Registered Designs
(Jersey) Law 1957[1]
A LAW to provide for the registration
in Jersey of designs registered in the United Kingdom, and for matters
incidental thereto
Commencement
[see endnotes]
1 Interpretation
(1) In
this Law, unless the context otherwise requires –
“complex product” means a product which is composed of
at least 2 replaceable component parts permitting disassembly and reassembly of
the product;
“Comptroller-General”
means the Comptroller General of Patents, Designs and Trade Marks in the United
Kingdom;
“design” means the appearance of the whole or part of a
product resulting from the features of, in particular, the lines, contours,
colours, shape, texture or materials of the product or its ornamentation;
“Government department”
means a department of Her Majesty’s Government in the United Kingdom;
“product” means any industrial or handicraft item other
than a computer program and includes, in particular, packaging, get-up, graphic
symbols, typographic type-faces and parts intended to be assembled into a complex
product;
“register” means
enter in the register of designs;
“register of designs”
means the register of designs kept in pursuance of Article 3;
“Registered Designs Act”
means the Registered Designs Act 1949
of the United Kingdom;
“registered design” means
a design that is actually registered;
“registered proprietor”
means, in relation to a design, the person or persons for the time being
entered in the register of designs as proprietor of the design;
“United Kingdom register of
designs” means the register of designs kept in pursuance of
section 17 of the Registered Designs
Act.[2]
(2) In Articles 3,
4, 6, 10, 11, 12 and 15, the “court”
means the Samedi division of the Royal
Court.
(3) References
in this Law to the right in a registered design have the same meaning as in
section 7 of the Registered Designs Act.[3]
2 Limitation
of powers of Royal Court in relation to registration of designs
As from the coming into force of this Law, no title or interest in
respect of any design shall be entered in the rolls of the Royal Court
otherwise than in accordance with the provisions of this Law.
3 Register
of designs
(1) There
shall be kept at the Judicial Greffe a register, to be called the “register of designs”, in which there shall
be entered the representation or specimen of designs, names and addresses of
the proprietors thereof, particulars of assignments and of transmissions of
registered designs, and such other matters affecting the validity of
proprietorship of designs, as may be prescribed by rules of court, or as the
Judicial Greffier may think fit.
(2) Subject
to the provisions of this Law and to rules of court, the register of designs
shall, at all convenient times, be open to inspection by the public; and
certified copies of any entry in the register shall be given to any person
requiring them on payment of the appropriate fee:
Provided that no representation of specimen of a design shall be
open to inspection except by the registered proprietor or a person authorized
in writing by the registered proprietor, or a person authorized by the Court or
the Judicial Greffier, before the date on which it became, or is due to become,
open to public inspection in the United Kingdom.
(3) The
register of designs shall be prima facie
evidence of any matters required or authorized by this Law to be entered
therein.
(4) No
notice of any trust, whether expressed, implied or constructive, shall be
entered in the register of designs and the Judicial Greffier shall not be
affected by any such notice.
4 Registration
of designs
(1) Any
person for the time being entered in the United Kingdom register of designs, as
the proprietor of a design, may apply to the Judicial Greffier for the
registration of the design.
(2) Where
any partial assignment or transmission of the design has been made, every person
having any legal interest in the design shall be joined in the application for
registration.
(3) Every
application under this Article shall be made in such manner as may be
prescribed by rules of court and shall be accompanied by a certified
representation or specimen of the design and a certificate of the
Comptroller-General setting forth the rights or interest to which the
application relates, and stating the date at which the representation or
specimen of the design became, or is due to become, open to public inspection
in the United Kingdom.
(4) Where
an application under paragraph (3) is received, together with the
documents mentioned in that paragraph, the Judicial Greffier shall register the
design and issue a certificate of registration unless it appears doubtful to the
Judicial Greffier whether the application should be granted or any question
arises in relation to the application, in which case the Judicial Greffier
shall present a statement of the matter in question to the Bailiff for the
directions of the court, and the court may order such persons to be convened,
such evidence to be taken and such enquiries to be made as the Court may deem
necessary and, subject to the provisions of this Law and to rules of court,
shall determine whether the design should be registered.
