Arrangement

part 1  3

part 2  9

part 3  15

A LAW to amend further the Registered Designs (Jersey) Law 1957, the Patents (Jersey) Law 1957 and the Trade Marks (Jersey) Law 2000.

THE STATES, subject to the sanction of Her Most Excellent Majesty in Council, have adopted the following Law –

“ ‘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;”;

“ ‘complex product’ means a product which is composed of at least 2 replaceable component parts permitting disassembly and reassembly of the product;”;

“ ‘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;”.

“(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.”.

“5      Extension and restoration of rights in designs

(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.”.

“9      Effect of registration

(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.”.

“(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,”;

“18    Falsification of register etc

(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

(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.”.

“20A Regulations

(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[2], 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.”.

“22A Transitional provisions

(1)     Any act done on or after the date that the Intellectual Property (Registered Rights) (Miscellaneous Provisions) (Jersey) Law 2015[3] 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.”.

“ ‘invention’ has the same meaning as in the Patents Act 1977;”;

“8      Effect of registration

(1)     Subject to the provisions of this Law, the registration of a patent under this Law or of any title or interest in such a patent (including the restoration of the patent) shall give to the patentee, 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 patentee or such a person in the United Kingdom, but, save as aforesaid, no patent or title or interest in such a patent 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 a right referred to in paragraph (1) may be brought –

(a)     subject to paragraph (4), in respect of any act done prior to the date of registration of the patent under this Law; or

(b)     where the term of the patent has been extended or the patent has been restored, unless the order for extension or restoration has been registered under this Law.

(4)     An action for infringement of a patent may be brought in respect of any act done on or after the date which is, or is treated as, the date of publication of the application for registration, extension or registration, as the case may be, under the Patents Act 1977 where –

(a)     the application for registration under this Law was made before the expiration of 6 months after the date of the grant of the patent under that Act;

(b)     the patent has been registered under this Law; and

(c)     the act would, if the patent had been registered under this Law on the date which is, or is treated as, the date of publication of the application under that Act, have infringed not only the patent but also the claims referred to in section 69 of that Act.”.

“9A   Compulsory licences – applications and grant

(1)     At any time after the expiration of 3 years, or such other period as the Minister may prescribe by Order, from the date of the registration of a patent under this Law, any person may apply to the court for a licence under the patent.

(2)     An application under paragraph (1) shall be on one or more of the following grounds –

(a)     where the patented invention is a product, that a demand in Jersey for that product is not being met on reasonable terms;

(b)     that by reason of the refusal of the patentee (‘first patentee’) to grant a licence or licences on reasonable terms –

(i)      there is prevented or hindered the exploitation in Jersey of any other invention for which another patent has been registered under this Law, such other invention involving an important technical advance of considerable economic significance in relation to the first patentee’s invention, or

(ii)      the establishment or development of commercial or industrial activities in Jersey is unfairly prejudiced;

(c)     that by reason of conditions imposed by the person in whose name the patent is registered on –

(i)      the grant of licences under the patent,

(ii)      the disposal or use of the patented product, or

(iii)     the use of the patented process,

there is unfairly prejudiced the manufacture, use or disposal of materials not protected by the patent or the establishment of commercial or industrial activities in Jersey; or

(d)     that the grant of a licence is necessary to comply with any treaty or international convention which has effect in Jersey.

(3)     The court, after hearing any party with an interest in the matter who is desirous of being heard, may –

(a)     grant such a licence if satisfied of any of the grounds described in paragraph (2); or

(b)     dismiss the application.

(4)     Where the court grants a licence on the ground described in paragraph (2)(c), the court may grant a licence to customers of the applicant as well as to the applicant for the licence.

(5)     An application may be made under paragraph (1) even if the applicant is already the holder of a licence under the patent.

(6)     No person shall be estopped or barred from alleging any of the grounds specified in paragraph (2) by reason of any admission made by him or her, whether in respect of a licence held by that person or otherwise.

(7)     Where an application under paragraph (1) is made in respect of a patent by a person who holds a licence under the patent, the court –

(a)     may, if it orders the grant of a licence to the applicant under this Article, order the existing licence to be cancelled; or

(b)     may, instead of ordering the grant of a licence to the applicant, order the existing licence to be amended.

(8)     A licence must not be granted under this Article unless –

(a)     the applicant has made efforts to obtain a licence from the person in whose name the patent is registered on reasonable commercial terms and conditions; and

(b)     such efforts have not been successful within a reasonable period.

(9)     A licence must not be granted under this Article if the patent in respect of which the application is made is in the field of semi-conductor technology.

(10)    A licence must not be granted under this Article if such grant would be contrary to any treaty or international convention which has effect in Jersey.

