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Industrial Property - Industrial Designs Ss 4559

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45.     Registrable industrial design

            (1) An industrial design (hereinafter referred to as "a design") shall be capable of being registered if it is new.

            (2) A design shall be deemed to be new if it has not been disclosed to the public anywhere in the world by publication in a 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 of such design.

            (3) Disclosure of information claimed in an application for registration of a design which would otherwise affect the registrability of a design shall not affect the registrability of that design where the information was disclosed as provided in section 8 (6).

            (4) A design which is contrary to public order or morality shall not be registered.

            (5) A design shall not be registered where it consists entirely of features dictated solely by functional or technical considerations; however, the degree of freedom of the designer in developing his or her design shall be taken into consideration.

46.     Application for registration of design

            (1) An application for the registration of a design shall be made to the Registrar in the prescribed manner and shall be accompanied by-

     (a)     a request, in writing, for the registration of the design;

     (b)     drawings, photographs or other graphic representations of the article embodying the design;

     (c)     a statement, in writing, indicating the kind of products for which the design is to be used; and

     (d)     such application fee as may be prescribed.

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

            (3) An applicant for the registration of a design who is not the creator of the design shall furnish to the Registrar, in writing, such proof of his or her title or authority to apply for registration as may be prescribed.

            (4) An application for the registration of a design under this section may be in respect of two or more designs, provided that the designs relate to the same class of International Classification or to the same set or composition of articles.

            (5) An application for the registration of a design may, at the time of filing, contain a request that the publication of the design, upon registration, be deferred for a period not exceeding 12 months from the date of filing or, if priority is claimed, from the date of priority, of the application.

            (6) The applicant may, at any time before the registration of a design, withdraw his or her application.

47.     Right of priority

            The provisions of section 17 shall apply in relation to a design.

48.     Filing date of application

            (1) The filing date of an application for the registration of a design shall be the date on which the application is received by the Office if at the time of receipt, the application contains information allowing the identity of the applicant to be established and the required graphic representation of the article embodying the design.

            (2) Where the application does not comply with the requirements of subsection (1), the Registrar shall, in writing, request the applicant to supply the information or representation missing in the application, and shall accord as the filing date, the date on which the missing elements are filed.

            (3) If an applicant fails to comply with a request made by the Registrar under subsection (2), the application shall be treated as though it had never been filed.

49.     Examination of application

            The Registrar shall cause the application to be examined to determine whether-

     (a)     it complies with the requirements of section 46 (1) and (3) and the regulations pertaining thereto;

     (b)     it complies with the definition of an industrial design under this Act;

     (c)     it complies with the appropriate regulations made in pursuance of this Part;

     (d)     the design is not contrary to public order or morality; and

     (e)     multiple designs submitted under a single application are in accordance with section 46 (4).

50.     Registration of design

            (1) Where, following the examination referred to in section 49, the Registrar is satisfied that the requirements of this Act have been fulfilled, he or she shall register the design.

            (2) Where the Registrar registers a design, he or she shall, within such time as may be prescribed-

     (a)     issue, to the applicant, a certificate of registration of the design;

     (b)     record such registration in the register; and

     (c)     publish, in the Journal, a reference to the registration of the design.

            (3) Notwithstanding the provisions of subsection (2), where a request has been made under section 46 (5) for deferment of publication, the representation of the design or any file relating to the application shall not, upon registration of the design, be open for public inspection; and in this case, the Registrar shall publish, in the Journal, a mention of the deferment of the publication of the industrial design and information identifying the registered owner of the design, and indicating the filing date of the application, the length of the period for which deferment has been requested, and such other particulars as may be prescribed.

            (4) At the expiry of the period of deferment, the Registrar shall publish, in the Journal, the registered design.

            (5) The institution of legal proceedings on the basis of a registered design during the period of deferment of publication shall be subject to the condition that the information contained in the register and in the file relating to the application has been communicated to the person against whom the action is brought.

            (6) An application which, owing to any default or neglect on the part of the applicant, has not been completed within the prescribed period shall be deemed to have been abandoned.

51.     Right to industrial design

            (1) The right to a design shall belong to the owner of the design.

            (2) If two or more persons have made a design jointly, the right to the design shall belong to them jointly.

            (3) Where two or more persons have made the same design but independently of each other, the person whose application bears the earliest filing date, or, if priority is claimed, the person whose application bears the earliest validly claimed priority date shall, unless that application is abandoned, withdrawn or rejected by the Registrar, have the right to the design.

            (4) Where a design is made in execution of a contract of employment, the right to the design shall, in the absence of any agreement to the contrary, belong to the employer.

            (5) The owner of a design shall be named as such in the design, unless, in a special declaration in writing signed by him or her and addressed to the Registrar, he or she indicates that he or she wishes not to be named, and any promise or undertaking by the owner of the design made to any person to the effect that he or she will make such a declaration shall be without legal effect.

