the design, subject to any agreement to the contrary.
(2) Where a design becomes vested, whether by assignment, trans-
mission or operation of law, in any person other than the first pro-prietor either alone or jointly with the first proprietor, that otherperson, or as the case may be, the first proprietor and that otherperson 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 inthe application for registration and in the Register.
13Pt.2
Designs dictated by
their technicalfunction anddesigns ofinterconnections.
Ownership of
designs.
Joint ownership of
designs.
Treatment of
author of design.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2
Application in
prescribed form.
Power of Controller
to refuseregistration.
Application for
registration ofdesign as a propertyright.
14Chapter 3
Proceedings for Registration
20.—(1) A person claiming to be the proprietor of a registrable
design may apply in the prescribed form and manner to the Control-ler for registration of the design under this Act.
(2) Subject to subsections (3) and(4), an application under subsec-
tion (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 theamendment 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 applicationshall be retained.
21.—(1) The Controller may refuse an application for the regis-
tration 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 aninfringement of a copyright work under the Copyrightand 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 consistsof or includes any thing which would not be registered byvirtue 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 require-ments for registration under this Act and the identity of the designis retained.
(3) Where an amendment to an application for the registration of
a design under this section is made the filing date of the applicationshall be retained.
22.—(1) An application for the registration of a design shall be
personal property.
(2)Sections 18 ,41,76,77and 78shall apply, with the necessary
modifications, in relation to an application for the registration of adesign 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 refer-ences to the entry of particulars in the Register, and to the makingof an application to register particulars, shall be construed as refer-ences to the giving of notice to the Controller of those particulars.
(4) The Minister shall prescribe a procedure to be followed sub-
sequent to the giving of the notice specified in subsection (3) .[2001.] Industrial Designs Act , 2001. [ No. 39.]
23.—An application which, owing to any fault or neglect on the
part of the applicant, has not been completed so as to enable regis-tration to be effected within such time as may be prescribed, shall bedeemed to be abandoned.
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 finaland not appealable.
25.—The filing date of an application for registration of a design
shall be the date on which the applicant pays the prescribed filingfee and files at the Patents Office documents which contain in theprescribed 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.
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 Conven-tion country or a member of the World Trade Organisation shallenjoy, 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 ofthe first application, subject to compliance with any conditions asmay 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 abilateral or multilateral agreement to which the State and that state,country, territory or area is a party, shall be recognised as giving riseto 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 Conven-tion country or a member of the World Trade Organisation thatestablishes the date on which the application was filed, whatever theoutcome 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 ofthe same Convention country or member of the World Trade Organ-isation, shall be considered as the first application for the purpose ofdetermining priority where, and only where, on the filing date of thesubsequent application, the previous application has been with-drawn, abandoned or refused, without being open to public inspec-tion and without leaving any rights outstanding, and has not servedas 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 amember of the World Trade Organisation, subsections (1) to(4)shall
apply where the Government makes an order to that effect underthis subsection consequent upon bilateral or multilateral agreementsunder which the State grants, on the basis of a first filing made in orfor that country, territory, state or area and subject to conditions
15Pt.2
Deemed
abandonment ofapplications.
Classification.
Filing date.
Priority right.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.26
Claiming priority.
Effect of priority
right.
Date of registration.
Register of designs.
16equivalent to those laid down in the Convention or in the Agreement
establishing the World Trade Organisation, a right of priority havingequivalent effect.
(6) A right of priority arising as a result of an application under
the Convention, the Agreement establishing the World TradeOrganisation or under a bilateral or multilateral agreement referredto 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.
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) .
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 claimedunder section 27 then, notwithstanding any other provision of this
Act, the application shall not be refused and the registration of thedesign under this Act shall not be invalidated by reason only of thefact that the previous application has been made available to thepublic at any time after the filing date of the previous application.
29.—A design shall be registered with effect from the filing date
of the application for registration.
Chapter 4
Register of Designs
30.—(1) The Controller may register designs in accordance with
this Act and shall maintain, in the prescribed form, a register ofdesigns, 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 thinkfit.
(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 construc-
tive, shall be entered in the Register, and the Controller shall not beaffected by any such notice.[2001.] Industrial Designs Act , 2001. [ No. 39.]
(5) A certificate purporting to be signed by the Controller and
certifying that an entry which he or she is authorised by or underthis Act to make in the Register has or has not been made, or thatany other thing which he or she is so authorised to do has or has notbeen 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 whenconsidering an application for registration under this Act.
31.—(1) On the registration of a design under this Act, the Con-
troller shall issue to the registered proprietor a certificate of regis-tration in the prescribed form.
(2) The Controller may, where he or she is satisfied that the cer-
tificate of registration has been lost or destroyed, or in any othercase in which he or she thinks it expedient, furnish one or morecopies of the certificate.
32.—(1) The Controller shall, subject to subsection (2) , as soon as
practicable after a design has been registered, publish in the pre-scribed form a notice of the registration in the Patents Office Journal.
(2) When filing an application for registration of a design an appli-
cant may request that the publication of the registered design undersubsection (1) be deferred for such period as may be prescribed by
the Minister and the Controller shall comply with such request.
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 entryin the Register or the variation or deletion of an entry in theRegister.
(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 relat-
ing to a registered design which does not in any wayextend the rights given by the existing registration of suchdesign.
(3) The High Court may, in proceedings under this section, decide
any question that it may be necessary or expedient to decide in con-nection 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 beentitled to appear and be heard by the High Court, and shall appearif so directed by the High Court in any hearing held for the purposesof this section.
(5) Unless otherwise directed by the High Court, the Controller
may, in lieu of appearing and being heard by the High Court, submitto the High Court a statement in writing, signed by him or her, givingparticulars of:
17Pt.2 S.30
Certificate of
registration.
Publication of
registration anddeferment ofpublication.
Right to apply to
court forrectification ofregister.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.33
Right to apply to
Controller forrectification ofregister.
Effect of
rectification ofregister.
Adaptation of
entries to newclassification.
18(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 theController in the prescribed manner, and on receipt of such noticethe Controller shall rectify the Register in accordance with the termsof 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 personwould be entitled to apply for the invalidation of the registration ofthe design under subsection (3) ofsection 47 .
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.
35.—A rectification of the Register under section 33 or34shall
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.
36.—(1) The Minister may make regulations authorising the Con-
troller to do such things as the Controller considers necessary toimplement any amended or substituted classification for the purposesof the registration of designs and, without prejudice to the generalityof the aforesaid, the Minister may make regulations in respect of theamendment of existing entries on the Register so as to accord withthe 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 thisrequirement would involve undue complexity and that any extensionwould not be substantial and would not adversely affect the rights ofany person.[2001.] Industrial Designs Act , 2001. [ No. 39.]
(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 proposalfor 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.
37.—(1) The Controller may, in accordance with this section, cor-
rect an error in an application for the registration or in the represen-tation 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 theprescribed 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 theprescribed 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 theproposal to the registered proprietor or the applicant for registrationof the design, as the case may be, and to any other person whoappears to him or her to be concerned, and shall give them an oppor-tunity 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 beenmade.
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 beprescribed 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, otherthan an entry that is not open to public inspection by virtue of sub-
section (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 thatdesign, 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 betaken away and in which it is visible and legible.