(11)    A licence must not be granted on the ground described in paragraph (2)(b) unless the court is satisfied that the person in whose name the other patent is registered is able and willing to grant a licence under that other patent on reasonable terms to –

(a)     the first patentee; and

(b)     any licensees of the first patentee.

(12)    A licence granted on the ground described in paragraph (2)(b) must not be assigned except to a person to whom a patent for the other invention is also assigned.

(13)    A licence granted under this Article –

(a)     must not be exclusive;

(b)     must not be assigned except to a person to whom there is also assigned the part of the enterprise or goodwill that enjoys the use of the patented invention;

(c)     must be predominately for the supply of a market in Jersey;

(d)     must include conditions entitling the patentee to remuneration adequate in the circumstances of the case, taking into account the economic value of the licence; and

(e)     must be limited in scope and duration to the purpose for which the licence was granted,

except to the extent that, in the case of a licence granted on the ground described in paragraph (2)(d), such a licence would be inconsistent with, or contravene, the treaty or international convention to which the licence gives effect.

9B     Other matters relating to compulsory licences

(1)     In this Article ‘patented invention’ means the invention which is the subject of an application under Article 9A and ‘patentee’ shall be construed accordingly.

(2)     In determining whether to grant a licence under Article 9A, the court shall take into account –

(a)     the nature of the patented invention;

(b)     the time which has elapsed since the grant of a patent for the invention in the United Kingdom;

(c)     any measures taken by the patentee or any licensee of the patentee to make full use of the patented invention;

(d)     the ability of the person to whom the compulsory licence would be granted to work the patented invention to the public advantage; and

(e)     the risks to be undertaken by the person to whom the compulsory licence would be granted in providing capital and working the patented invention.

(3)     In determining whether to grant a licence under Article 9A, the court shall not be required to take into account any matters subsequent to the date of the application for the licence.

(4)     Where a licence has been granted under Article 9A the patentee or any other person may apply to the court to have the licence cancelled on the ground that the circumstances which led to the grant of the licence have ceased to exist and are unlikely to recur.

(5)     Following an application under paragraph (4), the court, after hearing any party with an interest in the matter who is desirous of being heard, may –

(a)     terminate the licence subject to such terms and conditions as the court thinks are necessary for the protection of legitimate interests of the licensee; or

(b)     dismiss the application.”.

“(3)    In this Article, ‘convention country’ means –

(a)     any country which is bound by the Convention for the Protection of Industrial Property signed at Paris on 20th March 1883 (such Convention also being known as the Paris Convention); and

(b)     any other country which is a member of the World Trade Organisation.”.

“24A Regulations

(1)     The States by Regulations may make such provision with respect to patents 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 patents –

(i)      the grant or registration of a patent in Jersey (whether by way of first grant, registration or re-registration), and

(ii)      the exercise and enforcement of any title or interest in a patent, including giving effect to any title or interest in a patent granted or registered 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[5], 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, any title or interest in a patent, 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 any title or interest in a patent;

(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.”.

“26A Transitional provisions

(1)     Any act done on or after the date that the Intellectual Property (Registered Rights) (Miscellaneous Provisions) (Jersey) Law 2015[6] enters into force pursuant to any agreement or arrangement made before that date shall not constitute infringement of a registered patent 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 a patent from that date if the act did not infringe a patent before that date.”.

“,

provided that such refusal is not contrary to any convention or treaty which has effect in Jersey.”.

“6      Registration of assignments etc.”;

“(1)    Where a person becomes entitled by assignment, transmission or other operation of law to a registered trade mark in respect of goods or services, or to a share in such a trade mark, or becomes entitled as a licensee or otherwise to any interest in such a trade mark, 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 in respect of those goods or services, the person may apply to the registrar for the registration of such title or interest in the trade mark in respect of those goods or services.”;

“(3)    Subject to paragraphs (4) and (5), on receipt of such an application, the registrar shall register the title or interest in the trade mark in respect of the goods or services for which the application is made and issue a certificate of registration.”.

“9      Effect of registration

(1)     Subject to the provisions of this Law, the registration of a trade mark under this Law, or of any title or interest in such a trade mark, shall give to the registered proprietor, 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 in relation to the goods and services in respect of which such trade mark, title or interest is registered as are possessed by the registered proprietor, or such other person, in the United Kingdom, but, save as aforesaid, no registered trade mark, title or interest shall have effect as 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 trade mark may be brought and no offence under Article 25 shall be committed –

(a)     in respect of any use of the trade mark prior to the date of the registration of the trade mark under this Law; or

(b)     where the registration of the trade mark in the United Kingdom has been renewed, unless such renewal has been registered under this Law.”.

“protection relating to International matters and agents”.

“13A Well known trade marks

(1)     For the purposes of this Article references to a well known trade mark are references to a trade mark as described in section 56(1) of the Trade Marks Act as if, in that subsection, the reference to the United Kingdom were a reference to Jersey.