5 Extension
and restoration of rights in designs[4]
(1) Where –
(a) the
period for which the right in a design subsists has been extended in the United
Kingdom; or
(b) the
lapsed right in a design has been restored in the United Kingdom,
the registered proprietor of the design may apply to the Judicial
Greffier in such manner as may be prescribed by rules of court for the
registration of the extension of the right or registration of the restoration
of the right, as the case requires.
(2) Every
application under this Article shall be accompanied by a certificate of the
Comptroller-General relating to the registration of the extension of the right
or registration of the restoration of the right, in the United Kingdom, as the
case requires.
(3) On
receipt of such an application, the Judicial Greffier shall register the
extension or restoration of the right, as the case requires, unless it appears
doubtful to the Judicial Greffier whether the application should be granted, or
any question arises in relation to the application.
(4) Where
paragraph (3) applies, the Judicial Greffier shall present a statement of
the matter in question to the Bailiff for the directions of the court, and the
court may order such persons to be convened, such evidence to be taken and such
enquiries to be made as the court may deem necessary and, subject to the
provisions of this Law and to rules of court, shall determine whether the
application should be granted.
6 Registration
of assignments, etc.
(1) Where
a person becomes entitled by assignment, transmission or other operation of law,
to a registered design, or to a share in a registered design, or becomes
entitled as licensee or otherwise to any other interest in a registered design,
and has obtained registration in the United Kingdom of such title or interest
in accordance with the law for the time being in force in the United Kingdom, the
person may apply to the Judicial Greffier for the registration of such title or
interest.
(2) Every
such application shall be made in such manner as may be prescribed by rules of
court and shall be accompanied by a certificate of the Comptroller-General
relating to the registration in the United Kingdom of such title or interest.
(3) On
the receipt of such an application, the Judicial Greffier shall register the
title or interest unless it appears doubtful to the Judicial Greffier whether
the application should be granted, or any question arises in relation to the
application, in which event the Judicial Greffier shall present a statement of
the matter in question to the Bailiff for the directions of the court, and the
court may order such persons to be convened, such evidence to be taken and such
enquiries to be made as the court may deem necessary and, subject to the
provisions of this Law and to rules of court, shall determine whether the
application should be granted.
7 Cancellation
of registration, and registration of change of name and address
The Judicial Greffier may, on request in writing made by the
registered proprietor –
(a) cancel
the registration of a design; or
(b) enter
in the register any change in the name or address of the registered proprietor.
8 Legal
presence in Jersey unnecessary for purpose of making applications
An application under Article 4, 5, 6 or 7 may be made
notwithstanding the fact that the person making the application is not present
in Jersey and is not represented by an attorney present in Jersey so long as the
person has notified the Judicial Greffier of an address in Jersey to which any
notice or summons in connection with any matter relating to the design may be
sent, and, in such case, any such notice or summons shall be deemed to be
sufficiently served if it is sent to that address.
9 Effect
of registration[5]
(1) Subject
to the provisions of this Law, the registration of a design under this Law or
of any title or interest in such a design (including the restoration of the
right in a registered design) shall give to the registered proprietor of the
design, or any other person in whom any title or interest is vested, as the
case may be, the same rights and equivalent remedies in Jersey as are possessed
by the registered proprietor or such a person in the United Kingdom, but, save
as aforesaid, no registered design or title or interest in such a design shall
have effect against any person.
(2) The
rights referred to in paragraph (1) shall have effect in Jersey from the
same date from which such rights have effect in the United Kingdom and shall
subsist only for as long as such rights subsist in the United Kingdom.
(3) Notwithstanding
paragraph (2), no action for infringement of the right in a registered
design may be brought –
(a) in
respect of any use of the design prior to the date of registration of the
design under this Law; or
(b) where
the right in the design has been extended or the lapsed right restored in the
United Kingdom, unless such extension or restoration has been registered under
this Law.