52.     Transfer of right to design

            The right to a design may be transferred by cession, assignment, testamentary disposition or by operation of law.

53.     Rights conferred by registration

            (1) The registration of a design confers on its registered owner the right to prevent third parties not having the owner's consent from exploiting the design in Botswana, and in particular, from making, importing or selling any article bearing or embodying the registered design or a design not substantially different from the registered design.

            (2) For the purposes of this section, exploitation of a registered design means the doing of any act specified in subsection (1).

54.     Exceptions to rights conferred by registration

            (1) The exclusive rights conferred by registration of a design shall not extend to the acts specified in section 25 (1), paragraphs (a), (b) (c), (i) and (j).

            (2) The exclusive rights in a registered design shall not extend to the parts or features of the design that are dictated solely by functional or technical considerations however in the determination, the degree of freedom of the designer in developing the design, shall be taken into consideration.

            (3) The exclusive rights in a registered design shall not extend to features of appearance of a product which must necessarily be reproduced in the exact form and dimensions in order to permit the product in which the design is embodied, or to which it is applied, to be mechanically connected to or placed in, around or against another product so that each product may perform its function.

            (4) The exclusive rights in a registered design shall not extend to features of appearance of a product which must necessarily be reproduced in the exact form and dimensions in order to match the overall aspect and appearance of the product in which the design is embodied or to which it is applied.

            (5) The rights of an owner of a registered design shall not extend to acts in respect of which articles have been put on the market in Botswana or abroad by the owner, or with his or her consent.

55.     Proceedings for infringement of industrial design

            (1) An owner of a registered design shall, in addition to any other rights, remedies or actions available to him or her have the right to institute court proceedings against any person performing, without the owner's consent or authorisation, any of the acts referred to in section 53, or who performs acts which make it likely that infringement will occur.

            (2) In any proceedings under this section, the court may grant relief by way of damages, interdict, delivery up or destruction of any infringing product, article or product of which the infringing product forms an inseparable part, or account of profits derived from the infringement or otherwise as it may consider necessary.

            (3) The court shall not, in awarding damages under this section, also order, in respect of the same infringement, that the plaintiff be given an account of the profits derived by him or her from the infringement.

            (4) In any proceedings under this section, the court shall have jurisdiction to order the revocation of the registration of a design on any of the grounds specified in section 59, and any such grounds may be relied upon by way of defence.

56.     Duration and renewal of registered design

            (1) The registration in respect of a design shall expire five years after the filing date of the application for its registration, but may, upon payment of such renewal fee as may be prescribed, be renewed for two further consecutive periods of five years each.

            (2) Where the owner of the design is late in paying the renewal fee, the Registrar shall, upon payment by the owner of a surcharge that may be prescribed, give a grace period of six months within which the owner must pay the late renewal fee.

57.     HARARE Protocol Designs

            An industrial design in respect of which Botswana is a designated State, registered by ARIPO under the HARARE Protocol, shall have the same effect in Botswana as an industrial design registered under this Act unless the Registrar communicates, to ARIPO, in respect of the registered design, a decision, in accordance with the provisions of the Protocol, that an industrial design registered by ARIPO, shall have no effect in Botswana.

58.     Inspection of registered design

            (1) Subject to the provisions of section 46 (5), the representations, specimens and drawings of a registered design, including all documents lodged in relation thereto shall, upon payment of such fees as may be prescribed, be open to inspection by any person on and after the day on which the certificate of registration is issued, however the right of inspection shall not include the right to make a copy of any such representation, drawing or document by mechanical means.

            (2) Any person may, upon payment of such fees as may be prescribed, obtain, from the Registrar, a copy of the representations, drawings or documents.

            (3) Where an application for the registration of a design has been abandoned or refused, the representations, drawings or other documents shall not, at any time, be open for inspection, but shall, after the expiration of 12 months from the date of application for registration, be returned to the applicant if he or she requests that they be so returned.

59.     Invalidation of registration of design

            (1) Subject to the provisions of this Act, the Registrar or the High Court may, on the application of any interested person, invalidate the registration of a design, either wholly or in part, in respect of any particular article in connection with which the design is registered on any of the following grounds-

     (a)     that the design was not new;

     (b)     that the applicant for registration was not the owner;

     (c)     that the application was made with the intention of defrauding the owner of the design; or

     (d)     that any grounds on which the Registrar could have refused to register the design have come to light.

            (2) Where an application for the invalidation of a design is made to the High Court, it shall be served on the person in whose name the design is registered and lodged with the court in the manner and within the time prescribed.

            (3) Where subsection (2) applies, the Master shall notify the Registrar of any decision of the court to invalidate a design and the Registrar shall, within such time as may be prescribed, publish a reference thereto in the Journal.