Revised Laws of Saint Lucia (2021)

Industrial Designs Regulations – Section 24

(Statutory Instruments 50/2003 and 145/2020)

Statutory Instrument 50/2003 .. in force 10 June 2003

Amended by S.I. 145/2020 .. in force 21 September 2020

ARRANGEMENT OF REGULATIONS

INDUSTRIAL DESIGNS REGULATIONS – SECTION 24

Commencement [10 June 2003]

1.   Citation

These Regulations may be cited as the Industrial Designs Regulations.

2.   Interpretation

In these Regulations—

“Act” means the Industrial Designs Act;

“applicant” means a person for whom an application is made;

“application” means an application for registration of an industrial design;

“office” means the Registry of Companies and Intellectual Property;

“International Classification for Designs” means Locarno Agreement establishing an International Classification of Industrial Designs;

“section” means the specified section of the Act.

3.   Fees

The fees to be paid in respect of matters arising under the Act and these Regulations shall be those set out in Schedule 1.

4.   Forms

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   (1)   The forms referred to in these Regulations are those in Schedule 2.

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   (2)   A requirement to use a form set out in Schedule 2 is satisfied by the use either of a replica of the form, or of a form which is acceptable to the Registrar and contains the information required by the corresponding form set out in Schedule 2.

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   (3)   If a document that is submitted to the Office differs significantly from the form in Schedule 2 intended to be used for the purpose of submission, the Registrar may require that the document be replaced, within a time fixed by the Registrar, by one that conforms with the document required by Schedule 2 to be used for the purpose.

5.   Applications – language of

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   (1)   Applications shall be in English.

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   (2)   Any document forming part of an application submitted to the Registrar under the Act or these Regulations which is in a language other than English shall be accompanied by an English translation verified by the translator that the translation is to the best of his or her knowledge complete and faithful.

6.   Applications – paper requirements

1.  

   (1)   All applications, notices, statements, paper having representations affixed, or other documents authorised or required by the Act or these Regulations to be made must be on strong, durable white paper and except in the case of declarations and affidavits, must be written on one side of the paper only.

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   (2)   Each sheet must be of the same size and be 8½ x 11 or A4 size paper or such other size as the Registrar may permit.

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   (3)   All applications, notices, statements or other documents required by the Act or these Regulations shall be filed in duplicate.

7.   Page margins

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   (1)   The pages of documents other than graphic representations must be numbered consecutively, preferably at the top of the page.

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   (2)   Page margins must not be less than 2 cm or 1 inch.

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   (3)   Except for graphic representations, pages must be typed or printed, preferably with 1½ spacing or double spacing.

8.   Indication of name, address, nationality

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   (1)   Names of natural persons shall be indicated by given name or names, followed by the person's family name and the names of the legal entities shall be indicated by their full, official designation.

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   (2)   Addresses shall be in such a manner as to satisfy customary requirements for prompt postal delivery at the indicated address.

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   (3)   Nationality shall be indicated by the name of the State of which a person is a national and legal entities shall indicate the name of the State under whose laws they are constituted.

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   (4)   Residence shall be indicated by the name of the State of which a person is resident.

9.   Signature by Partnerships, Companies and Associations

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   (1)   A document purporting to be signed for or on behalf of a partnership shall contain the names of all the partners in full and shall be signed by all the partners or by any partner qualified to sign, stating that he or she signs on behalf of the partnership, or by any other person who satisfies the Registrar that he or she is authorised to sign.

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   (2)   A document purporting to be signed for or on behalf of a body corporate shall be signed by a director, or by the secretary or other principal officer of the body corporate, or by any other person who satisfies the Registrar that he or she is authorised to sign the document and shall bear the seal or stamp of the body corporate.

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   (3)   A document purporting to be signed for or on behalf of an association of persons may be signed by any person who satisfies the Registrar that he or she is duly authorised to sign.

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   (4)   The Registrar may, whenever he or she deems it necessary, request evidence of authorisation to sign.

10.   Authorisation of agent

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   (1)   The appointment of an attorney-at-law shall be by an authorisation of agent as set out in Form I, and shall be signed by the applicant or, if there are more than one, each applicant.

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   (2)   The authorisation of agent may be filed together with the application or within 2 months from its filing date and if the appointment is not made in accordance with sub-regulation (1), any procedural steps taken by the agent, other than the filing of the application, shall be deemed not to have been taken.

