Registered Designs Act 2000 · 2020 Revised Edition · Part 3 · Rights in Registered Designs
44. Remedy for groundless threats of infringement proceedings
Feedback & supportLast amended by an amending law of 2021.
Where a person (whether or not entitled to or interested in a registered design or an application for registration of a design) threatens any other person with proceedings for infringement of a registered design, any person aggrieved thereby may bring proceedings against the person making the threats for relief under this section.
The relief which may be applied for are —
a declaration that the threats are unjustifiable;
an injunction against the continuance of the threats; and
damages in respect of any loss the person has sustained by the threats,and the claimant is entitled to such relief unless —
the defendant proves that the acts in respect of which the proceedings were threatened constitute, or if done would constitute, an infringement of the design; and
the claimant fails to show that the registration of the design concerned is invalid.
Proceedings may not be brought under this section as regards a threat to bring proceedings for an infringement alleged to consist of the making or importing of anything.
For the purposes of this section, a notification that a design is registered does not of itself constitute a threat of proceedings within the meaning of this section.
design
“design” means features of shape, configuration, colours, pattern or ornament applied to any article or non‑physical product that give that article or non‑physical product its appearance, but does not include —(a)a method or principle of construction;(b)features of shape, configuration or colours of an article or a non‑physical product that —(i)are dictated solely by the function that the article or non‑physical product has to perform;(ii)are dependent upon the appearance of another article or non‑physical product of which the article or non‑physical product is intended by the designer to form an integral part; or(iii)enable the article or non‑physical product to be connected to, or placed in, around or against, another article or non‑physical product, so that either article or non‑physical product may perform its function; or(c)features consisting only of one or more colours that —(i)are not used with any feature of shape or configuration; and(ii)do not give rise to any feature of pattern or ornament;
Nothing in this section renders an advocate and solicitor liable to an action under this section in respect of an act done by him or her in his or her professional capacity on behalf of a client.