19Pt.2 S.36
Power of Controller
to correct errors.
Inspection of
designs register.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.38
Right to
information.
Information as to
existence of right inregistered design.
20(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) ,o r
(b) a copy of any representation or document kept in the Pat-
ents 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 furtherproof 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 theseal of the Controller.
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 pre-scribed manner, the Controller shall, subject to compliance with theprescribed conditions, give the person making the request such infor-mation, and permit him or her to inspect such documents, relatingto the application for registration of the design concerned as may bespecified in the request.
(2) Where deferment of publication is granted under section 32 ,
no information or documents constituting or relating to the appli-cation shall, without the consent of the registered proprietor or theapplicant (as the case may be), be published or communicated to anyother 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 designis registered, bring proceedings against that person in the event ofhis or her doing an act specified in the notification, that person maymake a request under subsection (1) , notwithstanding that the design
has not been registered or that deferment of publication has beengranted, 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 norany other material or information filed in pursuance thereof shall atany time be open to inspection at the Patents Office or be publishedby the Controller.
40.—On the request of a person furnishing any information to
enable the Controller to identify the design, and on payment of theprescribed 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 par-
tial invalidity of the design right have been registered,and[2001.] Industrial Designs Act , 2001. [ No. 39.]
(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.
41.—(1) Where a person becomes entitled by assignment, trans-
mission or operation of law to the design right in a design or to ashare in that design right, or becomes entitled as mortgagee, licenseeor otherwise to any other interest in the design right in a design, heor she shall apply to the Controller in the prescribed manner for theregistration of his or her title as proprietor or co-proprietor or, asthe 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, orbecoming entitled by virtue of a mortgage, licence or other instru-ment to any other interest in the design right in a design, may bemade in the prescribed manner by the assignor, mortgagor, licensoror other party to that instrument, as the case may be.
(3) Where an application is made under this section for the regis-
tration of the title of any person, the Controller shall, upon proof oftitle 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 theRegister as proprietor or co-proprietor of the registereddesign, and enter in the Register particulars of the instru-ment 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 herinterest, 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 Regis-
ter under section 33 or34of 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 thedesign right in a design or share of or interest in the design right ina design unless the court otherwise directs.
Chapter 5
Effect of Registration
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 registereddesign.
(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 over-all impression, taking into consideration the degree of freedom theauthor had in developing the design.
21Pt.2 S.40
Registration and
publication ofassignments,licences, etc.
Design right.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.42
Duration of
protection.
Restoration of
design right.
22(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 rightto make, offer, put on the market, import, export or use a productin which the design is incorporated or to which it is applied, or tostock 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 productso as to restore its original appearance.
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 tothe Controller for an extension in the prescribed manner and payingthe prescribed renewal fee.
(3) Subject to subsection (4) , where a period during which design
right subsists expires without an application for renewal and paymentof the prescribed fee being made, the design right shall expire, andthe Controller shall notify the registered proprietor in the prescribedmanner.
(4) Where during the period of 6 months immediately following
the end of a period of subsistence of the design right the renewal feeand any prescribed additional fee are paid, the design right shall bedeemed 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 duringthat 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 aninfringement, 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 andrestoration shall be deemed to constitute use for the ser-vice of the State.
44.—(1) Where the design right has expired by reason of a failure
to extend, in accordance with subsection (2) orsubsection (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 mannerto the Controller within the prescribed period.
(2) The application under subsection (1) may be made by the per-
son who was the registered proprietor of the design or by any otherperson who would have been entitled to the design right if it had notexpired and where the design right was held by two or more personsjointly, the application may, with the leave of the Controller, bemade 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 rightsubsisted was extended in accordance with subsection (2) orsubsec-
tion (4) ofsection 43 , the Controller shall, on payment of any unpaid
renewal fee and any prescribed additional fee, order the restorationof the design right.[2001.] Industrial Designs Act , 2001. [ No. 39.]
(4) An order made under subsection (3) may be made subject to
such conditions as the Controller thinks fit, and if the proprietor ofthe design does not comply with any condition the Controller mayrevoke the order and give such consequential directions as he or shethinks 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 orexpedient.
45.—(1) An act undertaken or authorisation given under or in
relation to the design right in a design during the period betweenexpiry and restoration of the design right shall be treated as valid.
(2) An act undertaken during the period between expiry and res-
toration of the design right which would have constituted an infringe-ment if the design right had not expired shall be treated as aninfringement—
(a) if undertaken at a time when it was possible for an appli-
cation for extension to be made under section 43 ,o r
(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 hadnot 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 restorationof 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 prep-
arations 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 pro-fession, 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),
23Pt.2 S.44
Effect of order for
restoration ofdesign right.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.45
Surrender of design
right.
Invalidation of
registration.
24to any person who acquired that part of the business,
trade or profession during the time when the act wasbeing 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) orsubsection (5) , that other
person and any person claiming under him or her may use the prod-uct in the same way as if it had been disposed of by the registeredproprietor 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 remainedin force during the period between expiry and restoration shall bedeemed to constitute use for the service of the State.
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.
47.—(1) At any time after a design has been registered, any per-
son with an interest may apply to the Controller for the invalidationof 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 isclaimed, at the date of priority, registrable in accordancewith sections 11 to14,
(b) on the ground that the design was not registrable in accord-
ance with section 16 ,o r
(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 onthe ground that the design would be contrary to public policy ormorality, and the Controller may make such order on the applicationas 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 theperson whose name is entered in the Register as the proprietor ofthe 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 adesign on the ground that the design is in conflict with a prior design.[2001.] Industrial Designs Act , 2001. [ No. 39.]
(5) In this section, ‘‘prior design’’ has the meaning assigned to it
bysection 15(2) .
(6) The Controller may, on the application of any person so
entitled for invalidation of the registration of a design on the groundthat a distinctive sign which is registered as a trade mark under theTrade 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 con-
cerned by the use for the invalidation of the registration of a designor on the initiative of the Controller, where the design consists of orincludes anything which would not be registered by virtue of section9, 62 or 63 of the Trade Marks Act, 1996, make such order as he orshe 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 con-
flicting 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 maydirect.
(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 require-ments for registration under this Act and the identity of the designis retained.
(12) A registration under subsection (11) may be accompanied by
a partial disclaimer by the registered proprietor or by entry in theRegister of a court decision declaring the partial invalidity of thedesign right.
Chapter 6
Exceptions to Design Right Protection
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 withfair trade practice and do not unduly prejudice the nor-mal exploitation of the design, and that mention is madeof the source.
25Pt.2 S.47
Acts permitted.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.48
Compulsory
licences.
Prior use.
26(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.
49.—(1) At any time after a design has been registered, any per-
son may apply to the Controller for the grant of a compulsory licencein 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 memberof 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 deedexecuted by the registered proprietor and all other necessary partiesgranting 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 thecircumstances which led to that order have changed or have ceasedto exist and are unlikely to recur, and the Controller may make anorder on such application upon such terms as he or she thinks fit,including terms which provide for the protection of the interests ofthe licensee concerned.
(4)Subsection (3) shall also apply to an order made under that
subsection.
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, thecontinued use of that design by that person for that purpose shallnot 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 theapplication for registration of the registered design or, where priorityis claimed, the date of priority of the registered design, and the useof which commenced before the said filing date or, as the case maybe, the said date of priority.