11.   Application for registration of industrial design

1.  

   (1)   The application for the registration of an industrial design shall be made in Form 2 and shall be signed by each applicant or authorised agent.

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   (2)   The application shall indicate each applicant's name, address, nationality and residence.

12.   Number and size of representations and specimen

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   (1)   The application shall be accompanied by the following—

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      (a)     if the industrial design is two-dimensional, by 4 graphic representations, or 4 drawings or tracings;

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      (b)     if the industrial design is three-dimensional, by 4 graphic representations or 4 drawings or tracings of each of the different sides of the industrial design.

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   (2)   No graphic representation, drawing or tracing of the industrial design shall exceed 10 centimetres by 20 centimetres (4 inches by 8 inches) and such representations, drawings or tracings shall be affixed on 4 sheets of durable white paper or cardboard of A4 or 8½ x 11 size.

13.   Declaration of priority

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   (1)   The declaration referred to in section 6(4) shall be made at the time of filing of the application for the industrial design and shall indicate—

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      (a)     the date of the earlier application;

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      (b)     the number of the earlier application, subject to sub-regulation 2;

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      (c)     the symbol of the International Classification for Industrial Designs which has been allocated to the earlier application, subject to subregulation (3);

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      (d)     the State in which the earlier application was filed or, where the earlier application is a regional or an international application, the State or States for which it was filed;

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      (e)     where the earlier application is a regional or international application, the office with which it was filed.

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   (2)   Where at the time of filing the declaration referred to in sub-regulation (1) the number of the earlier application is not known, that number shall be forwarded within 3 months from the date on which the application containing the declaration was filed.

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   (3)   Where a symbol of the International Classification for Industrial Designs has not been allocated to the earlier application, or had not yet been allocated at the time of filing the declaration referred to in subregulation (1) the applicant shall state this fact in the said declaration and shall communicate such symbol as soon as it has been allocated.

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   (4)   The applicant may, at any time before the registration of the industrial design, amend the contents of the declaration referred to in subregulation (1).

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   (5)   The period for furnishing the certified copy of the earlier application, referred to in section 6(5), shall be 3 months from the date of the request by the Registrar and where a copy has already been furnished for another application, the applicant may respond by making a reference to that application.

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   (6)   Where the earlier application is in a language other than English, the applicant shall, within 6 months from the date of the afore-mentioned request, furnish an English translation of the earlier application verified by the translator that the translation is to the best of his or her knowledge complete and faithful.

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   (7)   Unless the Registrar requests otherwise, the earlier application and any translation thereof shall be filed in one copy.

14.   Withdrawal of application

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   (1)   The application may be withdrawn, under section 6(9), by written declaration submitted to the Registrar and signed by each applicant.

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   (2)   The application fee shall not be refunded if the application is withdrawn.

15.   Numbering of application

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   (1)   Upon receipt, the Registrar shall mark, on each document making up the application, the actual date of receipt and the application number in a manner determined by the Registrar to be appropriate.

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   (2)   Where any corrections or other later filed documents are received on different dates, the Registrar shall also mark their actual date of receipt in the appropriate place on the request for registration of the industrial design.

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   (3)   The application number allotted under subregulation (1) shall be quoted in all subsequent communications concerning the application.

16.   Examination; decision to grant or refuse

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   (1)   The Registrar shall examine whether the application fulfils the requirements of section 7(1).

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   (2)   The invitation to file any correction under section 7(2) shall be in writing and it shall specify the correction or corrections required and request that these be filed within 2 months from the date of the invitation, together with the payment of the prescribed fee.

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   (3)   If the application is treated as if it had not been filed, under section 7(2), the Registrar shall notify the applicant in writing specifying the reasons.

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   (4)   Where the Registrar finds that the conditions set out in sections 3, 4(4) and 6(1), 6(3) and 6(10), and the Regulations pertaining thereto are not fulfilled, he or she shall invite the applicant in writing to file the required correction within 2 months from the date of the invitation, together with the payment of the prescribed fee, and if the applicant chooses not to comply with the invitation to correct a deficiency or where, despite correction submitted by the applicant, the Registrar is of the opinion that the said conditions are not fulfilled, he or she shall reject the application and notify the applicant in writing, stating the reasons.

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   (5)   Refusal of the application shall not affect its filing date which shall remain valid.

