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In response to the raising critiques that "The Great Exhibition" may disadvantage the national exhibitors as it may increase the threat of piracy and fraudulent imitation, the English Parliament adopted an act to extend and amend the acts relating to the copyright of designs. This act introduced as a key point the possibility to file a provisional design application with minimal formal requirements and based on this provisional application to file a regular design applciaiton within a year of the filing date of the provisional application. Within this year specific actions of the applicant, such as publication, sale or exposure for sale of his product did not void the later regular application.
The problem exhibitors seem to have faced is that if they rushed to exhibit their products, without taking the time to file a regular design application, they were barred by their own action, as the exhibition of their design destroyed the novelty of their product. To be well noted this act does not grant a grace period, as a grace period just starts by an event, (publication of the design for example or non payment of an annuity fee for a European patent) and does not need a formal act, such as the filing of a provisional application. A provisional application, which exists still today in the United States for patent applications might be considered giving an internal priority right, only valid in the same country. Insofar this act may be seen as a trigger for the right of priority as laid down in the Paris Convention 26 years later
WHEREAS it is expedient to extend and amend the Acts relating to the Copyright of Designs: Be it therefore enacted by the Queen's most Excellent Majesty, by and with the Advice and Consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the Authority of the same :
Certain Designs may be registered provisionally for One Year
I. That the Registrar of Designs, upon Application by or on behalf of the Proprietor of any Design not previously published within the United Kingdom of Great Britain and Ireland or elsewhere, and which may be registered under the Designs Act, 1842, or under the Designs Act, 1843, for the provisional Registration of such Design under this Act, and upon being furnished with such Copy, Drawing, Print, or Description in Writing or in Print as in the Judgment of the said Registrar shall be sufficient to identify the particular Design in respect of which such Registration is desired, and the Name of the Person claiming to be Proprietor, together with his Place of Abode or Business, or other Place of Address, or the Style or Title of the Firm under which he may be trading, shall register such Design in such Manner and Form as shall from Time to Time be prescribed or approved by the Board of Trade ; and any Design so registered shall be deemed "provisionally registered," and the Registration thereof shall continue in force for the Term of One Year from the Time of the same being registered as aforesaid ; and the said Registrar shall certify, under his Hand and Seal of Office, in such Form as the said Board shall direct or approve, that the Design has been provisionally registered, the Date of such Registration, and the Name of the registered Proprietor, together with his Place of Abode or Business, or other Place of Address.
Benefits conferred by provisional Registration
II. That the Proprietor of any Design which shall have been provisionally registered shall, during the Continuance of such Registration, have the sole Right and Property in such Design ; and the Penalties and Provisions of the said Designs Act, 1842, for preventing the Piracy of Designs, shall extend to the Acts, Matters, and Things next herein-after enumerated, as fully as if those Penalties and Provisions had been re-enacted in this Act, and expressly extended to such Acts, Matters, and Things respectively ; that is to say,
The Exhibition of provisionally Designs in certain Places not to defeat Copyright, &c.
III. That during the Continuance of such provisional Registration neither such Registration nor the Exhibition or Exposure of any Design provisionally registered, or of any Article to 'which any such Design may have been or be intended to be applied, in any Place, whether public or private, in which Articles are not sold or exposed or exhibited for Sale, and to which the Public are not admitted gratuitously, or in any Place which shall have been previously certified by the Board of Trade to be a Place of public Exhibition within the Meaning of this Act, nor the Publication of any Account or Description of any provisionally registered Design exhibited or exposed or intended to be exhibited or exposed in any such Place of Exhibition or Exposure in any Catalogue, Paper, Newspaper, Periodical, or otherwise, shall prevent the Proprietor thereof from registering any such Design under the said Designs Acts at any Time during the Continuance of the provisional Registration, in the same Manner and as fully and effectually as if no such Registration, Exhibition, Exposure, or Publication had been made; provided that every Article to which any such Design shall be applied, and which shall be exhibited or exposed by or with the Licence or Consent of the Proprietor of such Design, shall have thereon or attached thereto the Words " provisionally registered," with the Date of Registration.
Sales of Articles to which Design has been applied to defeat Copyright, but Designs itself may be sold.
IV. That if during the Continuance of such provisional Registration the Proprietor of any Design provisionally registered shall sell, expose, or offer for Sale any Article, Substance, or Thing to which any such Design has been applied, such provisional Registration shall be deemed to have been null and void immediately before any such Sale, Offer, or Exposure shall have been first made; but nothing herein contained shall be construed to hinder or prevent such Proprietor from selling or transferring the Right and Property in any such Design.
Extension of Period of provisional Registration by Board of Trade.
V. That the Board of Trade may by Order in Writing with respect to any particular Class of Designs, or any particular Design, extend the Period for which any Design may be provisionally registered under this Act, for such Term not exceeding the additional Term of Six Months as to the said Board may seem fit; and whenever any such Order shall be made the same shall be registered in the Office for the Registration of Designs, and during the extended Term the Protection and Benefits conferred by this Act in case of provisional Registration shall continue as fully as if the original Term of One Year had not expired.
