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16 1927

INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927

PART III.—DESIGNS.

Registration of designs generally.

64. —(1) The controller may (subject to the provisions of this section) on the application made in the prescribed form and manner of any person claiming to be the proprietor of any new or original design not published in the late United Kingdom before the establishment of Saorstát Eireann and not previously published in Saorstát Eireann register such design under this Act.

(2) Where copyright subsists under Parts VI . and VII . of this Act in the artistic work defining a design, such design shall not be registered under this Part of this Act without the consent of the owner of such copyright.

(3) The same design may be registered in more than one class, and, in case of doubt as to the class in which a design ought to be registered, the controller may decide the question.

(4) The controller may, if he thinks fit, refuse to register any design presented to him for registration, but any person aggrieved by any such refusal may (except where an appeal lies under this Act to the law officer) appeal to the court, and the court shall, after hearing the applicant and, if so required the controller make an order determining whether, and subject to what conditions, if any, registration is to be permitted.

(5) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned.

(6) A design when registered shall be registered as of the date of the application for registration.

Registration of designs in certain cases.

65. —(1) Any person or the legal representative or assignee of any person who applied after the 6th day of December, 1921, and before the commencement of this Part of this Act to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann for the registration of a design shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for the registration of the same design and shall be entitled to have such application under this Act dated and treated as having been made as of the date of the first-mentioned application for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date as of which the design is to be registered, and determining whether the design had been previously published in Saorstát Eireann.

(2) Any person or the legal representative or assignee of any person who has obtained between the 6th day of December, 1921, and the commencement of this Part of this Act protection for a design in any British dominion (other than Great Britain and Northern Ireland) or foreign state to which the provisions of section 152 (which relates to international arrangements) of this Act are applied or declared to be applicable by order made under that section shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for the registration of the same design and shall be entitled to have the said application under this Act dated and treated as having been made as of the date of the application for protection of the said design in such British dominion or foreign state for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date as of which the design is to be registered, and determining whether the design had been previously published in Saorstát Eireann.

(3) Any person who applies under the provisions of this section for the registration of a design may at any time before the completion of such registration (hereinafter called the first-mentioned registration) apply to the controller for the cancellation of any registration (hereinafter called the second-mentioned registration) of the same design made under section 66 (which relates to the registration of designs registered in the Patent Office in London) of this Act and dated as of a date between the 6th day of December, 1921, and the commencement of this Part of this Act on the ground that the date of the application for the second-mentioned registration was subsequent to the date of an application made by the applicant for the first-mentioned registration to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann or in any such British dominion or foreign state as is mentioned in the foregoing sub-section for registration of the same design, and the controller may on such application for cancellation cancel the second-mentioned registration on the ground aforesaid but on no other ground.

(4) An appeal shall lie to the law officer from every decision of the controller on an application for cancellation under the foregoing sub-section.

Registration of designs registered in Patent Office in London.

66. —(1) The person who is for the time being registered in the Patent Office in London as the proprietor of a design which is registered in that Office at the commencement of this Part of this Act shall, on payment of the prescribed fee and furnishing to the controller for registration certified copies of such design and of the entries in the British register relating thereto, be entitled at any time within six months after the commencement of this Part of this Act to have such design registered under this Act in the register of designs in the Office in the same classes and subject to the same notices and other matters as such design is registered in and subject to in the Patent Office in London at the date of the application for registration under this Act.

(2) For all purposes under this Act a design registered pursuant to this section shall be deemed to have been first registered under this Act on the date on which such design was first registered in the Patent Office in London notwithstanding that such date is prior to the passing of this Act or to the commencement of this Part of this Act and (whenever appropriate) the period of the copyright in such design shall be deemed to have been extended under this Act on the date or respective dates and for the time or respective times on and for which such period was extended in the Patent Office in London before the registration of such design pursuant to this section whether such date or dates was or respectively were prior or subsequent to the passing of this Act or the commencement of this Part of this Act.

Registration of designs in new classes.

67. —Where a design has been registered in one or more classes of goods the application of the proprietor of the design to register it in some one or more other classes shall not be refused, nor shall the registration thereof be invalidated—

(a) on the ground of the design not being a new or original design, by reason only that it was so previously registered; or

(b) on the ground of the design having been previously published in Saorstát Eireann, by reason only that it has been applied to goods of any class in which it was so previously registered:

Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from the previous registration.

