Industrial Design Act 2003

Link to law: http://laws.gov.ag/acts/2003/a2003-19.pdf

No. 19 of 2003. lk Industrial Designs Act 2003. 1 ANTIGUA
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BARBUDA

[ L.S. ]
I Assent,

James B. Carlisle,
Governor-General.

ANTIGUA AND BARBUDA

No. 19 of 2003

AN ACT to make provision for the protection and registration of
industrial designs and other purposes related thereto.

[ 31st December, 2003 ]

ENACTED by the Parliament of Antigua and Barbuda as fol-
lows -

1. (1) This Act may be cited as the Industrial Designs Act, Short title arid
2003. Commencement.

(2) This Act comes into force on a date to be fixed by the
Minister by notice published in the Gazette.

2. In this Act,

"Court" means the High Court;

Interpretation.

"International Classification" means, as regards indus-
trial designs, the classification according to the Locarno
Agreement Establishing an International Classification for
Industrial Designs, of October 8,1968, as last revised;

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"Minister" means the Minister responsible for intellec-
tual property;

"Paris Convention" means the Paris Convention for the
Protection of Industrial Property of March 28, 1883, as
last revised;

"register" means the Register of Industrial Designs re-
ferred to in section 16;

"Registrar" means the Registrar appointed under the Reg-
istrar of Intellectual Property Office Act, 2003;

"regulations" means the regulations made pursuant to
section 24.

Definition of 3. (1) For the purposes of this Act, any composition of lines
"industrial or colours or any three-dimensional form, whether or not asso-
design". ciated with lines or colours, is deemed to be an industrial de-

sign, provided that such composition or form gives a special
appearance to a product of industry or handicraft and can serve
as a pattern for a product of industry or handicraft.

(2) The protection under this Act does not extend to any-
thing in an industrial design which serves solely to obtain a
technical result and to the extent that it leaves no freedom as
regards arbitrary features of appearance.

Registrable 4. (1) An industrial design is registrable if it is new.
industrial designs.

(2) An industrial design shall be new if it has not been dis-
closed to the public, anywhere in the world, by publication in
tangible form or by use or in any other way, prior to the filing
date or, where applicable, the priority date of the application for
registration.

(3) For the purposes of subsection (2), disclosure to the pub-
lic of an industrial design shall not be taken into consideration
if it

(a) occurred within twelve mor~ths preceding the filing
date or, where applicable, the priority date of the
application; and

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(b) if it was by reason or in consequence of acts com-
mit%cd by the applicant or his predecessor in title or
of an abuse committed by a third party with regard
to the applicant or his predecessor in title.

(4) An industrial design that is contrary to public order or
morality is not registrable.

5. (1) The right to registration of an industrial design shall ~ i g h t o
belong to the creator. registration of

industrial designs;
naming of

(2) If two or more persons have jointly created an industrial
design, the right to registration of that design shall belong
to them jointly.

(3) If and to the extent to which two or more persons have
created the same industrial design independently of each other,
the person whose application has the earliest filing date or, if
priority is claimed, the earliest validly claimedpriority date shall
have the right to register the industrial design, as long as the
application is not withdrawn, abandoned or rejected.

(4) The right to the registration of an industrial design may
be assigned, or may be transferred by succession.

(5) Where an industrial design is created in execution of an
employment contract, the right to registration of the industrial
design shall belong, in the absence of contractual provisions to
the contrary, to the employer.

(6 ) The creator shall be named as such in the registration of
the industrial design, unless in a special written declaration
signed by him and addressed to the Registrar he indicates that
he wishes not to be named.

(7) Any promise or undertaking by the creator made to any
person to the effect that he will make such a declaration referred
to in subsection (6) shall be without legal effect.

6. (1) The application for registration of an industrial design Application.
shall be filed with the Registrar and shall contain a request,
drawings, photographs or other adequate graphic representa-
tions of the article embodying the industrial design and an indi-
cation of the kind of products for which the industrial design is
to be used.

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(2) The application may be accompanied by a specimen of
the article embodying the industrial design, where the industrial
design is two-dimensional.

(3) Where the applicant is not the creator, the request shall
be accompanied by a statement justifying the applicant's right
to-the registration of the industrial design.

(4) Two or more industrial designs may be the subject of the
same application, provided they relate to the same class of the
International Classification or to the same set or composition of
articles.

(5) The application, at the time of filing, may contain a re-
quest that the publication of the industrial design, upon regis-
tration, be deferred for a period not exceeding 12 months from
the date of filing or, if priority is claimed, from the date of prior-
ity, of the application.

(6) The applicant may withdraw the application at any time
during its pendeccy.

(7) The application shall be subject to the payment of the
prescribed application fee.

Right of priority. 7. (1) The application may contain a declaration claiming the
priority, as provided for in the Paris Convention, of one or more
earlier national, regional or international applications filed by
the applicant or his predecessor in title in or for any State party
to that Convention, or Member of the World Trade Organiza-
tion.