Registration of Sculpture, models, &c.
VI. 'That the Registrar of Designs, upon Application by or on behalf of the Proprietor of any Sculpture, Model, Copy, or Cast within the Protection of the Sculpture Copyright Acts, and upon being furnished with such Copy, Drawing, Print, or Description in Writing or in Print, as in the Judgment of the said Registrar shall be sufficient to identify the particular Sculpture, Model, Copy, or Cast in respect of which Registration is desired, and the Name of the Person claiming to be Proprietor, together with his Place of Abode or Business or other Place of Address, or the Name, Style, or Title of the Firm under which he may be trading, shall register such Sculpture, Model, Copy, or Cast in such Manner and Form as shall from Time to Time be prescribed or approved by, the Board of Trade for the whole or any Part of the Term during which Copyright in such Sculpture, Model, Copy, or Cast may o shall exist under the Sculpture Copyright Acts; and whenever any such Registration shall be made, the said Registrar shall certify under his Hand and Seal of Office, in such Form as the said Board shall direct or approve, the Fact of such Registration, and the Date of the same, and the Name of the registered Proprietor, or the Style or Title of the Firm under which such Proprietor may be trading, together with his Place of Abode or Business or other Place of Address.
Benefits conferred by Registration of Sculpture &c.
VII. That if any Person shall, during the Continuance of the Copyright in any Sculpture, Model, Copy, or Cast which shall have been so registered as aforesaid, make, import, or cause to be made, imported, exposed for Sale, or otherwise disposed of, any pirated Copy or pirated Cast of any such Sculpture, Model, Copy, or Cast, in such Manner and under such Circumstances as would entitle the Proprietor to a special Action on the Case under the Sculpture Copyright Acts, the Person so offending shall forfeit for every such Offence a Sum not less than Five Pounds and not exceeding Thirty- Pounds to the Proprietor of the Sculpture, Model, Copy, or Cast whereof the Copyright shall have been infringed; and for the Recovery of any such Penalty the Proprietor of the Sculpture, Model, Copy, or Cast which shall have been so pirated shall have and be entitled to the same Remedies as are provided for the Recovery of Penalties incurred under the Designs Act, 1842: Provided always, that the Proprietor of any Sculpture, Model, Copy, or Cast which shall be registered under this Act shall not be entitled to the Benefit of this Act, unless every Copy or Cast of such Sculpture, Model, Copy, or Cast which shall be published by him after such Registration shall be marked with the Word "registered," and with the Date of Registration.
Designs for ornamenting Ivory, &c. may be registered under Designs Act, 1842.
VIII. That Designs for the ornamenting of Ivory, Bone, Papier Mache, and other solid Substances not already comprised in the Classes numbered 1, 2, or 3 in the Designs Act, 1842, shall be deemed and taken to be comprised within the Class numbered 4 in that Act, and such Designs shall be so registered accordingly.
Board of Trade may extend Copyright in ornamental Designs.
IX. That the Board of Trade may from Time to Time order that the Copyright of any Class of Designs or any particular Design registered or which may be registered under the Designs Act, 1842, may be extended for such Term, not exceeding the additional Term of Three Years, as the said Board may think fit, and the said Board shall have Power to revoke or alter any such Order as may from Time to Time appear necessary; and whenever any Order shall be made by the said Board under this Provision, the same shall be registered in the Office for the Registration of Designs ; and during the extended Term the Protection and Benefits conferred by the said Designs Acts shall continue as fully as if the original Term had not expired.
Regulation for the Registration of Designs may be made by Board of Trade.
X. That the Board of Trade may from Time to Time make alter, and revoke Rules and Regulations with respect to the Mode of Registration, and the Documents and other Matters and, Particulars to be furnished by Persons effecting Registration and provisional Registration under the said Acts and this Act : Provided always, that all such Rules and Regulations shall be published in the London Gazette, and shall forthwith upon the issuing thereof be laid before Parliament, if Parliament be sitting, and if Parliament be not sitting, then within Fourteen Days after the Commencement of the then next Session; and such Rules and Regulations, or any of them, shall be published or notified by the Registrar of Designs in such other Manner as the Board of Trade shall think fit to direct.
Registrar of Designs may dispense with Drawings, &c. in certain Cases.
XI. That if in any Case in which the Registration of a Design is required to be made under either of the said Designs Acts it shall appear to the Registrar that Copies, Drawings, or Prints as required by those Acts cannot be furnished, or that it is unreasonable or unnecessary to require the same, the said Registrar may dispense with such Copies, Drawings, or Prints, and may allow in lieu thereof such Specification or Description in Writing or in Print as may be sufficient to identify and render intelligible the Design in respect of which Registration is desired; and whenever Registration shall be so made in the Absence of such Copies, Drawings, or Prints, the Registration shall be as valid and effectual to all Intents and Purposes as if such Copies, Drawings, or Prints had been furnished.