Certificate of registration.

68. —(1) The controller shall grant a certificate of registration to the proprietor of the design when registered.

(2) The controller may, in case of loss of the original certificate, or in any other case in which he deems it expedient, furnish one or more copies of the certificate.

Register of designs.

69. —(1) There shall be kept at the Office a book called the register of designs, wherein shall be entered the names and addresses of proprietors of registered designs, notifications of assignments and of transmissions of registered designs, and such other matters as may be prescribed.

(2) The register of designs shall be primâ facie evidence of all matters by this Act directed or authorised to be entered therein.

Copyright in registered designs.

70. —(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, and subject and without prejudice to the copyright conferred by Part VII . of this Act in respect of certain artistic works defining designs, have copyright in the design during five years from the date of registration.

(2) If within the prescribed time before the expiration of the said five years application for the extension of the period of copyright is made to the controller in the prescribed manner, the controller shall on payment of the prescribed fee extend the period of copyright for a second period of five years from the expiration of the original period of five years.

(3) If within the prescribed time before the expiration of such second period of five years application for the extension of the period of copyright is made to the controller in the prescribed manner, the controller may, subject to any rules under this Act, on payment of the prescribed fee extend the period of copyright for a third period of five years from the expiration of the second period of five years.

Requirements before delivery on sale.

71. —(1) Before delivery on sale of any articles to which a registered design has been applied, the proprietor shall—

(a) (if exact representations or specimens were not furnished on the application for registration), furnish to the controller the prescribed number of exact representations or specimens of the design; and if he fails to do so the controller may erase his name from the register, and thereupon the copyright in the design shall cease; and

(b) cause each such article to be marked with the prescribed mark, or with the prescribed words or figures denoting that the design is registered; and if he fails to do so the proprietor shall not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design unless he shows that he took all proper steps to ensure the marking of the article, or unless he shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

(2) Where a representation is made to the Minister by or on behalf of any trade or industry that in the interests of the trade or industry it is expedient to dispense with or modify as regards any class or description of articles any of the requirements of this section as to marking, the Minister may if he thinks fit, by general rules made under this Act dispense with or modify such requirements as regards any such class or description of articles to such extent and subject to such conditions as he thinks fit.

No publication by confidential disclosure of design.

72. —The disclosure of a design by the proprietor to any other person, in such circumstances as would make it contrary to good faith for that other person to use or publish the design, and the disclosure of a design in breach of good faith by any person other than the proprietor of the design, and the acceptance of a first and confidential order for goods bearing a new or original textile design intended for registration, shall not be deemed to be a publication of the design sufficient to invalidate the copyright thereof if registration thereof is obtained subsequently to the disclosure or acceptance.

Inspection of registered designs.

73. —(1) During the existence of copyright in a design, or such shorter period not being less than two years from the registration of the design as may be prescribed, the design shall not be open to inspection except by the proprietor or a person authorised in writing by him, or a person authorised by the controller or by the court, and furnishing such information as may enable the controller to identify the design, and shall not be open to the inspection of any person except in the presence of the controller, or of an officer acting under him, and on payment of the prescribed fee; and the person making the inspection shall not be entitled to take any copy of the design, or of any part thereof:

Provided that where registration of a design is refused on the ground of identity with a design already registered, the applicant for registration shall be entitled to inspect the design so registered.

(2) After the expiration of the copyright in a design or such shorter period as aforesaid, the design shall be open to inspection, and copies thereof may be taken by any person on payment of the prescribed fee.

(3) Different periods may be prescribed under this section for different classes of goods.

Information as to existence of registration.

74. —On the request of any person furnishing such information as may enable the controller to identify the design, and on payment of the prescribed fee, the controller shall inform such person whether the registration still exists in respect of the design, and if so, in respect of what classes of goods, and shall state the date of registration, and the name and address of the registered proprietor.

Cancellation of registration of design.

