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Be Careful What You Wish For Part 2

Written by Michael Coyle on 16 February 2008

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Registered Design and threats

The law has been busy in establishing threat legislation over the years. Threats of proceedings for infringement of a patent include a UK or European patent (section 77(1)(b), Patents Act 1977). Threats of proceedings for infringement of a trade mark include UK, Community and International trade marks (section 52(3) and 54(3) TMA; Regulation 4, Community Trade Mark Regulations 1996 (SI 1996/1908); and Article 4, Trade Marks (International Registration) Order 1996 (SI 1996/714)).

Under Regulation 2 of the Community Design Regulations 2005 (SI 2005/2339), Community designs (both registered and unregistered) now come within the scope of existing UK threats legislation (namely section 26 of the RDA for registered designs and section 253 of the CDPA for unregistered designs).

On 12 December 2001, the European Commission adopted Council Regulation (EC) No 6/2002 on Community Designs (the EC Design Regulation) creating a regime for protecting industrial designs throughout the EU. The EC Design Regulation introduced a registered Community design which is administered by the Office of Harmonisation in the Internal Market (OHIM) and the unregistered Community design right which is similar, but not identical, to the UK design right.

The Regulations provide for the following:

A remedy for groundless threats of infringement proceedings relating to a Community design (Regulation 2). This provision reflects existing UK design legislation, namely section 26 of the Registered Deigns Act 1949 (RDA) for registered designs and section 253 of the Copyright, Designs and Patents Act 1988 (CDPA) for design right.

Privileged communications with designated professional design representatives (Regulation 4). In line with existing UK legislation under which general communications between a person and a registered patent or trade mark agent are privileged (section 280 of the CDPA and section 87 of the Trade Marks Act 1994), the Regulations extend this privilege to a "professional designs representative" who is on the special list of professional representatives for designs maintained under Article 78 of the EC Design Regulation.

Crown use of Community designs (Regulation 5). In the same way that the government has a right to use national registered and unregistered designs (section 12 of, and the First Schedule to, the RDA, and sections 240 to 244 and section 252 of the CDPA), the Regulations extend the Crown's rights to cover the use of Community designs. The detail of the right is set out in the Schedule to the Regulations.

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