The following is a summary of some of the amendments proposed in the Registered Designs (Amendment) Rules 2004 which are targeted to come into force on 1 January 2005:
Section 20 of the Registered Designs Act relating to the date of registration has been amended. The amended Section 20 reads:
“Date of registration
20 - (1) A design when registered shall be registered as of the date on which the application for registration is filed, and that date shall be deemed for the purposes of this Act to be the date of its registration.”
The amendment will be effective only in relation to applications lodged on and from the 1st January 2005. With effect from the 1st January 2005 therefore, the date of registration of a design which has a priority claim, is the date of its application at the Registry.
Priority documents are no longer required to be filed with an application which claims priority. However, the Registrar has the discretion to request a copy of such documents where the need arises. The amendment to the rule also makes clear that multiple priorities may be claimed.
The forms to be used in proceedings before the Registrar and any amendments to such forms will now be published in the Designs Journal. Please note however, the existing forms have not been amended in this round of amendments and as such, the Designs forms in the IPOS website may still be used.
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The Designs Registry has published a special edition of the Designs Journal (No 01A/2005) which contains the revised edition of the Designs Forms. The revised forms are also downloadable from IPOS' website after the 15th January 2005.
The updated forms are marked "V01/01/05" at the bottom left corner of each page to distinguish them from the older version of the forms. All design applications are required to be submitted using these forms from the 17 January 2005. |
Rule 14 has been amended to clarify that the Registrar may issue practice directions to indicate the maximum number of views of a representation, the dimensions of each view. The requirement that the representations must be in the form of a drawing or photograph suitable for reproduction is retained.
The amendment clearly states that a late fee will have to be paid if an application for the extension of registration is filed within six months after the date of expiry of the current period of registration.
The amendment clarifies what is required for applications relating to the different registrable transactions as listed in section 34(2) of the Registered Designs Act. The amendment also clarifies the consequence of non-compliance with the requirements.
Rules 40 to 44 have been amended and new Rules 49A (Extension of time in revocation proceedings), 49B (Costs in uncontested revocations), 49C (intervention by third parties), 52 (Right of affected party to be heard) and Rule 54 (Evidence in proceedings before Registrar) to mirror the established opposition procedures in the Trade Marks Rules. The new Rule 47A introduces a Pre-hearing review procedure and Rule 60A, the Case Management Conference into the Rules.
A new Part VIIA has been inserted in the Rules which governs applications for costs and the procedures for taxation of costs. A new Fourth Schedule relating to the Scale of Costs is introduced.
Rule 57 has been amended to prescribe the procedure for requesting extensions of time. Such requests will require a notice to be sent to all parties affected by the extension and the requestor must obtain the consent of all these relevant parties. The Registrar has the discretion to refuse to grant an extension in situations where there are no good and sufficient reasons for an extension or where the parties likely to be affected by the extension have not been notified that an extension is being sought. The Registrar also has discretion to allow an extension without having to conduct a hearing if he is satisfied that there is good and sufficient reason to do so.
The hours of business and excluded days will now be published by way of Practice Directions.