Copyright, Designs and Patents Act 1988, section 237

Licences available in last five years of design right

Part III Design Right

(1)Any person is entitled as of right to a licence to do in the last five years of the design right term anything which would otherwise infringe the design right.

(2)The terms of the licence shall, in default of agreement, be settled by the comptroller.

(3)The Secretary of State may if it appears to him necessary in order to—

(a)comply with an international obligation of the United Kingdom, or

(b)secure or maintain reciprocal protection for British designs in other countries,

by order exclude from the operation of subsection (1) designs of a description specified in the order or designs applied to articles of a description so specified.

(4)An order shall be made by statutory instrument; and no order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

Definitions used in section 237 6

licence

(2)Where design right (or any aspect of design right) is owned by more than one person jointly, references in this Part to the design right owner are to all the owners, so that, in particular, any requirement of the licence of the design right owner requires the licence of all of them.

Defined in s.258(2) · see it in the full Act

(4)A licence granted by the owner of design right is binding on every successor in title to his interest in the right, except a purchaser in good faith for valuable consideration and without notice (actual or constructive) of the licence or a person deriving title from such a purchaser; and references in this Part to doing anything with, or without, the licence of the design right owner shall be construed accordingly.

Defined in s.222(4) · see it in the full Act

(3)A licence granted by a prospective owner of design right is binding on every successor in title to his interest (or prospective interest) in the right, except a purchaser in good faith for valuable consideration and without notice (actual or constructive) of the licence or a person deriving title from such a purchaser; and references in this Part to doing anything with, or without, the licence of the design right owner shall be construed accordingly.

Defined in s.223(3) · see it in the full Act
design

1 (1) In this Act “design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include—

(a)a method or principle of construction, or

(b)features of shape or configuration of an article which—

(i)are dictated solely by the function which the article has to perform, or

(ii)are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

Defined in Sch.4 para.38 · see it in the full Act

(2) In this Part “design” means the design of ... the shape or configuration (whether internal or external) of the whole or part of an article.

Defined in s.213(2) · see it in the full Act

“design” has the meaning assigned to it by section 1(1) of this Act ;

Defined in Sch.4 para.38 · see it in the full Act
the comptroller

“the comptroller” means the Comptroller-General of Patents, Designs and Trade Marks;

Defined in s.263(1) · see it in the full Act
British design

“British design” means a design which qualifies for design right protection by reason of a connection with the United Kingdom of the designer or the person by whom ... the designer is employed;

Defined in s.263(1) · see it in the full Act
country

“country” includes any territory;

Defined in s.263(1) · see it in the full Act
article

“article” means any article of manufacture and includes any part of an article if that part is made and sold separately;

Defined in Sch.4 para.38 · see it in the full Act

Cases considering section 237 5

Ultraframe (UK) Ltd. v Eurocell Building Plastics Ltd.& Anor

[2005] EWCA Civ 761 · 24 June 2005Interprets

The provision concerns an actual licence of right. It is conceptually distinct from the undertaking and hypothetical licence contemplated by section 239 (see paras [107]-[110]; [118]). The right to a licence during the final five years of the design-right term was distinguished from the remedies-limiting undertaking under section 239 (see paras [107]; [110]). The Comptroller's power to settle licence terms in default of agreement formed part of the actual-licence machinery, which need not be completed for section 239 to limit remedies (see paras [107]; [110]).

Ifejika v Ifejika & Anor

[2014] EWHC 2625 (IPEC) · 31 July 2014

The court applied the provision governing the availability of licences of right to determine whether the statutory limitation mechanism could become relevant to the account of profits. (see paras [34]-[36])

Dyson Ltd v Qualtex (UK) Ltd

[2004] EWHC 2981 (Ch) · 21 December 2004

The court confirms that a person is entitled as of right to a licence during the last five years of the design-right term. Accordingly, monetary relief rather than injunctive relief is generally appropriate during that period. (see paras [40], [175]) The court notes that the terms of a compulsory licence are settled by the comptroller in default of agreement. (see para [175])

What each judgment says about section 237 is in the case-law panel in the full Act.