10 Power of court to
cancel registration
(1) A
petition for the cancellation of the registration of a design may be presented
to the court by the Attorney General or by any person who alleges that the person’s
interests have been prejudicially affected by such registration on any of the
following grounds, that is to say –
(a) that
the design was registered on the application of a person not entitled under the
provisions of this Law to make the application;
(b) that
the design has been used in Jersey before the date of the registration thereof
in the United Kingdom;
(c) that
more than 3 years had elapsed between the date the application for the
registration of the design was determined in the United Kingdom and the date of
the registration of the design under this Law and that, on the latter date, the
design was being used in Jersey on a commercial scale,
and the court, after hearing the parties if desirous of being heard,
may make an order cancelling the registration or dismissing the petition.[6]
(2) In
proceedings under this Article, the court may determine any question which it
may be necessary or expedient to determine in connection with such
cancellation.
11 Rectification of
register
(1) The
court may, on the application of the Attorney General or of any person
aggrieved, order the register of designs to be rectified by the making of any
entry therein or the variation or deletion of any such entry.
(2) In
proceedings under this Article, the court may determine any question which it
may be necessary or expedient to determine in connection with the rectification
of the register.
12 Power to correct
clerical errors
(1) The
Judicial Greffier may, in accordance with the provisions of this Article,
correct any clerical error in the register of designs.
(2) A
correction may be made in pursuance of this Article either upon a request in
writing made by any person interested, or without such a request.
(3) Where
the Judicial Greffier proposes to make any such correction as aforesaid otherwise
than in pursuance of a request made under this Article, the Judicial Greffier
shall give notice of the proposal to the registered proprietor and to any other
person who appears to the Judicial Greffier to be concerned, and shall give
them an opportunity to be heard before making the correction.
(4) Where
a request is made under this Article for the making of any such correction as
aforesaid and it appears to the Judicial Greffier that the correction would
materially affect the privileges and rights conferred by the registration of
the design, the Judicial Greffier shall require the person by whom the request
was made to apply to the court for the rectification of the register of designs
in accordance with the provisions of Article 11.
13 Use of registered
designs for the services of the Crown
(1) Subject
to the provisions of this Law, the registration of a design shall have the same
effect against the Crown as it has against a subject:
Provided that any Government department, and any person authorized
in writing by any such department, may use any registered design for the
services of the Crown in the like manner, to the like extent and subject to the
like conditions as it might be used in the United Kingdom by any such
department or by any person so authorized.
(2) For
the purposes of this Article, any use of a registered design for the supply to
the Government of any country outside the United Kingdom, in pursuance of any
agreement or arrangement between Her Majesty’s Government in the United
Kingdom and the government of that country, of products required for the
defence of that country, shall be deemed to be a use of the design for the
services of the Crown; and the power of a Government department or a person
authorized by a Government department under this Article to use a design shall
include power –
(a) to
sell such products to the government of any country in pursuance of any such
agreement or arrangement as aforesaid; and
(b) to
sell to any person any products made in the exercise of the powers conferred by
this Article which are no longer required for the purpose for which they were
made.[7]
(3) The
purchaser of any products sold in the exercise of powers conferred by this Article,
and any person claiming through the purchaser, shall have power to deal with
them in the same manner as if the rights in the registered design were held on
behalf of Her Majesty.[8]
14 Use of registered
designs for the service of the States
(1) Notwithstanding
anything in this Law, the States, and any person authorized by the States, may
use for the public service of Jersey any registered design upon such terms as
may be agreed, either before or after the use, between the States and the
registered proprietor, or as may in default of agreement be determined by the
court on a reference under Article 15.
(2) The
authority of the States in respect of a registered design may be given under
this Article either before or after the design is registered and either before
or after the acts in respect of which the authority is given are done, and may
be given to any person whether or not the person is authorized directly or
indirectly by the registered proprietor to use the design.
(3) Where
any use of a registered design is made by or with the authority of the States
under this Article, then, unless it appears to the States that it would be
contrary to the public interest so to do, the States shall notify the
registered proprietor as soon as practicable after the use is begun, and
furnish the registered proprietor with such information as to the extent of the
use as the registered proprietor may from time to time require.