(2)     Where a proprietor of a well known trade mark is entitled under section 56(2) of the Trade Marks Act to restrain by injunction a trade mark in the circumstances described in that subsection, the proprietor is entitled to restrain by injunction the use of such a trade mark in Jersey regardless of whether –

(a)     an injunction has been obtained in the United Kingdom; or

(b)     the person is a registered proprietor.

(3)     Where a proprietor of a well known trade mark (whether or not a registered proprietor) would be entitled to restrain by injunction the use of a trade mark under section 56(2) of the Trade Marks Act if the reference in sub-section (2) to use in the United Kingdom were to use in Jersey, that proprietor shall be entitled to restrain by injunction the use in Jersey of such a trade mark.

(4)     The right to restrain by injunction as referred to in paragraph (2) or (3) is subject to –

(a)     section 48 of the Trade Marks Act, where applicable; or

(b)     section 48 of the Trade Marks Act as if the reference in sub-section (1) to use of a registered trade mark in the United Kingdom were, instead to use in Jersey of a registered trade mark under this Law.

(5)     Nothing in this Article affects the continuation of any bona fide use of a trade mark after the date this Law comes into force where such use started before that date.

13B   State emblems, official signs etc

(1)     Where a competent authority or international organisation is entitled to restrain by injunction the use in the United Kingdom of a trade mark under section 57(6) or 58(4) of the Trade Marks Act, as the case may be, that authority or organisation shall be entitled to restrain by injunction the use in Jersey of such a trade mark regardless of whether –

(a)     an injunction has been obtained in the United Kingdom; or

(b)     the competent authority or international organisation is a registered proprietor.

(2)     Where a competent authority or international organisation (whether or not a registered proprietor) would be entitled to restrain by injunction the use of a trade mark under section 57(6) or 58(4) of the Trade Marks Act, if, in the relevant paragraph, the reference to use in the United Kingdom were to use in Jersey, that authority or organisation shall be entitled to restrain by injunction the use in Jersey of such a trade mark.

(3)     Nothing in this Article affects the rights of a person whose bona fide use of the trade mark in question began before the date that this Article comes into force.

13C   Acts of agents and representatives

(1)     Where the proprietor of a trade mark is entitled to restrain by injunction the use in the United Kingdom of a trade mark under section 60(4) of the Trade Marks Act, the proprietor shall be entitled to restrain by injunction the use in Jersey of such a trade mark regardless of whether –

(a)     an injunction has been obtained in the United Kingdom; or

(b)     the person is a registered proprietor.

(2)     Where the proprietor of a trade mark (whether or not a registered proprietor) would be entitled to restrain by injunction the use of a trade mark under section 60(4) of the Trade Marks Act, if, in that paragraph, the reference to use in the United Kingdom were to use in Jersey, the proprietor shall be entitled to restrain by injunction the use in Jersey of such a trade mark.

(3)     An application under this Article must be made within the time limits described in section 60(6) of the Trade Marks Act”.

“26A Search warrants

(1)     Where the Bailiff or a Jurat is satisfied by information on oath given by a police officer that there are reasonable grounds for believing –

(a)     that an offence under Article 25 has been or is about to be committed in any premises; and

(b)     that evidence that the offence has been or is about to be committed is in those premises,

he or she may issue a warrant authorizing a police officer to enter and search the premises, using any reasonable force necessary.

(2)     The power conferred by paragraph (1) does not extend to authorizing a search for materials of the kinds mentioned in Article 16(2) of the Police Procedures and Criminal Evidence (Jersey) Law 2003[8].

(3)     A warrant under this Article –

(a)     may authorize persons to accompany any police officer executing the warrant; and

(b)     remains in force for 28 days from the date of its issue.

(4)     In executing a warrant issued under this Article a police officer may seize an article if he or she reasonably believes that it is evidence that any offence under Article 25 has been or is about to be committed.

(5)     In this Article ‘premises’ includes land, buildings, fixed or moveable structures, vehicles, vessels, aircraft and hovercraft.”.

“31A Regulations

(1)     The States by Regulations may make such provision with respect to trade marks 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 trade marks –

(i)      the registration of a trade mark in Jersey (whether by way of first registration or re-registration), and

(ii)      the exercise and enforcement of any title or interest in a trade mark, including giving effect to such title or interest 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[9], 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, any title or interest in a trade mark, 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 any title or interest in a trade mark;

(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.”.

“36A Transitional provisions

(1)     Any act done on or after the date that the Intellectual Property (Registered Rights) (Miscellaneous Provisions) (Jersey) Law 2015[10] enters into force pursuant to any agreement or arrangement made before that date shall not constitute infringement of a registered trade mark 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 a trade mark from that date if the act did not infringe a trade mark before that date.”.