(3) The right conferred by this section may not be transmitted.[2001.] Industrial Designs Act , 2001. [ No. 39.]
Chapter 7
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 thedesign right is in force, undertakes or authorises another to under-take any act which is the exclusive right of the registered proprietorof the design.
(2) The design right is not infringed by the reproduction of a fea-
ture of the design which is not taken into account in determiningwhether the design is registrable.
52.—A person infringes the design right where he or she without
the licence of the registered proprietor of the design and while thedesign 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.
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) imports into the State, or
(d) has in his or her possession, custody or control,
an article specifically designed or adapted for applying to or incorpo-
rating in a product the design, knowing or having reason to believethat it has been or is to be used to make infringing products.
54.—(1) In this Act, a product shall be an ‘‘infringing product’’ in
relation to a registered design where—
(a) the application of the design to or the incorporation of the
design in the product is an infringement of the designright in the design,
(b) the product has been or is proposed to be imported into the
State and the application of the design to or incorpor-ation of the design in the product in the State would con-stitute an infringement of the design right in the design,or
(c) the use of the product in any other way infringes the design
right.
27Pt.2
Infringement of
design right.
Secondary
infringement ofdesign right.
Secondary
infringement:providing means forinfringement.
Meaning of
infringing productand article.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.54
Certificate of
contested validity ofregistration.
Groundless threats.
28(2) Nothing in subsection (1)(b) shall be construed as applying to
products which have been put on the market in a Member State ofthe EEA by or with the consent of the registered proprietor of thedesign.
(3) An article shall be an ‘‘infringing article’’ in relation to a regis-
tered design where it is specifically designed or adapted for applyingthe design to products and a person makes, sells or rents, or offersor exposes for sale or rent, or imports into the State, such an article,or has it in his or her possession, custody or control knowing orhaving reason to believe that it has been or is to be used to makeinfringing products.
Chapter 8
Remedies
55.—(1) Where in proceedings before the appropriate court the
validity of the registration of a design is contested and it is found bythat court that the design is validly registered, the court may certifythat finding and the fact that the validity of the registration of thedesign was contested in those proceedings.
(2) Where a certificate has been granted under subsection (1) , and
in any subsequent proceedings before the appropriate court forinfringement of the design right or for invalidation of the registrationof the design, a final order or judgement is made or given in favourof the party relying on the validity of the registration, that party shall,unless the court otherwise directs, be entitled to his or her costs asbetween solicitor and client.
(3)Subsection (2) shall not extend to the costs of an appeal in any
proceedings.
56.—(1) Where a person (whether or not the registered proprietor
of, or entitled to any design right in, or any other interest in a design)by circulars, advertisements or otherwise threatens another personwith proceedings for infringement of design right, a person aggrievedby the threats (whether or not he or she is the person to whom thethreats are made) may bring proceedings in the appropriate courtagainst the person making the threats for any such relief as is men-tioned in subsection (3) .
(2) In any proceedings under subsection (1) , the plaintiff shall,
where he or she proves that the threats were so made and satisfiesthe court that he or she is a person aggrieved by them, be entitledto the relief claimed unless—
(a) the defendant proves that the acts in respect of which the
proceedings were threatened constitute or, if undertaken,would constitute an infringement of the design right, and
(b) the plaintiff fails to show that the registration of the design
concerned is invalid.
(3) The relief referred to in subsections (1) and (2)shall be—
(a) a declaration to the effect that the threats complained of are
unjustifiable,
(b) an injunction against the continuance of the threats, and[2001.] Industrial Designs Act , 2001. [ No. 39.]
(c) such damages, if any, as have been sustained by the plaintiff
by reason of the threats.
(4) For the purposes of this section, a notification of the existence
of a registered design does not of itself constitute a threat of pro-ceedings within the meaning of this section.
(5) In this section, ‘‘a person aggrieved’’ shall not include a person
making or importing any object.
57.—(1) An infringement of the design right is actionable by the
registered proprietor of the design.
(2) No proceedings shall be taken in respect of an infringement
committed before the date on which the certificate of registration ofthe design under this Act is granted.
(3) In an action for infringement of the design right under this
section, all relief by way of damages, injunction, account of profitsor otherwise is available to the plaintiff as it is available in respectof the infringement of any other property right.
58.—(1) Where in an action for the infringement of the design
right in a registered design, it is shown that at the time of theinfringement the defendant did not know and had no reason tobelieve that the design was registered, the plaintiff shall not beentitled to damages against the defendant and no order shall bemade for an account of profits.
(2) For the purposes of subsection (1) , a person shall not be
regarded as knowing or having reason to believe that the design wasregistered by reason only of the application to a product, or to anyprinted matter accompanying a product, of the word ‘‘registered’’, orany word or words or abbreviation expressing or implying that adesign has been registered, unless the registration number of thedesign accompanied the word or words or abbreviation concerned.
(3) Nothing in this section shall affect the power of the appropri-
ate court to grant an injunction in any proceedings for the infringe-ment of the design right in a registered design.
(4) In an action for infringement of design right, the appropriate
court may, if it thinks fit, refuse to award any damages or make anorder for an account of profits in respect of an infringement commit-ted at any time during the period referred to in subsection (4) of
section 43 but before the fees referred to in that subsection are paid.
59.—In addition to or as an alternative to awarding compensation
to a plaintiff for financial loss, the appropriate court may awardaggravated or exemplary damages or both aggravated and exemplarydamages.
60.—(1) Where, in proceedings for infringement of the design
right in a design in respect of which a licence is available as of right,the defendant undertakes to take a licence on such terms as may beagreed or, in default of agreement, settled by the Controller—
(a) no injunction shall be granted against the defendant,
29Pt.2 S.56
Infringement
actionable byregisteredproprietor.
Innocent
infringement.
Award of damages
in infringementaction.
Undertakings
concerning licencesof right.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.60
Order for delivery
up in civil cases.
Application to
District Court forseizure of infringingproducts or articles.
30(b) no order for delivery up shall be made under section 61 , and
(c) the amount recoverable against the defendant by way of
damages or on an account of profits shall not exceed 3times the amount which would have been payable by thedefendant as licensee where a licence on those terms hadbeen granted before the earliest infringement.
(2) An undertaking under subsection (1) may be given at any time
before the final order in the proceedings without any admission ofliability.
(3) Nothing in this section shall affect the remedies available in
respect of an infringement committed before a licence was availableas of right.
61.—(1) Where a person in the course of a business, trade or pro-
fession has in his or her possession, custody or control infringingproducts or articles the registered proprietor of the design may applyto the appropriate court for an order that the infringing products or
articles be delivered up to him or her or to such other person as thecourt may direct.
(2) An application under subsection (1) shall not be made after
the expiration of the period specified in subsection (1) ofsection 71
as being the limit of the period for delivery up and no order shall bemade unless the appropriate court also makes, or it appears to theappropriate court that there are grounds for making, an order as tothe disposal of an infringing product or article.
(3) A person to whom an infringing product or article is delivered
up pursuant to an order made under this section shall, where anorder under section 72 as to the disposal of the infringing product or
article is not made, retain it pending the making of an order, or thedecision not to make an order, under that section.