(4) The
power of the States or of a person authorized by the States under this Article
to use a registered design shall include power to sell to any person any products
made in the exercise of the powers conferred by this Article which are no
longer required for the purpose for which they were made.[9]
(5) The
purchaser of any products sold in the exercise of powers conferred by this Article,
and any person claiming through purchaser, shall have power to deal with them
in the same manner as if the rights in the registered design were held on
behalf of the States.[10]
(6) The
States may, by Act, delegate the exercise of all or any of its powers under
this Article to the Chief Minister.[11]
15 Reference of
disputes as to use by Crown or States
(1) Any
dispute as to the exercise by a Government department or by the States, or by a
person authorized by a Government department or by the States, of the powers
conferred by Article 13 or 14, or as to terms for the use of a registered
design for the services of the Crown or of the States thereunder, or as to the
right of any person to receive any part of a payment in respect of those
services, may be referred to the court by either party to the dispute in such
manner as may be prescribed by rules of court.
(2) In
any proceedings under this Article to which a Government department or the
States are a party, the department or the States, as the case may be,
may –
(a) if
the registered proprietor is a party to the proceedings, apply for the
cancellation of the registration of the design upon any ground upon which the
registration of a design may be cancelled under Article 10;
(b) in
any case, put in issue the validity of the registration of the design without
applying for its cancellation.
(3) In
determining under this Article any dispute between a Government department or
the States and any person as to terms for the use of a design for the services
of the Crown or the States respectively, the court shall have regard to any
benefit or compensation which that person or any person from whom the person derives
title may have received, or may be entitled to receive, directly or indirectly,
from any Government department or from the States, as the case may be, in
respect of the design in question.
(4) In
any proceedings under this Article, the court may at any time order the whole
proceedings or any question or issue of fact arising therein to be referred to
a special or official referee or an arbitrator on such terms as the court may
direct; and references to the court in the foregoing provisions of this Article
shall be construed accordingly.
16 Exemption of
innocent infringer from liability for damages
(1) In
proceedings for the infringement of the right in a registered design, damages
shall not be awarded against a defendant who proves that at the date of the
infringement the defendant was not aware, and had no reasonable ground for
supposing, that the design was registered, and a person shall not be deemed to
have been aware or to have had reasonable grounds for supposing as aforesaid by
reason only of the marking of a product with the word “Registered”
or any abbreviation thereof or any other word or words expressing or implying
that the design applied to, or incorporated in, the product has been
registered, unless the number of the design and the words “in
Jersey” followed the word “Registered” or the abbreviation thereof
or the words “Registered in Jersey” accompanied that other word or
those other words.[12]
(2) Nothing
in this Article shall affect the power of the court to grant an injunction in
any proceedings for infringement of the right in a registered design.[13]
17 Remedy for
groundless threats of infringement proceedings
(1) Where
any person (whether or not entitled to or interested in a registered design) by
circulars, advertisements or otherwise threatens any other person with
proceedings for infringement of the right in a registered design, any person
aggrieved thereby may bring an action against the person for any such relief as
is mentioned in paragraph (2).[14]
(2) Unless
in any action brought by virtue of this Article the defendant proves that the
acts in respect of which proceedings were threatened constitute or, if done,
would constitute, an infringement of the right in a registered design the
registration of which is not shown by the plaintiff to be invalid, the
plaintiff shall be entitled to the following relief, that is to
say –
(a) a
declaration to the effect that the threats are unjustifiable;
(b) an
injunction against the continuance of the threats; and
(c) such
damages, if any, as the plaintiff has sustained thereby.[15]
(3) For
the avoidance of doubt, it is declared that a mere notification that a design
is registered does not constitute a threat of proceedings within the meaning of
this Article.
18 Falsification
of register etc[16]
(1) A
person is guilty of an offence who –
(a) makes
or causes to be made a false entry in the register of designs;
(b) makes
or causes to be made any writing falsely purporting to be a copy of an entry in
that register; or
(c) produces
or tenders, or causes to be produced or tendered, in evidence any such writing,
knowing the entry or writing to be false.
(2) A
person guilty of an offence under paragraph (1) is liable to imprisonment
for a term of 2 years and a fine.
19 False
representation that a design is registered[17]
(1) If
a person falsely represents that a design applied to, or incorporated in, any
product sold by the person is registered in Jersey, the person shall be guilty
of an offence and liable to a fine of level 3 on the standard scale.