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   (6)   The Registrar shall notify the applicant, in writing, of his decision to grant or refuse the application and, in the case of a decision to grant the application, he shall request the applicant to pay the registration and publication fee within one month from the date of the notification.

17.   Registration of industrial design

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   (1)   Subject to the payment of the registration and publication fee within the period prescribed in regulation 16(6), the Registrar shall register the industrial design in accordance with section 8(1) and this regulation.

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   (2)   The Registrar shall allot to each industrial design a registration number in sequential order of registration.

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   (3)   The registration of an industrial design shall include a representation of the industrial design and shall specify—

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      (a)     the number of the industrial design;

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      (b)     the name and address of the registered owner;

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      (c)     the name and address of the agent, if any;

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      (d)     the name and address of the creator except where he or she has asked not to be named in the registration;

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      (e)     if priority has been claimed, and the claim has been accepted, the priority date and the country or countries in which or for which the earlier application was filed; and

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      (f)     the kind of products for which the industrial design is to be used.

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   (4)   The publication of the reference to the registration of an industrial design under section 8(1) shall contain the particulars specified in subregulation (3).

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   (5)   The certificate of registration of an industrial design shall be issued in Form 3 of Schedule 2.

18.   Renewal of registration

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   (1)   The renewal of registration of an industrial design under section 10(2) may be made by the registered owner or his or her agent during the 6 month period preceding the expiry of the registration in Form 4 of Schedule 2.

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   (2)   The renewal shall be made by payment of the renewal fee within the specified period in subregulation (1) or, upon payment of the prescribed surcharge, within the grace period allowed under section 10(3).

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   (3)   The renewal of an industrial design registration shall be recorded in the Register and shall be published.

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   (4)   The Registrar shall issue to the registered owner a certificate of renewal in Form 5 which contains—

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      (a)     the registration number of the industrial design;

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      (b)     the date of renewal and the date of expiry;

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      (c)     the name and address of the registered owner; and

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      (d)     an indication of the kind of products for which the industrial design has been registered.

19.   Entries in the Register

The Registrar shall cause to be entered in the Register in respect of every industrial design, in addition to the information indicated in regulation 17(3)—

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   (a)     the address for service;

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   (b)     the date on which the industrial design registration expired or was surrendered or invalidated;

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   (c)     any change in name, or address, or any change in ownership or address for service in accordance with regulations 20 and 21;

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   (d)     the fact that a licence contract has been concluded and recorded under section 14(2).

20.   Change in ownership, licence contracts

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   (1)   The request under section 13, for the recording of a change in ownership of an industrial design registered under the Act or of an application therefor shall be made on Form 6 and shall be subject to the payment of the prescribed fee.

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   (2)   The publication of the change in ownership shall specify—

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      (a)     the number of the application or registration concerned;

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      (b)     the filing date, the priority date, if any, and the date of registration;

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      (c)     the owner and new owner; and

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      (d)     the nature of the change of ownership.

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   (3)   A licence contract submitted for recording under section 14(2) shall be accompanied by the prescribed fee.

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¹     If there is more than one person or competent authority, together, opposing the registration of the geographical indication, the data concerning each opponent must appear on a supplementary page if the space provided is not sufficient. Indicate the numbers continued on the supplementary page by their numerals and titles.

^{2     Where an attorney-at-law has been appointed, the address for service of the attorney-at-law shall be treated as the address to which communications shall be transmitted. (Regulation 2292))}

21.   Address for service

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   (1)   There shall be furnished to the Registrar—

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      (a)     by every applicant for the registration of an industrial design, an address for service in Saint Lucia for the purpose of the application; and

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      (b)     by every person (including the applicant for, or the owner of an industrial design, as the case may be) concerned in any proceedings to which any of these Regulations relate, an address for service in Saint Lucia,

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   and the address so furnished or, where another address (being an address in Saint Lucia) has been furnished in place thereof, that address shall be treated for the purpose of that application or those proceedings, as appropriate, as the address of that applicant or, as the case may be, of that person.

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   (2)   Where an agent has been appointed in accordance with section 20 and regulation 10, the address of the agent shall, for all purposes connected with the Act and these Regulations, be treated as the address to which communications to that person or persons who appointed the agent shall be transmitted.

22.   Excluded days

When the last day for doing any act or taking any proceedings falls on a day when the office is not open to the public for business, it shall be lawful to do the act or take the proceedings on the day when the office is next open for business.