62.—(1) Where the registered proprietor of a design applies to
the District Court, it may, where satisfied that there are reasonablegrounds for believing that there are being hawked, carried about ormarketed infringing products or articles, authorise by order a mem-ber of the Garda Sı ´ocha´na accompanied by such other members of
the Garda Sı ´ocha´na or other person or persons as that member
thinks proper, to seize without warrant the products or articles andto bring them before the District Court.
(2) On being satisfied that any product or article referred to in
subsection (1) is an infringing product or article the District Court
may order the product or article to be destroyed or to be deliveredup to the registered proprietor or otherwise dealt with as the Courtmay think fit.
(3) In an application to the District Court under subsection (1)
or, in any ex parte application or interlocutory motion to a court of
competent jurisdiction for an order which would permit the applicantto enter and search a premises or place specified in that order andtake possession of material found in those premises or that place onterms set out in such order, the court hearing such an applicationmay receive hearsay evidence to the effect that the witness ordeponent believes that the material may be found in a particularlocation.[2001.] Industrial Designs Act , 2001. [ No. 39.]
(4) A witness or deponent shall not be obliged to indicate the
source of the information upon which that witness formed the beliefthat material may be found in a particular location.
(5) After the implementation of an order made under this section,
the appropriate court may, on the application of a person aggrievedby it, award damages against the applicant for the order as it con-siders just, on being satisfied that—
(a) no infringement of design right has been established, and
(b) the information on which the registered proprietor applied
for the order was given maliciously.
Chapter 9
Rights and Remedies of Exclusive Licensees
63.—(1) An exclusive licensee has, except as against the registered
proprietor, the same rights and remedies in respect of matters occur-ring after the grant of the licence as if the licence had been an assign-ment, from the date on which an application is made for registrationof his or her interest under subsection (1) ofsection 41 .
(2) The rights and remedies of an exclusive licensee shall be con-
current with those of the registered proprietor and references to theregistered proprietor in the provisions of this Act relating to infringe-ment shall be construed accordingly.
(3) In an action brought by an exclusive licensee under this
section, a defendant may avail himself or herself of any defencewhich would have been available to him or her if the action had beenbrought by the registered proprietor.
(4) In awarding damages in any proceedings taken by an exclusive
licensee by virtue of this section, the appropriate court may take intoconsideration only the losses suffered or likely to be suffered by theexclusive licensee as a result of the infringement.
64.—(1) Where proceedings for infringement of design right
brought by the registered proprietor or an exclusive licensee relate(wholly or partly) to an infringement in respect of which they haveconcurrent rights of action, the registered proprietor or, as the casemay be, the exclusive licensee may not, without the leave of theappropriate court, proceed with the action unless the other is eitherjoined as a plaintiff or added as a defendant.
(2)Subsection (1) shall not affect the granting of interlocutory
relief on an application by a registered proprietor or exclusivelicensee alone.
(3) A person who is added as a defendant as mentioned in subsec-
tion (1) shall not be liable for any costs in the action unless he or she
takes part in the proceedings.
(4) Where an action for infringement of design right is brought
which relates (wholly or partly) to an infringement in respect ofwhich the registered proprietor and an exclusive licensee have or hadconcurrent right of action—
31Pt.2 S.62
Rights and
remedies ofexclusive licensees.
Exercise of
concurrent rights.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.64
Rights and
remedies oflicensees.
32(a) the appropriate 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 dam-
ages has been made, or an account of profits has beendirected, in favour of the other of them in respect of theinfringement, and
(c) the appropriate court shall, if an account of profits is
directed, apportion the profits between them as the courtconsiders just, subject to any agreement between them.
(5) The registered proprietor shall notify any exclusive licensee
who has a concurrent right of action before applying for an orderunder section 61 and the appropriate court may on the application
of the licensee make such order under that section as it thinks fithaving regard to the terms of the licence.
(6) This section shall have effect subject to any agreement to the
contrary between the exclusive licensee and the registeredproprietor.
Chapter 10
Rights and Remedies of Licensees
65.—(1) A licensee is entitled to invite the registered proprietor
of a design to take infringement proceedings in respect of any matterwhich affects the licensee’s interests, from the date on which appli-cation is made for registration of his or her interest under subsection
(1)ofsection 41 .
(2) Where the registered proprietor—
(a) refuses to take proceedings when called upon under subsec-
tion (1) ,o r
(b) fails to do so within 2 months after being so called upon,
the licensee may bring the proceedings in his or her own name as if
he or she were the registered proprietor.
(3) Where infringement proceedings are brought by a licensee
under this section, the licensee may not, without the leave of theappropriate court, proceed with the action unless the registered pro-prietor is either joined as a plaintiff or added as a defendant.
(4)Subsection (3) shall not affect the granting of interlocutory
relief on an application by a licensee alone.
(5) A registered proprietor who is added as a defendant under
subsection (3) shall not be liable for any costs in the action unless he
or she takes part in the proceedings.
(6) In infringement proceedings brought by the registered pro-
prietor the appropriate court shall take into account any loss sufferedby licensees.[2001.] Industrial Designs Act , 2001. [ No. 39.]
Chapter 11
Offences
66.—(1) A person who without the licence of the registered pro-
prietor of a design and while the design right is in force—
(a) uses, otherwise than for his or her private and domestic use,
(b) makes for sale or rent,
(c) sells or rents, or offers or exposes for sale or rent,
(d) imports into the State, otherwise than for his or her private
and domestic use,
(e) exports, or
(f) 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, shall be guilty of an offence.
(2) A person who—
(a) makes,
(b) sells or rents, or offers or exposes for sale or rent,
(c) imports into the State, or
(d) has in his or her possession, custody or control,
an article specifically designed or adapted for applying to or incorpo-
rating in a product a design, knowing or having reason to believethat it has been or is to be used to make infringing products, shallbe guilty of an offence.
(3) An offence shall not be committed under subsection (1) by the
undertaking of an act which under this Act may be undertaken with-out infringing the design right.
(4) A person guilty of an offence under this section shall be
liable—
(a) on summary conviction, to a fine not exceeding \1,905
(£1,500) in respect of each infringing product or article,or to imprisonment for a term not exceeding 12 months,or both, or
(b) on conviction on indictment, to a fine not exceeding
\127,000 (£100,000), or to imprisonment for a term not
exceeding 5 years, or both.
67.—A person who makes or causes to be made a false entry in
the Register, or falsely claims, in writing or otherwise, something tobe a copy or reproduction of an entry in the Register, or producesor tenders or causes to be produced or tendered in evidence any suchthing, knowing or having reason to believe the entry or thing to befalse, shall be guilty of an offence and shall be liable—
33Pt.2
Offences.
Falsification of
register.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.67
False
representation.
Order for delivery
up in criminalproceedings.
34(a) on summary conviction, to a fine not exceeding \1,905
(£1,500) or to imprisonment for a term not exceeding 12months, or both, or
(b) on conviction on indictment, to a fine, or to imprisonment,
or both.
68.—(1) Where a person falsely represents that a design applied
to a product disposed of by him or her in the State for valuableconsideration is registered, knowing or having reason to believe thatthe representation is false, he or she shall be guilty of an offence.
(2) For the purposes of this section, a person who in the State
disposes of a product for valuable consideration having stamped,engraved or impressed thereon or otherwise applied to it the word‘‘registered’’ or anything expressing or implying that a design appliedto the product is a registered design, shall be deemed to have madea representation as to registration under this Act unless it is shownthat the reference is to registration elsewhere than in the State andthat the design is so registered.