(2) For
the purposes of paragraph (1), if a person sells a product having stamped,
engraved or impressed on it or otherwise applied to it the words
“registered in Jersey” or any other word or words expressing or
implying that the design applied to, or incorporated in, the product, is
registered in Jersey, the person shall be deemed to represent that the design
applied to, or incorporated in, the product, is so registered.
(3) If
any person, after the right in a registered design has expired, marks any
product to which the design has been applied or in which it has been
incorporated with the words “registered in Jersey” or any word or
words expressing or implying that the right in the registered design subsists,
or causes any such product to be so marked, the person shall be guilty of an
offence and liable to a fine of level 2 on the standard scale.
20 Rules of court
(1) The
power to make rules of court under the Royal
Court (Jersey) Law 1948,[18] shall include a power to
make rules for the purposes of this Law and proceedings thereunder, and such rules
may make provision –
(a) for
the appointment of advisers to assist the court in proceedings for infringement
of the right in a registered design and proceedings under this Law, and for
regulating the functions of such advisers;
(b) for
enabling persons to take proceedings under this Law in
forma pauperis;
(c) for
the hearing by the court in vacation of all such matters under this Law as may
require to be immediately or promptly heard.[19]
(2) [20]
20A Regulations[21]
(1) The
States by Regulations may make such provision with respect to registered
designs as they think fit, including amendment of this Law or any other
enactment, in relation to any of the following –
(a) in
so far as any such provision is, in the opinion of the States, consistent with
any international treaty or agreement which applies to Jersey relating to
registered designs –
(i) the registration
of a design in Jersey (whether by way of first registration or
re-registration), and
(ii) the exercise and
enforcement of rights in a registered design, including giving effect to such
rights granted in a country or territory otherwise than Jersey;
(b) giving
effect in Jersey to any international treaty or agreement ratified by or on
behalf of Jersey or which extends to Jersey, or for the purpose of enabling the
ratification or extension of any international treaty or agreement;
(c) implementing,
in Jersey, any obligation of the United Kingdom under the EU Treaties as
defined in the European Union (Jersey) Law 1973[22], whether or not that
obligation applies to Jersey;
(d) giving
effect in Jersey to any provision that applies in the United Kingdom.
(2) Regulations
under paragraph (1) may, without prejudice to the generality of that
paragraph, do any of the following –
(a) confer
rights on any person or body with regard to the administration of, and
decisions relating to, rights in a design, including allowing the Minister to
make provision for such matters by Order;
(b) make
provision for appeals;
(c) make
provision for enforcement including civil remedies or criminal penalties for
infringement of rights in a registered design;
(d) make
provision for fees, including allowing the Minister to prescribe fees by Order;
(e) make
provision for such supplementary, transitional and incidental matters as the
States consider to be necessary or expedient.
21 Powers of states
as regards fees
For the avoidance of doubt, it is declared that the power to fix
fees conferred upon the States by –
(a) La Loi (1930)
constituant le Département du Vicomte;
(b) La Loi (1930)
constitutant le Département des Officiers de la Couronne;
(c) La Loi (1931)
constituant le Département du Greffe Judiciaire;
(d) La Loi (1936)
touchant la Rétribution de la charge de Bailli,
or by any Law, whether passed before or after the commencement of
this Law, amending the said Laws, shall include a power to fix fees in respect
of the registration of designs and applications therefor, and in respect of all
other matters relating to designs under this Law.
22 Saving of vested
rights
Nothing in this Law shall be deemed to derogate from such rights as
may be possessed by any person by virtue of the registration in the rolls of
the Royal Court before the coming into force of this Law of any document
relating to a design.
22A Transitional
provisions[23]
(1) Any
act done on or after the date that the Intellectual Property (Registered
Rights) (Miscellaneous Provisions) (Jersey) Law 2015[24] enters into force pursuant
to any agreement or arrangement made before that date shall not constitute
infringement of the right in a registered design if it would not have
constituted an infringement before that date.
(2) For
the avoidance of doubt, any act done before the date that the Intellectual
Property (Registered Rights) (Miscellaneous Provisions) (Jersey) Law 2015
came into force shall not be treated as infringing any right in a registered
design from that date if the act did not infringe any right in a registered
design before that date.
23 Citation
This Law may be cited as the Registered Designs (Jersey) Law 1957.