Chapter 8

Remedies

55. —(1) Where in proceedings before the appropriate court the validity of the registration of a design is contested and it is found by that court that the design is validly registered, the court may certify that finding and the fact that the validity of the registration of the design was contested in those proceedings.

(2) Where a certificate has been granted under subsection (1), and in any subsequent proceedings before the appropriate court for infringement of the design right or for invalidation of the registration of the design, a final order or judgement is made or given in favour of the party relying on the validity of the registration, that party shall, unless the court otherwise directs, be entitled to his or her costs as between solicitor and client.

(3) Subsection (2) shall not extend to the costs of an appeal in any proceedings.

56. —(1) Where a person (whether or not the registered proprietor of, or entitled to any design right in, or any other interest in a design) by circulars, advertisements or otherwise threatens another person with proceedings for infringement of design right, a person aggrieved by the threats (whether or not he or she is the person to whom the threats are made) may bring proceedings in the appropriate court against the person making the threats for any such relief as is mentioned in subsection (3).

(2) In any proceedings under subsection (1), the plaintiff shall, where he or she proves that the threats were so made and satisfies the court that he or she is a person aggrieved by them, be entitled to the relief claimed unless—

(a) the defendant proves that the acts in respect of which the proceedings were threatened constitute or, if undertaken, would constitute an infringement of the design right, and

(b) the plaintiff fails to show that the registration of the design concerned is invalid.

(3) The relief referred to in subsections (1) and (2) shall be—

(a) a declaration to the effect that the threats complained of are unjustifiable,

(b) an injunction against the continuance of the threats, and

(c) such damages, if any, as have been sustained by the plaintiff by reason of the threats.

(4) For the purposes of this section, a notification of the existence of a registered design does not of itself constitute a threat of proceedings within the meaning of this section.

(5) In this section, “a person aggrieved” shall not include a person making or importing any object.

57. —(1) An infringement of the design right is actionable by the registered proprietor of the design.

(2) No proceedings shall be taken in respect of an infringement committed before the date on which the certificate of registration of the design under this Act is granted.

(3) In an action for infringement of the design right under this section, all relief by way of damages, injunction, account of profits or otherwise is available to the plaintiff as it is available in respect of the infringement of any other property right.

58. —(1) Where in an action for the infringement of the design right in a registered design, it is shown that at the time of the infringement the defendant did not know and had no reason to believe that the design was registered, the plaintiff shall not be entitled to damages against the defendant and no order shall be made for an account of profits.

(2) For the purposes of subsection (1), a person shall not be regarded as knowing or having reason to believe that the design was registered by reason only of the application to a product, or to any printed matter accompanying a product, of the word “registered”, or any word or words or abbreviation expressing or implying that a design has been registered, unless the registration number of the design accompanied the word or words or abbreviation concerned.

(3) Nothing in this section shall affect the power of the appropriate court to grant an injunction in any proceedings for the infringement of the design right in a registered design.

(4) In an action for infringement of design right, the appropriate court may, if it thinks fit, refuse to award any damages or make an order for an account of profits in respect of an infringement committed at any time during the period referred to in subsection (4) of section 43 but before the fees referred to in that subsection are paid.

59. —In addition to or as an alternative to awarding compensation to a plaintiff for financial loss, the appropriate court may award aggravated or exemplary damages or both aggravated and exemplary damages.

60. —(1) Where, in proceedings for infringement of the design right in a design in respect of which a licence is available as of right, the defendant undertakes to take a licence on such terms as may be agreed or, in default of agreement, settled by the Controller—

(a) no injunction shall be granted against the defendant,

(b) no order for delivery up shall be made under section 61 , and

(c) the amount recoverable against the defendant by way of damages or on an account of profits shall not exceed 3 times the amount which would have been payable by the defendant as licensee where a licence on those terms had been granted before the earliest infringement.

(2) An undertaking under subsection (1) may be given at any time before the final order in the proceedings without any admission of liability.

(3) Nothing in this section shall affect the remedies available in respect of an infringement committed before a licence was available as of right.

61. —(1) Where a person in the course of a business, trade or profession has in his or her possession, custody or control infringing products or articles the registered proprietor of the design may apply to the appropriate court for an order that the infringing products or articles be delivered up to him or her or to such other person as the court may direct.

(2) An application under subsection (1) shall not be made after the expiration of the period specified in subsection (1) of section 71 as being the limit of the period for delivery up and no order shall be made unless the appropriate court also makes, or it appears to the appropriate court that there are grounds for making, an order as to the disposal of an infringing product or article.

(3) A person to whom an infringing product or article is delivered up pursuant to an order made under this section shall, where an order under section 72 as to the disposal of the infringing product or article is not made, retain it pending the making of an order, or the decision not to make an order, under that section.

62. —(1) Where the registered proprietor of a design applies to the District Court, it may, where satisfied that there are reasonable grounds for believing that there are being hawked, carried about or marketed infringing products or articles, authorise by order a member of the Garda Síochána accompanied by such other members of the Garda Síochána or other person or persons as that member thinks proper, to seize without warrant the products or articles and to bring them before the District Court.

(2) On being satisfied that any product or article referred to in subsection (1) is an infringing product or article the District Court may order the product or article to be destroyed or to be delivered up to the registered proprietor or otherwise dealt with as the Court may think fit.

(3) In an application to the District Court under subsection (1) or, in any ex parte application or interlocutory motion to a court of competent jurisdiction for an order which would permit the applicant to enter and search a premises or place specified in that order and take possession of material found in those premises or that place on terms set out in such order, the court hearing such an application may receive hearsay evidence to the effect that the witness or deponent believes that the material may be found in a particular location.

(4) A witness or deponent shall not be obliged to indicate the source of the information upon which that witness formed the belief that material may be found in a particular location.

(5) After the implementation of an order made under this section, the appropriate court may, on the application of a person aggrieved by it, award damages against the applicant for the order as it considers just, on being satisfied that—

(a) no infringement of design right has been established, and

(b) the information on which the registered proprietor applied for the order was given maliciously.