(2) Where the application contains a declaration under sub-
section (I), the Registrar may request that the applicant furnish,
within the prescribed time limit, a copy of the earlier application
certified as correct by the Office with which it was filed; and the
effect of the declaration shall be as provided in the Paris Con-
vention.

(3) If the Registrar fmds &a: the reqaikcments m2er &is
section and the Regulations pertaining to a declaration have
not been fulfilled, the declaratjon shall be considered not to
have been made.

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8. (1) The Registrar shall accord as the filing date the date of Filing date and
receipt of the application, provided that, at the time of receipt, examination^

the application contains indications allowing the identity of the
applicant to be established and the required graphic representa-
tion of the article embodying the industrial design.

(2) If the Registrar finds that the application did not, at the
time of receipt, fulfill the requirements referred to in subsection
(I), he shall invite the applicant to file the required correction
and shall accord as the filing date the date of receipt of the
required correction, but if no correction is made, the application
shall be treated as if it had not been filed.

(3) After according a filing date, the Registrar shall examine
whether the application complies with the requirements of sec-
tions 6(1), (2), (3) and (7) and whether the application fee has
been paid.

(4) The Registrar shall examine whether the industrial design
complies with the requirements of Sections 3 and 4(4).

9. (1)Where the Registrar finds that the conditions referred Registration and
to in section 8(3) and (4) are fulfilled, he shall register the indus- p

ublication.

trial design, publish a reference to the registration and issue to
the applicant a certificate of registration of the industrial de-
sign; otherwise, he shall refuse the application.

(2) Notwithstanding subsection (I), where a request has been
made under section 6(5) for deferment ofpublication, upon reg-
istration of the industrial design, neither the representation of
the design nor any file relating to the application shall be open
to public inspection; and the Registrar shall publish a mention
of the deferment of the publication of the industrial design and
information identifying the registered owner, and indicating the
filing date of the application, the length of the period for which
deferment has been granted and any other prescribed particu-
lars.

(3) At the expiry of the period of deferment, the Reg~strar
shall publish the registered industrial design.

(4) The institution of legal proceedings on the basis of a
Registered industrial design during the period of deferment of
publication shall be subject to the condition that the informa-

ANTIGUA 6 The Industrial Designs Act 2003. No. 19 of 2003.
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tion contained in the Register and in the file relating to the appli-
cation has been communicated to the person against whom the
action is brought.

Rights conferred 10. (1) The exploitation of a registered industrial design in
by regisbation. Antigua and Barbuda by persons other than the registered owner

shall require the agreement of the latter.

(2) For the purposes of this Act, "exploitation" of a regis-
tered industrial design means the making, selling or importation
for commercial purposes, of articles bearing or embodying a
design which is a copy, or substantially a copy of the industrial
design.

(3) The rights conferred by registration of an industrial de-
sign shall not extend to acts in respect of articles which have
been put on the market in Antigua and Barbuda by the regis-
tered owner of the industrial design or with his consent.

(4) The registered owner of an industrial design shall, in ad-
dition to any other rights, remedies or actions available to him,
have the right to institute court proceedings against any per-
son who infringes the industrial design by performing, without
his agreement, any of the acts referred to in subsection (2) or
who performs acts which make it likely that infringement will
occur.

Duration and 11. (1) The registration of an industrial design shall be for a
renewal of period of five years from the filing date of the application for
registration. registration.

(2) The registration may be renewed for two further consecu-
tive periods of five years through the payment of the prescribed
fee.

(3) A period of grace of six months shall be allowed for the
late payment of the renewal fee on payment of the prescribed
surcharge.

Sumnder of 12. The owner of a registered industrial design may surren-
registration. der it by written declaration to the Registrar who shall record the

surrender in the Register and publish it; and the surrender shall
have effect from the date on which it is recorded.

~nvalidation. 13. (1) Any interested person may apply to the Court to
invalidate the -tion of an industrial design.

No. 19 of 2003. The Industrial Designs Act 2003. 7 ANTIGUA
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(2) The Court shall invalidate the registration if the person
requesting the invalidation proves that any of the requirements
of Sections 3 and 4 is not fulfilled or if the registered owner of
the industrial design is not the creator or his successor in title.

(3) Any invalidated registration of an industrial design, or
part thereof, shall be regarded as null and void from the date of
the registration.

(4) The final decision of the Court shall be notified to the
Regisbrar who shall record it and publish a reference to it as
soon as practicable.

14. (1) Any change in the ownership of the registration of an Changes in
industrial design, or in the ownership of an application therefor, ~ ~ e " ~ ~ p .

shall be in writing in the prescribed form and shall, at the request
of any interested party made to the Registrar, be recorded and,
except in the case of an application, published by the Registrar.

(2) A change under subsection (1) &all be of no effect against
third parties until it has been recorded.

15. (1) Any licence contract concerning a registered indus- Licence
trial design, or an application therefor, shall be submitted to the confTa"fs.