75. —(1) At any time after the registration of a design any person interested may apply to the controller for the cancellation of the registration of the design, on either of the following grounds:—

(a) that the design was prior to the date of registration thereof published either in the late United Kingdom before the establishment of Saorstát Eireann or in Saorstát Eireann;

(b) that the design is applied by manufacture to any article in a foreign country, and is not so applied by manufacture in Saorstát Eireann to such an extent as is reasonable in the circumstances of the case:

Provided that, if the application be on the last-mentioned ground, and the controller is satisfied that the time which has elapsed from the date of registration has been insufficient for such application by manufacture in Saorstát Eireann, the controller may adjourn the application for such time as he may deem sufficient for that purpose; and that in lieu of cancellation the controller may order the grant of a compulsory licence on such terms as he may consider just.

(2) An appeal shall lie from any order of the controller under this section to the court, and the controller may at any time refer any such application to the court for trial.

Publication of designs at certain exhibitions.

76. —(1) The exhibition at an industrial or international exhibition certified as such by the Minister, or the exhibition elsewhere during the period of the holding of the exhibition, without the privity or consent of the proprietor, of a design, or of any article to which a design is applied, or the publication, during the holding of any such exhibition, of a description of a design, shall not prevent the design from being registered, or invalidate the registration thereof: Provided that—

(a) the exhibitor, before exhibiting the design or article, or publishing a description of the design, gives the controller the prescribed notice of his intention to do so; and

(b) the application for registration is made before or within six months from the date of the opening of the exhibition.

(2) The Executive Council may, by Order, apply this section to any exhibition mentioned in the Order in like manner as if it were an industrial or international exhibition certified as such by the Minister, and any such Order may provide that the exhibitor shall be relieved from the condition of giving notice to the controller of his intention to exhibit, and shall be so relieved either absolutely or upon such terms and conditions as may be stated in the Order.

Ministers may acquire designs.

77. —(1) It shall be lawful for any Minister to acquire by purchase or otherwise from the proprietor of a design (whether registered in Saorstát Eireann or elsewhere or unregistered) and it shall be lawful for such proprietor to sell or otherwise alienate to such Minister, such design or any right, liberty, or privilege in relation thereto upon such terms as may be agreed upon between the Minister and the proprietor and be sanctioned by the Minister for Finance.

(2) Any Minister may procure the registration (subject to the provisions of this Act) of any design acquired by or vested in him under this section or otherwise in the appropriate register established under this Act, and may procure the registration of any such design in any register maintained in any place outside Saorstát Eireann if and so far as and subject to such conditions as such registration is permitted by the law regulating such register, and in any such case may procure himself to be entered as the proprietor of any design so registered.

(3) It shall be lawful for a Minister to grant to any person a licence to use and apply to any goods any design of which such Minister shall be the registered proprietor and to charge such fees as shall be sanctioned by the Minister for Finance for such licences.

(4) Every licence granted by a Minister under the foregoing sub-section may contain provisions ensuring that the design to which such licence relates shall be applied by the licensee only to goods grown, manufactured, or produced in Saorstát Eireann, and any such licence may also contain such provisions, conditions, and restrictions as the Minister may think proper for ensuring that the design to which such licence relates shall only be applied by the licensee to goods of a specified quality or description.

(5) A Minister may at any time take such lawful steps, whether by action, or prosecution at law or otherwise, as he shall think proper to restrain or punish infringements of or otherwise to protect the copyright in any design of which he shall be the registered proprietor under this section, and may take such steps in Saorstát Eireann or in any other country or place in which he shall be so registered.

(6) In this section the word “Minister” means a Minister head of a Department of State established under the Ministers and Secretaries Act, 1924 (No. 16 of 1924).

Prohibition of infringement of copyright in design.

78. —(1) During the existence of copyright in any design it shall not be lawful for any person—

(a) for the purposes of sale to apply or cause to be applied to any article in any class of goods in which the design is registered the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or

(b) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article without the consent of the registered proprietor to publish or expose or cause to be published or exposed for sale that article.

(2) If any person acts in contravention of this section he shall be liable for every contravention to pay to the registered proprietor of the design a sum not exceeding fifty pounds, recoverable as a simple contract debt, or if the proprietor elects to bring an action for the recovery of damages for such contravention, and for an injunction against the repetition thereof, he shall be liable to pay such damages as may be awarded and to be restrained by injunction accordingly:

Provided that the total sum recoverable as a simple contract debt in respect of any one design shall not exceed one hundred pounds.

Applications abandoned or refused.

79. —Where an application for a design has been abandoned or refused, the application and any drawings, photographs, tracings, representations, or specimens left in connection with the application shall not at any time be open to public inspection or be published by the controller.