23.   Search, certified copies

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   (1)   A search of the Register or any file pertaining to an industrial design shall be subject to payment of the prescribed fee.

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   (2)   Requests for certified copies of extracts from a Register or for copies of documents shall be made to the Registrar in writing and shall be subject to payment of the prescribed fee.

24.   Inspection of licence contracts

The file relating to a licence contract may be inspected and extracts obtained only with the written permission of the licensor or licensee.

25.   Correction of errors

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   (1)   Correction of errors under section 17 may be made by the Registrar upon receipt of a request in writing and subject to such terms as he or she may consider appropriate, or on his or her own initiative.

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   (2)   Corrections made shall be communicated to all interested persons and, where considered necessary, shall be published by the Registrar.

26.   Hearing

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   (1)   Before exercising adversely to any person any discretionary power given to the Registrar by the Act or these Regulations, the Registrar shall notify such person, in writing, of the opportunity to be heard thereon, and indicate a time limit, which shall not be less than one month, for filing a request for a hearing.

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   (2)   The request for hearing shall be in writing and shall be subject to the payment of the prescribed fee.

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   (3)   Upon receiving such request, the Registrar shall give to the person applying, and any other interested persons, at least 2 weeks notice, in writing, of the date of and time of the hearing.

27.   Service by mail

Any notice, application or other document sent to the Registrar by mail shall be deemed to have been given, made or filed at the time when it would be delivered in the ordinary course of the mail and in proving such sending, it shall be sufficient to prove that the letter containing such notice, application or other document was properly addressed and sent by registered mail.

28.   Extension of time

The time or periods prescribed by these Regulations for doing any act or taking any proceedings thereunder, other than the time prescribed in regulation 13(1), may be extended by the Registrar if he or she thinks fit, upon such notice to the parties and upon such terms as he or she may direct, and such extensions may be granted although the time or period for doing such act or taking such proceeding has already expired.

29.   Directions by Registrar

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   (1)   At any stage of any proceedings before the Registrar, he or she may direct that such documents, information or evidence as he or she may require be furnished within such period of time as he or she may fix.

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   (2)   Where no provision is made in the Act or these Regulations in respect of any matter arising in the administration of the Act, the Registrar may make such directions in respect thereof as he or she considers necessary.

30.   Dispensation by the Registrar

Where under these Regulations, any person is to do any act or thing, or any document or evidence is required to be produced or filed, and it is shown to the satisfaction of the Registrar that from any reasonable cause that person is unable to do that act or thing, or that document or evidence cannot be produced or filed, the Registrar may, upon the production of such evidence and subject to such terms as he or she thinks fit, dispense with the doing of any such act or thing, or the production or filing of such document or evidence.

31.   (Revoked by S.I. 145/2020)

32.   Evidence

1.  

   (1)   Where under these Regulations evidence may be filed, it shall be by statutory declaration or affidavit.

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   (2)   The Registrar may, if he or she thinks fit, in any particular case, take oral evidence in lieu of or in addition to such evidence and shall allow any witness to be cross-examined on his or her affidavit or declaration.

33.   Statutory declarations and affidavits

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   (1)   Any statutory declaration or affidavit filed under the Act or these Regulations shall be made before any officer authorised by law in Saint Lucia to administer an oath for the purposes of any legal proceedings.

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   (2)   Statutory declarations or affidavits made outside Saint Lucia shall be made before a consul or notary public.

34.   Publication

Particulars of industrial designs and other proceedings under the Act and any other information required to be published under the Act or these Regulations shall be published in the Gazette.

35.   Registrar's certificate

1.  

   (1)   The Registrar may give a certificate, other than a certificate prescribed by the Act or these Regulations, regarding any entry, matter or thing that he or she is authorised or required by the Act or these Regulations to make or do.

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   (2)   A person who can show an interest in an entry, matter or thing for which a certificate is required may, by an application in Form 7 request the certificate from the Registrar, and the applicant need not disclose his or her interest unless required by the Registrar to do so.

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   (3)   In a certificate issued under this regulation, the Registrar need not include a copy of any design unless a suitable copy of the design accompanies the application for the certificate.

36.   General

The Registrar may acknowledge inquiries made to the office, but the Registrar need not furnish any applicant or other person with information that would require a search of the public records of the office or provide advice on matters concerning the interpretation of the Act or Regulations or concerning other questions of law.