Registered Designs Examination Practice guide

Part F: Glossary

The glossary contains a short explanation of terms and abbreviations, contained within the manual.

Alphabetical list  
Appointed Person Appointed Persons are experienced intellectual property law practitioners, appointed by the Lord Chancellor for the purposes of hearing appeals against decisions of the Registrar. Any adverse decision made by IPO’s Designs Examination Section may be appealed to the Appointed Person. However, unlike actions brought before the Courts, appeals to the Appointed Person are final. They do not provide any further route to appeal. All AP decisions are published on the Office website.
Article 6ter Article 6ter is a part of the Paris Convention for the Protection of Industrial Property, and specifically protects national flags and emblems of convention countries. The World Intellectual Property Organisation (WIPO) holds a database of these flags and emblems, all of which will have been notified to WIPO by individual countries.
C- The letter ‘C’, when used as part of the case reference for a legal judgment, signifies that the judgment in question has been issued by the Court of Justice of the European Union (‘CJEU’).
Court of Justice of the European Union (CJEU) The CJEU is the highest court in the European Union in matters of EU law. Decisions of the CJEU are binding on all EU member states and therefore on UK design decisions. Cases are mainly referred to the Court by EU member states for a ‘preliminary ruling’ on a point of law, or as cases on appeal from the General Court (GC).
Design Practice Notices (DPN) DPNs are used to notify our stakeholders of changes in relation to examination practice. They are published in the Intellectual Property section of the UK Government’s website, and provide guidance for practitioners on how the Registrar is continuing to update practice.
EU Designs Directive The Designs Directive is a piece of legislation which harmonised the way in which designs are registered in the EU. It was implemented in the UK by the Registered Design Regulations 2001.
European Union Intellectual Property Office (EUIPO) The EUIPO (formerly known as the Office for Harmonisation in the Internal Market or ‘OHIM’) is the EU Institution which promotes, grants and manages European Trade Marks (ETMs) and Registered Community Designs (RCDs). Once registered, an RCD extends to all 28 EU member states. It should be noted that if a design is successfully challenged in any one member state, the design will fall throughout the EU. Application(s) for a Registered Community Design.
Ex parte hearing A hearing on an issue solely between an applicant and the Registrar.
Forms A number of different forms are used by the IPO for the purposes of administering registered design applications and registrations.
General Court (GC) The General Court (European Union) is a constituent court of the Court of Justice of the European Union. It hears actions taken against the institutions of the European Union by individuals and member states. Decisions of the GC on points of law are binding on the Tribunal and decisions of fact are of persuasive value in cases where similar considerations apply. The GC is used for appeals involving Community institutions such as the EUIPO. There is the right of appeal from the GC decision to the CJEU.
Geneva Convention Act 1957 The Geneva Convention Act 1957 is the legislative vehicle which enables the UK to enact the Geneva Convention. This allows for, in particular, the protection of the Red Cross and equivalent symbols by the UK government.
Hearing Officer A hearing officer is a senior representative of the Registrar of Designs, and issues decisions on his behalf. Hearing Officers can deal with both ex parte and inter partes proceedings.
Intellectual Property Office (IPO) The IPO is an operating name of the Patent Office. It is the government body responsible for intellectual property rights in the UK and is an executive agency of the Department for Business, Energy and Industrial Strategy.
Inter Partes Hearing A hearing involving two or more parties, held before a Hearing Officer from the IPO’s Trade Marks and Designs Tribunal. In the context of registered designs, an inter partes hearing will commonly relate to an invalidation action brought by one designer against another.
Locarno Classification The Locarno Classification (LOC), established by the Locarno Agreement (1968), is an international classification system used for the purposes of classifying industrial designs in relation to design registrations. It is an administrative tool which enables third parties to search national design registers for earlier prior art. Although the Locarno system is managed by WIPO, the UK is a member and therefore attends international meetings.
Paris Convention for the Protection of Industrial Property The Paris Convention for the Protection of Industrial Property, adopted in 1883, as amended 1979, applies to industrial property in the widest sense, including industrial designs, trade marks, patents and geographical indications. It is administered by the World Intellectual Property Office (or ‘WIPO’ - see below) and, amongst other things, enables users to protect their intellectual property in other countries by allowing them to claim a date from an earlier application (a so-called ‘priority claim’). The Convention also provides automatic protection for flags and emblems of convention countries (those signed up to the Paris Convention).
Registered Designs Act 1949 (as amended) The legislative vehicle by which designs are examined in the UK. It sets out the overall requirements for designs registrations. The Registered Designs Act was last updated by The IP Act 2014.
Registered Designs Rules 2006 A piece of UK secondary legislation which sets out the statutory requirements in respect of registered designs, and provides guidance on filing requirements.
Registered Community Design (RCD) An RCD is a Europe-wide registered design right which gives the owner the exclusive right to use the design and prevents third parties from exploiting it. An RCD is registered by the EUIPO (see above) and grants protection in all 28 EU member states.
RPC Abbreviation for ‘Reports of Patent, Design and Trade Mark Cases’, a series of law reports relating to intellectual property cases, currently published on behalf of the Intellectual Property Office by Oxford University Press.
T- The letter ‘T’, when used as part of the case reference for a legal judgment, signifies that the judgment in question has been issued by the General Court, a constituent court of the CJEU. The Court, which was formerly known as the European Court of First Instance, can hear appeals against Community Registered Design decisions made by the EUIPO Boards of Appeal
Trade Marks and Designs Tribunal A department within the IPO which deals with inter partes trade mark and designs proceedings involving two or more parties.
UK Courts (High Court, Court of Appeal and Supreme Court) Any decision reached by the IPO Designs Examination Section may be appealed to the UK Courts. Unlike the AP decisions which are not subject to further appeal, decisions of the Courts can be appealed to a higher jurisdiction. Decisions issued by any of the UK Courts are binding on the Registrar and must be taken into account when making further decisions on future designs cases.
World Intellectual Property Organisation (WIPO) WIPO is a United Nations Agency which specialises in protecting intellectual property rights throughout the world. Applicants who wish to file an international designs application can do so through the Hague system.