(3) Where any person, after the design right in a design has
expired, marks any product to which the design has been appliedwith the word ‘‘registered’’, or any word or words implying that thereis a subsisting right in the design under this Act, or causes any suchproduct to be so marked, he or she shall be guilty of an offence.
(4) A person guilty of an offence under subsection (1) or(3)shall
be liable on summary conviction to a fine not exceeding \1,905
(£1,500).
69.—(1) The court may, on conviction of a person or being satis-
fied that there is a prima facie case to answer, where the court is
satisfied that at the time of the arrest or charge the person had inhis or her possession, custody or control—
(a) in the course of a business, trade or profession, a product,
knowing or having reason to believe it to be an infringingproduct, or
(b) an article, knowing or having reason to believe it to be an
infringing article,
order that the infringing product or article be delivered up to the
registered proprietor of the design or to such other person as thecourt may direct.
(2) An order under this section may be made by the court of its
own motion, or on the application of the person bringing a pros-ecution, and may be made whether or not the person accused is con-victed of the offence, but shall not be made—
(a) after the expiration of the period specified in subsection (3)
ofsection 71 as being the limit of the period for delivery
up, or
(b) where it appears to the court unlikely that any order will
be made as to the disposal of the infringing products orarticles.[2001.] Industrial Designs Act , 2001. [ No. 39.]
(3) A person to whom an infringing product or article is delivered
up pursuant to an order made under this section shall retain it pend-ing the making of a final order or decision not to make an order, asthe case may be.
70.—(1) Where a judge of the District Court is satisfied by infor-
mation on oath that there are reasonable grounds for suspecting—
(a) that an offence under section 66 has been, or is about to be,
committed in, on or at any premises or place, and
(b) that evidence that such an offence has been, or is about to
be, committed is in, on or at those premises or that place,
the District Court may issue a warrant authorising a member of the
Garda Sı ´ocha´na, accompanied by such other members of the Garda
Sı´ocha´na or other person or persons as that member thinks proper,
at any time or times within 28 days from the date of the issue of thewarrant on production where requested of that warrant to enter andsearch the premises or place specified in the warrant using reason-able force where necessary, and to do all or any of the following acts:
(i) to seize any products or articles in respect of which he or
she has reasonable ground for suspecting that an offenceunder section 66 has been or is about to be committed;
(ii) to make an inventory or prepare other evidence of infringe-
ment of design right or potential infringement of designright;
(iii) to seize anything found there which he or she believes on
reasonable grounds may be required to be used in evi-dence in any proceedings brought in respect of an offenceunder this Act;
(iv) to require any person found there to give his or her name
and address.
(2) A warrant issued under this section may authorise persons,
including the registered proprietor or his or her designated represen-tative, to accompany and assist any member of the Garda Sı ´ocha´na in
executing the warrant or in collating any inventory or other evidence.
(3) A person who—
(a) obstructs or interferes with a person acting under the auth-
ority of a warrant issued under this section,
(b) is found in, on or at the premises or place specified in the
warrant by a member of the Garda Sı ´ocha´na acting as
aforesaid and who fails or refuses to give the member hisor her name and address when required to do so or givesa name or address that is false or misleading,
(c) obstructs the exercise of an authority conferred by a warrant
under this section, or
(d) fails or refuses to give information to a member of the
Garda Sı ´ocha´na when requested to do so under this
section,
shall be guilty of an offence and shall be liable on summary convic-
tion to a fine not exceeding \1,905 (£1,500), or to imprisonment for
a term not exceeding 12 months, or both.
35Pt.2 S.69
Search and seizure
in criminal cases.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2
Period after which
remedy of deliveryup is not available.
Order as to disposal
of infringingproduct or article.
36Chapter 12
Delivery Up and Disposal
71.—(1) Subject to subsection (2) , an application for an order
under section 61 may not be made after the expiration of 6 years
from the date on which the infringing product or article was made.
(2) Where, during the whole or any part of the period referred to
insubsection (1) , the registered proprietor—
(a) is under a disability, or
(b) is prevented by fraud or concealment from discovering the
facts entitling him or her to apply for an order,
an application under section 61 may be made at any time before the
expiration of 6 years from the date on which the applicant ceased tobe under a disability or, as the case may be, could, with reasonablediligence, have discovered those facts.
(3) An order for delivery up in criminal proceedings under section
69shall not, in any case, be made after the expiration of 6 years from
the date on which the proceedings under that section were initiated.
(4) Where in any proceedings for an order for delivery up under
section 61 or69the date of the making of the infringing product or
article is put into question by the defendant, the onus of proof shallbe on the defendant that the infringing product or article was mademore than 6 years before the date on which an application for anorder under section 61 was made or proceedings under section 69
were initiated.
72.—(1) An application may be made to the court for an order
that an infringing product or article—
(a) delivered up under section 61 or69,or
(b) seized and detained under section 62 or70,
shall be—
(i) forfeited to the registered proprietor, or
(ii) destroyed or otherwise dealt with as the court may direct,
and the court may make such an order or such other order as it
thinks fit.
(2) In considering what order, if any, should be made under sub-
section (1) the court shall consider whether other remedies available
in an action for infringement of the design right would be adequateto compensate the registered proprietor and to protect his or herinterests.
(3) Provision shall be made by rules of the court as to the service
of notice on persons having an interest in the products or articlesconcerned, and any such person may—
(a) appear in proceedings for an order under this section
whether or not he or she was served with notice, or[2001.] Industrial Designs Act , 2001. [ No. 39.]
(b) appeal against any order made, whether or not he or she
appeared in the proceedings concerned.
(4) An order made under this section shall not take effect until
the expiration of the period within which notice of an appeal may begiven, or, where before the expiration of that period notice of appealis duly given, until the final determination or abandonment of theproceedings on the appeal.
(5) Where there is more than one person interested in a product
or article, the court shall make such order as it thinks fit and maydirect the product or article to be sold or otherwise dealt with andany proceeds divided in accordance with the direction of the court.
(6) Where the court decides that no order shall be made under
this section, the person who had the product or article in his or herpossession, custody or control immediately before it was deliveredup or seized shall be entitled to its return.
(7) References in this section to a person having an interest in a
product or article include any person in whose favour an order maybe made under this section in respect of the product or article orunder section 145 or 264 of the Copyright and Related Rights Act,2000, or under section 23 of the Trade Marks Act, 1996.
Chapter 13
Provision for Preventing Importation
73.—(1) The registered proprietor of a design may give notice in
writing to the Revenue Commissioners—
(a) that he or she is the registered proprietor, and
(b) that he or she requests the Revenue Commissioners for a
period specified in the notice to treat infringing productsor infringing articles as prohibited goods.
(2) The period specified in a notice given under subsection (1)
shall not exceed 5 years and shall not extend beyond the period forwhich design right is to subsist.
(3) The registered proprietor may give notice in writing to the
Revenue Commissioners—
(a) that he or she is the registered proprietor,
(b) that infringing products or articles referred to in subsection
(1)(b) are expected to arrive in the State at a time and a
place specified in the notice, and
(c) that he or she requests the Revenue Commissioners to treat
those products or articles as prohibited goods.
