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 the
Government of the United Kingdom;
“Minister” means
the Minister for External Relations;
“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 the Judicial Greffier
may from time to time specify by publishing a notice, or providing an online
form, on a website maintained by the Judicial Greffier
or the States of Jersey, 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]
(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[5]
(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 the Judicial Greffier
may from time to time specify by publishing a notice, or providing an online
form, on a website maintained by the Judicial Greffier
or the States of Jersey, for the registration of the extension of the right or
registration of the restoration of the right, as the case requires.[6]
(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 the Judicial Greffier
may from time to time specify by publishing a notice, or providing an online
form, on a website maintained by the Judicial Greffier
or the States of Jersey, and shall be accompanied by a certificate of the
Comptroller-General relating to the registration in the United Kingdom of such
title or interest.[7]
(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[8]
(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.[9]
(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 the Government of 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.[10]
(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 His
Majesty.[11]
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.[12]
(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.[13]
(6) The States may, by Act,
delegate the exercise of all or any of its powers under this Article to the
Minister.[14]
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.[15]
(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.[16]
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).[17]
(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.[18]
(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.[19]
(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[20]
(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, 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.[21]
(2) [22]
20A Regulations[23]
(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, 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[24]
(1) Any act done on or
after the date that the Intellectual Property (Registered Rights)
(Miscellaneous Provisions) (Jersey) Law 2015 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.