Statutory guidance

DPN 5/06: Changes to the registered designs rules to coincide with the modernisation of primary legislation

Published 20 November 2007

The main changes to the existing rules are listed in the following paragraphs:

1. Simplification of the application procedure

A new application form DF2A has been designed to allow multiple designs to be filed in any one application. A new form DF2B has also been designed to enable surplus designs filed in any original multiple application (on the basis that insufficient fees were paid to cover all the designs shown) to be re-filed and granted the original filing date.

The requirements for filing are all listed on the application form and in the accompanying notes for guidance. Requirements in the 1995 rules (as amended 2001), such as two sets of representations, and text on representations, such as page numbering and name of applicant, have been removed to make the completion of applications less bureaucratic and time consuming.

The period for putting an application in order is reduced from 12 months to 2 months for all formalities and 3 months to provide replacement representations. However, if an applicant can provide the Registrar with good reasons, the 2 and 3 month periods may be extended under Rule 19 which gives general powers to the registrar in relation to proceedings before him.

2. Option to defer publication of designs

In any design application, applicants must consent to the publication and registration of the design or designs (Rule 4). If they do not consent to this then they must ask to defer the publication and registration of the design or designs. They will then have a period of up to 12 months from the date of filing in which to request publication and subsequent registration by completing and returning a Form DF2C to us, which must be accompanied by a £40 fee for each design they wish to publish.

3. Public inspection

Rule 29 has been introduced to provide for the public inspection of documents. Subject to certain conditions, documentation relating to registered designs may be inspected, although this provision will not be retrospective, only applying to applications filed on or after 1 October 2006. A new rule to request confidentiality of documents (Rule 30) has also been introduced.

4. Security for costs

The registrar’s discretion to require security for costs under Rule 23 has been limited further. The new rule takes account of the relevant provisions of international treaties and it is derived from the equivalent provision of the Civil Procedure Rules 1998 (CPR r. 25.12 and r.25.13). The registrar will have the power to require security for costs in circumstances where a costs order could theoretically be enforced but there is evidence that a party has not paid other awards of costs against it. In those circumstances, the lower costs awarded by the registrar (compared to the courts) suggest that it would be more proportionate to require the party concerned to provide security for their costs, rather than to require the other party to face the increased prospect and risk of having to go to court to recover what may be a relatively modest award of costs.

5. Filing a counterstatement

A new Form DF19B has been designed for the purpose of filing a counterstatement, and a new consequence for not filing a counterstatement has been introduced, namely that the registrar may treat the registered proprietor as not opposing the application. The counterstatement must state which allegations are denied or admitted, and which allegations the registered proprietor requires the applicant to prove.

6. Filing for self cancellation of a registration

A new Form DF19C has been designed for the purpose of self cancellation by the registered proprietor. This action was previously covered by the form DF19A which also covered invalidation and cancellation under the old law.