Public Books &c. in Designs Office not to be removed without Judge's Order.
XII. That in order to prevent the frequent and unnecessary Removal of the public Books and Documents in the Office for the Registration of Designs, no Book or Document in the said Office shall be removed for the Purpose of being produced in any Court or before any Justice of the Peace, without a special Order of a Judge of the Court of Chancery, or of One of Her Majesty's Superior Courts of Law, first had and obtained by the Party who shall desire the Production of the same.
Judges may order Copies of Documents to be furnished to be given in Evidence.
XIII. That if Application shall be made to a Judge of any of Her Majesty's Courts of Law at Westminster by any Person desiring to, obtain a Copy of any Registration, Entry, Drawing, Print, or Document, of which such Person is not entitled as of Right to have a Copy, for the Purpose of being used in Evidence in any Cause, or otherwise howsoever, and if such Judge shall be satisfied that such Copy is bona .fide intended for such Purpose as aforesaid, such Judge shall order the Registrar of Designs to deliver such Copy to the Party applying, and the Registrar of Designs shall, upon Payment for the same of such Fee or Fees as may be fixed according to the Provisions of the said Designs Act in this Behalf, deliver such Copy accordingly.
Copies of Documents deliverd by the Registrar to be sealed, and to be Evidence.
XIV. That every Copy of any Registration, Entry, Drawing, Print, or Document delivered by the Registrar of Designs to any Person requiring the same shall be signed by the said Registrar, and sealed with his Seal of Office ; and every Document sealed with the said Seal, purporting to be a Copy of any Registration, Entry, Drawing, Print, or Document, shall be deemed to be a true Copy of such Registration, Entry, Drawing, Print, or Document, and shall, without further Proof; be received in Evidence before all. Courts in like Manner and to the same Extent and Effect as the original Book, Registration, Entry, Drawing, Print, or Document would or might be received if tendered in Evidence, as well for the Purpose of proving the Contents, Purport, and Effect of such Book, Registration, Entry, Drawing, Print, or Document, as also proving the same to be a Book, Registration, Entry, Drawing, Print, or Document of or belonging to the said Office, and in the Custody of the Registrar of Designs.
Certain Provisions of Designs Acts 1842 and 1843 extended to this Act.
XV. That the several Provisions contained in the said Designs Acts (so far as they are not repugnant to the Provisions of this Act) relating to the Transfer of Designs, to cancelling and amending Registration, to the Refusal of Registration in certain Cases, to the Mode of recovering Penalties, to the awarding and Recovery of Costs, to Actions for Damages, to the Limitation of Actions, to the Certificate of Registration, to Penalties for wrongfully using Marks, to the fixing and Application of Fees for Registration, and to the Penalty for Extortion, shall apply to the Registration, provisional Registration, and Transfer of Designs, Sculptures, Models, Copies, and Casts, and to the Designs, Sculptures, Models, Copies, and Casts entitled to Protection under this Act, and to Matters under this Act, as folly and effectually as if those Provisions had been re-enacted in- this Act with respect to Designs, Sculptures, Models, Copies, and:
Casts registered and provisionally registered under this Act; and the Forms contained in the Designs Act, 1842, may for the Purposes of this Act be varied so as· to meet the Circumstances of the Case.
Interpretation of Terms.
XVI. That in the Interpretation of this Act the following Terms and Expressions shall have the Meanings herein-after assigned to them, unless such Meanings shall he repugnant to or inconsistent with the Context or Subject Matter ; that is to say,
The Expression Designs Act, 1842," shall mean an Act passed in the Sixth Year of the Reign of Her present; Majesty, intituled An Act to consolidate and amend the-Laws relating, to the Copyright of Designs for ornamenting Articles of Manufacture :
The Expression " Designs Act, 1843," shall mean an Act passed in the Seventh Year of Her present Majesty, intituled An Act to amend the Laws relating to the Copyright of Designs:
The Expression " Sculpture Copyright Acts " shall mean Two Acts passed respectively in the Thirty-eighth and Fifty-fourth Years of the Reign of King George the Third, and intituled respectively An Act for encouraging the Art of making new Models and Casts of Busts and other Things herein mentioned, and An Act to amend and render more· effectual an Act for encouraging the Art of making new Models and Casts of Busts and other Things therein mentioned :
The Expression "the Board of Trade" shall mean the Lords of the Committee of Privy Council for the Consideration of all Matters of Trade and Plantations :
The Expression Registrar of Designs" shall mean the Registrar or Assistant Registrar of Designs for Articles of Manufacture :
The Expression " Proprietor" shall be construed according to the Interpretation of that Word in the said Designs Act, 1842:
And Words in the Singular Number shall include the Plural, and Words applicable to Males shall include Females.
Short Title.
XVII. That in citing this Act in other Acts of Parliament, and in any Instrument, Document, or Proceeding, it shall be sufficient to use the Words and Figures following, that is to say, " The Designs Act, 1850. "
Please note: Orthography of the original Act has been retained
(c) EPO express 2020
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