(4) When a notice given under subsection (1) is in force, the
importation of goods to which the notice relates, other than productsimported by a person for his or her private and domestic use, isprohibited.
37Pt.2 S.72
Infringing products
or articles may betreated asprohibited goods.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.73
Power of Revenue
Commissioners tomake regulations.
Exhaustion of
design right.
38(5) Notwithstanding subsection (4) or anything contained in the
Customs Acts, a person is not, by reason of the prohibition, liable toany penalty under the Customs Acts other than forfeiture of theprohibited goods.
(6) In this section, ‘‘prohibited goods’’ means counterfeit or
pirated goods within the meaning of the European Communities(Counterfeit and Pirated Goods) Regulations, 1996 (S.I. No. 48 of1996).
74.—(1) The Revenue Commissioners may prescribe the form in
which notice is to be given under section 73 and require a person
giving notice—
(a) to furnish the Revenue Commissioners with such evidence
as may be prescribed, either on giving notice or when thegoods are imported, or at both these times, and
(b) to comply with such other conditions as may be prescribed.
(2) Regulations made under this section may require a person giv-
ing a notice under section 73 —
(a) to pay such fees in respect of the notice as may be specified
by the Revenue Commissioners from time to time,
(b) to give such security as may be so specified by the Revenue
Commissioners in respect of any liability or expensewhich the Revenue Commissioners may incur in con-sequence of the notice given by reason of the detentionof any infringing product or article or anything done toany infringing product or article detained, and
(c) to indemnify the Revenue Commissioners against any such
liability or expense whether security has been given ornot.
(3) Regulations made under this section may make different pro-
visions in respect of different classes of case to which they applyand may include such incidental and supplementary provisions as theRevenue Commissioners consider expedient from time to time.
(4) A fee paid pursuant to regulations made under this section
shall be accounted for in such manner as shall be prescribed by theMinister for Finance.
Chapter 14
Exhaustion of Design Right
75.—The design right shall not be infringed by the doing of any-
thing in relation to products to which the design has been applied or
is incorporated where such products have been put on the market ina Member State of the EEA by or with the consent of the registeredproprietor.[2001.] Industrial Designs Act , 2001. [ No. 39.]
Chapter 15
Assignment and Licensing
76.—(1) The design right is transmissible by assignment, testa-
mentary disposition or operation of law, as personal or moveableproperty.
(2) Any equities in respect of the design right may be enforced in
like manner as in respect of any other personal property.
(3) An assignment or mortgage of a design right, or a vesting
assent relating to it, shall not be effective unless it is in writing signedby or on behalf of the assignor, mortgagor or party granting suchassent or, as the case may be, a personal representative and thisrequirement may be satisfied in a case where the assignor, mortgagoror party granting the assent or personal representative is a body cor-porate by the affixing of its seal.
(4) Until an application has been made for registration of a trans-
action referred to in this section under section 41 —
(a) the transaction shall be ineffective as against a person
acquiring a conflicting interest in or under the designright in ignorance of it; and
(b) a person claiming to be a licensee by virtue of the trans-
action shall not be entitled to the rights and remediesconferred by sections 63 and 65.
(5) Where there is more than one registered proprietor of a
design, no registered proprietor shall, without the consent of each ofthe others, grant a licence under the design right or assign or mort-gage a share in it.
(6) An assignment may be partial so as to apply to—
(a) one or more but not all of the acts the registered proprietor
has the exclusive right to undertake or authorise, or
(b) part but not the whole of the period for which the design
right is to subsist.
77.—(1) In this Act, an ‘‘exclusive licence’’ means a licence auth-
orising the licensee, to the exclusion of all other persons includingthe person granting the licence, to use a registered design in themanner authorised by the licence and references in this Act to‘‘exclusive licensee’’ shall be construed accordingly.
(2) An exclusive licensee has the same rights against a successor
in title who is bound by the licence as the exclusive licensee has
against the person granting the licence.
78.—(1) Until an application has been made for registration of a
transaction referred to in this section under section 41 —
(a) the transaction shall be ineffective as against a person
acquiring a conflicting interest in or under the registereddesign in ignorance of it, and
39Pt.2
Assignment.
Exclusive licences.
Licensing of
registered designs.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.78
Geneva Act of the
Hague Agreement.
40(b) a person claiming to be a licensee by virtue of the trans-
action shall not be entitled to the rights and remediesconferred by sections 63 and 65.
(2) A licence may be partial so as to apply to—
(a) one or more but not all of the acts that the registered pro-
prietor has the exclusive right to undertake or authorise,or
(b) part but not the whole of the period for which the design
right is to subsist.
(3) A licence, including an exclusive licence, granted in respect of
a design right shall not be effective unless it is in writing and signedby or on behalf of the grantor and this requirement may be satisfiedin a case where the grantor is a body corporate by the affixing of itsseal.
(4) Unless the licence provides otherwise, it shall be binding on a
successor in title to the grantor’s interest in the design, except a pur-chaser in good faith for valuable consideration and without notice ofthe licence or a person deriving title from such a purchaser, andreferences in this Act to undertaking any act with or without theconsent of the registered proprietor shall be construed accordingly.
(5) References in this Act to a licence or licensee include a sub-
licence or sub-licensee.
Chapter 16
International Arrangements
79.—(1) In this Act—
‘‘Hague Agreement’’ means the Geneva Act of the Hague Agree-
ment concerning the International Registration of Industrial Designs,adopted at Geneva on 2 July, 1999;
‘‘International Bureau’’ has the meaning given by Article 1 of the
Hague Agreement;
‘‘international design’’ means a design which is entitled to protection
in the State under the Hague Agreement.
(2) The Minister may prescribe such matters as he or she con-
siders appropriate for giving effect in the State to the provisions ofthe Hague Agreement.
(3) The proprietor of an international design designating the State
shall, as respects the State, have the same rights and remedies andbe subject to the same conditions as an applicant for registrationunder this Act or, as the case may be, the registered proprietor of adesign registered under this Act.[2001.] Industrial Designs Act , 2001. [ No. 39.]
Chapter 17
Proceedings before the Controller or the Courts
80.—Where any discretionary power is, by or under this Act, given
to the Controller, that power shall not be exercised adversely to anapplicant for registration of a design or a registered proprietor of adesign or to a party in proceedings before the Controller withoutthat applicant, proprietor or party being given an opportunity ofbeing heard as regards the exercise of that power.
81.—(1) The Controller may, in any proceedings before him or
her under this Act, order the payment to any party of such costs (ifany) as the Controller may consider reasonable and direct how andby what party they are to be paid, and any such order may, by leaveof the High Court, be enforced in the same manner as a judgementor order of the High Court to the same effect.
(2) Where, under this Act, a party who neither resides nor carries
on business in the State or in any other state which may be pre-scribed is a party to any proceedings before the Controller, the Con-troller or, in the case of any appeal, the High Court, may requirethat party to give security for the costs of the proceedings.
(3) Where a requirement under subsection (2) is not complied
with, the Controller or, as the case may be, the High Court may treatthe proceedings as abandoned.
82.—In subsection (1) of section 92 (as amended by section 73 of
the Trade Marks Act, 1996) of the Patents Act, 1992 (which relatesto evidence in proceedings before the Controller under that Act orany other enactment), after ‘‘before the Controller (including pro-ceedings under the Trade Marks Act, 1996’’, there shall be inserted‘‘, and the Industrial Designs Act, 2001 ’’ and the section as so
amended is set out in the Table to this section.