Registrar who shall keep its contents confidential but shall record
it and publish a reference to it.

(2) A licence contract shall be of no effect against third par-
ties until it has been submitted to the Registrar in accordance
with subsection (1).

16, Where an applicant's ordinary residence or principal place Agents.
of business is outside Antigua and Barbuda, he shall be repre-
sentecl by a registered agent resident and practising in Antigua
and Barbuda before the Registrar of the Intellectual Property
Officc:. The procedure for the registration of an agent shall be
prescribed in the regulations.

17. (1)The Registrar shall maintain a separate register for Register.
indusltrial designs and all the recordings provided for in this Act
shall be effected in that register.

(b) The register may be consulted by any person, and
any person may obtain extracts therefrom, under
the conditions pnsc r i id in the Regulations.

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Correction of
errors.

Extension of
time.

Exercise of
discretionary
powers.

Competence of
Court; appeals.

Infringement and
offmcer.

The Industrial Designs Act 2003. No. 19 of 2003.

(2) The Registrar shall publish in the Gazette or in an intel-
lectual property journal published under the authority of the
Registrar, or in both, all the publications provided for in this
Act.

18. The Registrar may, subject to any provision in the Regu-
lations, correct any error of translation or transcription, clerical
error or mistake in any application or document filed with the
Industrial Property Registry or in any recording effected pursu-
ant to this Act or the Regulations.

19. (1)If the Registrar is satisfied that the circumstances jus-
tify it, he may, upon receiving a written request, extend the time
for doing any act or taking any proceeding under this Act and
the Regulations, upon notice to the parties concerned and upon
such terms as he may direct.

(2) An extension under subsection (1) may be granted though
the time for doing the act or taking the proceeding has expired.

20. The Registrar shall give any party to a proceeding before
him an opportunity of being heard before exercising adversely
to that party any discretionary power vested in him by this Act
or the Regulations.

21. (1) The Court shall e v e jurisdiction in cases of dispute
relating to the application of this Act and the Regulations and
in matters which under this Act are to be referred to the court.

(2) Any decision taken by the Registrar under this Act, in
particular the registration of an industrial design or the refusal
of an application for such a registration, may be the subject of an
appeal by any interested party before the Court and such appeal
shall be filed within two months of the date of the decision.

22. (1) Subject to d o n 10 (3), an idihgcment shall consist
of the performance of any act r e f d to in section 10 in Antigua
and Barbuda by a person other than the owner of the title of
protection snd without the agrcemcnt of the latter.

(2) On the rsqiucst of the ewnaa of the registmd industrial
design, or of a kensee if b baa q a e d the owner to &-

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tute court proceedings for a specific relief and the owner has
refused or failed to do so, the court may grant an injunction to
prevent infringement, or an imminent infringement, award dam-
ages and grant any other remedy provided for in the general law.

(3) Any person who knowingly perfom an act which con-
stitutes an infringement as defined in subsection (1) is guilty of
an offence and liable on summary conviction to a fine of $50,000
or to imprisonment for a tenn of 3 years.

23. The provisions of any intemational treaties in respect of
industrial property to which Antigua and Barbuda is a party
shall apply to matters dealt with by this Act and, in case of
conflict with provisions of this Act, shall prevail over the latter.

24. (1) ?hc Minister may mslrt such regulations as arc re-
quired for better -tion of this Act, and in particular, the
Minister may make regulations prescriii any matter required
or authorized by the Act to be prescribed;

(a) prescribing the f e e in respect of applications for
the registration of industrial designs and any sur-
charge payable under the Act and matters related
thereto; and

(b) requiring the payment of a fet in respect of the fil-
ing, examination or copying of any document, con-
sultation of the register and obtaining of extracts
tt#nfnnn, or m respect to any action that the Regis-
trar is rcquircd or authorized to take under this Act.

25. (1) The United Kingdom Designs (Protection) Act is re-
pealed.

(2) A person who on the date of entry into force of this Act is
&c pmpri&x of m mbtrial design that has been registered in
tht United Kingdom ot has filed an application for registration
of m industd deilign in the United Kingdom may, within 12
months h m the entry into force of this Act, file an application
fot fhc -tion of the ssmt inQstrial design under this Act;
md such application M b C accorded the filing date or, where
priaritr ha been claimed, any priority date acwrded to the rp

grant or reghtdm in the United Kingdom.

Application of
intemational
treaties.

Regulations.

Repeal of
Crp. 453 urd
transitional
provisions.

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Passed the House of Representatives
this 8th day of September, 2003.

B. Harris,
Speaker.

S. Walker,
Clerk lo the House of Representatives.

Passed the Senate this 25th day
of September, 2003.

M. Percival,
President.

S. Walker,
Clerk to the Senate.

Printed at the Government Printing Office, Antigua and Barbuda,
by Walter A. Massiah, Government Printer

-By Authority, 2003.
800-1203 [Price $4.351
Read Entire Law on laws.gov.ag