Commentary Part 1: DESIGNS Section 10: UK Registered designs – Legal proceedings and appeals
35.Subsection (1) makes a change to the provisions of section 24B of the RDA, which relate to the potential financial liabilities that may be faced by a person who innocently infringes a UK registered design. A person is an innocent infringer if he proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the infringed design was registered.
36.The changes have been driven by the fact that there are different potential financial liabilities for the innocent infringement of UK registered designs and the innocent infringement of Community designs, even though both are valid in the UK. Specifically, damages and/or an account of profits may be sought against an innocent infringer of a Community design but neither can be sought against an innocent infringer of a UK registered design.
37.The amendment to section 24B of the RDA results in a proprietor of a UK registered design being able to seek from an innocent infringer some or all of the profits made because of the infringing activity, but not any wider form of financial damages.
38.Subsection (2) introduces new sections 27A and 27B into the RDA. New section 27A provides new routes of appeal against decisions made by the registrar relating to designs. It offers those involved a choice of using either a person appointed by the Lord Chancellor (an “appointed person”) or the court, and reflects the system already in place for challenging trade mark decisions of the registrar(4).
39.This will offer users a quicker, more informal and low-cost alternative to the courts. Although a user may choose to appeal to the appointed person, it is possible, for example where the issue is of general legal importance, for the appointed person to refer the appeal to the court. New section 27B provides for the process for the appointment and removal of an appointed person. The persons who might be expected to be appointed include legal professionals, such as IP barristers.
40.Subsection (4) removes section 28 of the RDA which makes provision for the Registered Design Appeal Tribunal (RDAT) but which has never been brought into force.