TABLE
In any proceeding under this or any other enactment before the Controller
(including proceedings under the Trade Marks Act, 1996, and the Industrial
Designs Act, 2001 ), evidence shall be given by statutory declaration in the
absence of directions to the contrary; but in any case in which the Controllerthinks it right so to do he may take evidence viva voce in lieu of or in addition
to evidence by such declaration.
83.—In proceedings before the courts under this Act, the Control-
ler shall not be awarded costs and shall not be ordered to pay thecosts of any other party.
84.—(1) Except as otherwise provided by this Act, an appeal lies
to the High Court from any decision or order of the Controller underthis Act within the period of 3 months from the date of the decisionor order of the Controller.
(2) An appeal from a decision of the High Court under this
section shall lie to the Supreme Court on a specified point of law byleave of the High Court.
41Pt.2
Exercise of
discretionarypowers ofController.
Costs and security
for costs.
Evidence before the
Controller.
Costs of Controller
in proceedings.
Appeals.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2
Power of Minister
to makeregulations.
Rights of State in
respect of registereddesigns.
42Chapter 18
Miscellaneous
85.—(1) The Minister may make regulations for the purpose of
enabling this Act to have full effect.
(2) Regulations made under this section may contain such inciden-
tal, supplementary or consequential provisions as appear to the Mini-ster to be necessary or expedient for the purposes of this Act.
(3) The Minister may make regulations for prescribing any matter
referred to in this Act as prescribed.
(4) The Government or the Minister, as the case may be, may by
order amend or revoke an order made by the Government or theMinister under this Act including an order made under this subsec-tion (other than a commencement order).
86.—(1) Subject to this section, the registration of a design shall
have the same effect as against the State as it has against anindividual.
(2) A Minister of the Government may, by himself or herself or
by such of his or her officers, servants or agents as may be authorisedin writing by him or her or by any other person acting on his or herbehalf, at any time after the application for registration of a designunder this Act, use the design for the service of the State—
(a) on such terms as may, either before or after the use thereof,
be agreed on with the consent of the Minister for Financebetween that Minister of the Government and the appli-cant or, as the case may be, the registered proprietor, or
(b) in default of agreement, on such terms as may be settled in
the manner provided under this section,
and the terms of any agreement or licence concluded between the
applicant or, as the case may be, the registered proprietor and anyperson other than a Minister of the Government shall be inoperativeso far as it concerns the use of the design for the service of the State.
(3) Where a registered design has, before the date of registration
or, where priority is claimed, the date of priority, been duly recordedin a document or embodied in a model by a Minister of the Govern-ment (such design not having been communicated directly orindirectly by the applicant for the registration or, as the case may be,the registered proprietor) any Minister of the Government or suchof his or her officers, servants or agents as may be authorised inwriting by him or her, may use the design so recorded for the serviceof the State free of royalty or any other payment to the applicant or,as the case may be, the registered proprietor, notwithstanding theexistence of the design right.
(4) For the purposes of subsection (3) , where, in the opinion of
that Minister of the Government, the disclosure to the applicant or,as the case may be, the registered proprietor of the documentrecording the design or the model embodying the design would bedetrimental to the public interest, such disclosure may be made confi-dentially to counsel on behalf of the applicant or registered pro-prietor or to any independent expert mutually agreed upon.[2001.] Industrial Designs Act , 2001. [ No. 39.]
(5) In case of a dispute as to the use of a design under this section,
the terms therefor or as to the existence or scope of any recordreferred to in subsection (3) , the matter shall be referred to the High
Court for decision, and the High Court shall have the power to referthe whole matter or any question or issue of fact thereon to be heardby an arbitrator upon such terms as it may direct.
(6) The High Court or arbitrator, in settling a dispute referred to
insubsection (5) , shall be entitled to take into consideration any
benefit or consideration which the applicant or registered proprietoror any other person interested in the design may have receiveddirectly or indirectly from the State in respect of such use of thedesign.
(7) Notwithstanding subsection (5) , an arbitrator appointed under
that subsection shall make his or her finding within 3 months of thereference from the High Court, or within such further period of timeas may be agreed with the High Court.
(8) In any proceedings under this section, the Minister of the
Government who is a party to the proceedings may—
(a) put in question the validity of the relevant registration with-
out applying for its invalidation, or
(b) if the registered proprietor of the design is party to the pro-
ceedings, apply for the invalidation of the registration onany ground upon which a registration may be invalidatedunder this Act.
(9) The right to use a design for the service of the State under this
section shall include the power to sell or rent, or offer for sale orrent, any products made in pursuance of such right which are nolonger required for the service of the State.
(10) Nothing in this section shall affect the right of the State or of
any person deriving title directly or indirectly from the State to sell,rent or use any articles forfeited under the Customs Acts.
(11) Any person who acquires products disposed of, sold or rented
in the exercise of powers conferred by this section and any personclaiming under him or her shall have the power to deal with theproducts in the same manner as if they had been made pursuant toa design right held on behalf of the State.
(12) In this Act, ‘‘service of the State’’ means a service financed
out of moneys charged on or advanced out of the Central Fund ormoneys provided by the Oireachtas or by a local authority for thepurposes of the Local Government Act, 1941.
87.—(1) This section applies to communications in respect of any
matter relating to the protection of a design.
(2) Any communication to which this section applies—
(a) between a person and his or her registered agent, or
(b) for the purposes of obtaining or in response to a request for
information which a person is seeking for the purpose ofinstructing his or her registered agent,
43Pt.2 S.86
Privileged
communications.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.87
Recognition of
agents.
44is privileged from disclosure in legal proceedings in the State in the
same way as a communication between a person and his or her solici-tor or, as the case may be, a communication for the purpose ofobtaining or in response to a request for information which a personseeks for the purpose of instructing his or her solicitor.
(3) In subsection (2) , ‘‘registered agent’’ means:
(a) a registered trade mark agent;
(b) a registered patent agent.
(4) Section 94(2) of the Patents Act, 1992, is hereby amended by
the deletion of ‘‘, design’’ and the said subsection shall be construedand have effect accordingly.
88.—(1) Whenever, under this Act, an act has to be undertaken
by or done to a person in connection with the registration of a designor any procedure relating to a registered design or a design right, theact may be undertaken by or done to an agent—
(a) who is authorised by that person orally or in writing; and
(b) who is a registered patent agent or a registered trade mark
agent.
(2) A registered patent agent or a registered trade mark agent
duly authorised by a person under subsection (1) to act as his or her
agent may, subject to any agreement to the contrary between theagent and that person, on giving notice to the Controller and thatperson, cease to act as agent for that person.
(3) In this Act, ‘‘registered patent agent’’ shall have the same
meaning as ‘‘patent agent’’ in the Patents Act, 1992.
(4) Part X (Patent Agents) of the Patents Act, 1992, shall apply
in respect of registered patent agents under this Act as it applies inrespect of patent agents under the Patents Act, 1992.
(5) In this Act, ‘‘registered trade mark agent’’ shall have the same
meaning as ‘‘registered trade mark agent’’ in the Trade Marks Act,1996.
(6) Part V (Trade Mark Agents) of the Trade Marks Act, 1996,
shall apply in respect of registered trade mark agents under this Actas it applies in respect of registered trade mark agents under theTrade Marks Act, 1996.
(7) The Minister may prescribe the maximum fees to be charged
by a registered patent agent or a registered trade mark agent inrespect of services provided in connection with the protection ofdesigns.
(8) Nothing in this Act shall be construed as prohibiting solicitors
or barristers from taking such part in proceedings under this Act ashas heretofore been taken by solicitors or barristers in connectionwith a design or any procedure relating to a design or the registrationthereof.
(9) A registered patent agent or a registered trade mark agent
shall not be guilty of an offence under section 58 of the SolicitorsAct, 1954 (which prohibits the preparation for reward of certain[2001.] Industrial Designs Act , 2001. [ No. 39.]
instruments by persons not legally qualified), by reason only of the
preparation by the agent of—
(a) a deed assigning the property in a design application or
design; or
(b) any document (not being a deed) for use in proceedings
under this Act before the Controller or the appropriatecourt.
89.—The Copyright and Related Rights Act, 2000, is hereby
amended by—
(a) the insertion of the following after section 31—
‘‘Duration of 31A.—The copyright in a design registered
copyright inunder the Industrial Designs Act, 2001 , shallrelation toexpire 25 years after the filing date of theregistered
application for registration of the design design.
under that Act or on the date of expiration of
the copyright under this Act, whichever is thesooner.’’,
(b) the deletion in section 79(2)( a) of ‘‘texture and materials’’
and the substitution of ‘‘texture or materials’’,
(c) the substitution in section 78 of ‘‘the Industrial Designs Act,
2001 ’’ for ‘‘the Act of 1927’’ in subsection (1)( a),
(d) the substitution in section 78 of ‘‘the Industrial Designs Act,
2001 ’’ for ‘‘the Act of 1927’’ in subsection (2),
(e) the insertion of the following after section 78—
‘‘Design78A.—(1) The copyright in a design docu-documentsment or model recording or embodying a and models.
design for anything other than an artistic work
or a typeface is not infringed by the makingof a product to the design or the copying of aproduct made to the design.
(2) The copyright in a design document or
a model recording or embodying a design foranything other than an artistic work or a type-face is not infringed by the issue to the public,or the inclusion in a film, broadcast or cableprogramme service, of anything the making ofwhich is, by virtue of subsection (1), not aninfringement of that copyright.
(3) In this section and section 78B—
‘design’ means the design of any aspect of the
shape or contours (whether internal orexternal) of the whole or part of a product,other than surface decoration;
‘design document’ means any record of a
design, whether in the form of a drawing, awritten description, a photograph, storing thework in any medium or otherwise;
45Pt.2 S.88
Amendment to
Copyright andRelated Rights Act,2000.[No. 39.] Industrial Designs Act , 2001. [2001.]
Pt.2 S.89
46‘product’ means any industrial or handicraft
item, including parts intended to be assembledinto a complex product, packaging, get-up,graphic symbols and typographical typefaces,but not including computer programmes; and
‘complex product’ means a product which is
composed of multiple components which canbe replaced permitting disassembly and re-assembly of the product.
Effect of78B.—(1) This section applies where anexploitation ofartistic work has been exploited, by or with design derived
from artistic the authorisation of the copyright owner, by—
work.
(a) making by an industrial process prod-
ucts falling to be treated for thepurposes of this Part as copies ofthe work, and
(b) marketing such products, in the State
or elsewhere.
(2) After the expiry of 25 years from the
end of the calendar year in which such prod-ucts are first marketed, the work may becopied by making products of any description,or doing anything for the purpose of makingproducts of any description, and anything maybe done in relation to products so made, with-out infringing the copyright in the work.
(3) Where only part of an artistic work is
exploited as mentioned in subsection (1), sub-section (2) applies only in relation to that part.
(4) The Minister may prescribe:
(a) the circumstances in which a product,
or any description of product, is tobe regarded for the purposes ofthis section as made by an indus-trial process;
(b) the exclusion from the operation of
this section such products of a pri-marily literary or artistic characteras the Minister thinks fit.
(5) In this section references to products do
not include films.’’,
(f) the deletion in section 85(2) of ‘‘15 years’’ and the substi-
tution of ‘‘25 years’’,
(g) the repeal of section 79(2).[2001.] Industrial Designs Act , 2001. [ No. 39.]
FIRST SCHEDULE
Transitional Provisions
1. A design that stands registered on the day on which this Act
comes into operation shall continue to be registered under the Indus-trial and Commercial Property (Protection) Acts, 1927 to 1958, andthose Acts shall apply notwithstanding the coming into operation ofthis Act.
2. For the purposes of this Schedule, an application for the regis-
tration of a design under the Industrial and Commercial Property(Protection) Acts, 1927 to 1958, received by the Controller beforethe day on which the provisions of this Act relating to registrationproceedings come into operation in respect of which a registrationhas not been effected (other than an application which has beenabandoned or refused) shall, notwithstanding the coming into oper-ation of this Act, be treated in accordance with the Industrial andCommercial Property (Protection) Acts, 1927 to 1958, and the pro-visions of those Acts shall also apply to that design, if registered.
3. Notwithstanding paragraph 2 , an application for the registration
of a design under the Industrial and Commercial Property(Protection) Acts, 1927 to 1958, received by the Controller beforethe day on which the provisions of this Act relating to registrationproceedings come into operation in respect of which a registrationhas not been effected (other than an application which has beenabandoned or refused) may be registered under this Act where theapplicant gives notice to the Controller requesting that the regis-tration of the design be determined in accordance with this Act andotherwise satisfies the Controller that the application is a valid appli-cation for the purposes of this Act.
4. Notice given under paragraph 3 shall be in the prescribed form,
shall be accompanied by the prescribed fee and shall not be validunless it is received by the Controller within 6 months of the cominginto operation of this Act and before the Controller registers thedesign under the Industrial and Commercial Property (Protection)Acts, 1927 to 1958.
5. Notice given under paragraph 3 shall be irrevocable.
6. Where copyright did not subsist in a design by virtue of section
172 of the Industrial and Commercial Property (Protection) Act,1927, before the commencement of this Act, then copyright shall notsubsist in that design on or after such commencement.
47Section 4 .[No. 39.] Industrial Designs Act , 2001. [2001.]
Section 4 .
48SECOND SCHEDULE
Repeals
(1) (2) (3)
Number and Year Short Title of Act Extent of Repeal
No. 16 of 1927 Industrial and Commercial Property All remaining provisions
(Protection) Act, 1927
No. 13 of 1929 Industrial and Commercial Property All remaining provisions
(Protection) (Amendment) Act, 1929
No. 45 of 1947 Industrial and Commercial Property All remaining provisions
(Protection) (Neuchatel Agreement)Act, 1947
No. 32 of 1949 Industrial and Commercial Property All remaining provisions
(Protection) (Amendment) Act, 1949
No. 13 of 1957 Industrial and Commercial Property All remaining provisions
(Protection) (Amendment) Act, 1957
No. 21 of 1958 Industrial and Commercial Property All remaining provisions
(Protection) (Amendment) Act, 1958
No. 10 of 1963 Copyright Act, 1963 All remaining provisions