INDUSTRIAL DESIGNS ACT, 2003 (ACT
660)
ARRANGEMENT OF SECTIONS
Section
1. Definition of industrial design
2. Registrable industrial design
3. Right to registration
4. Naming the creator
5. Application
6. Examination
7. Opposition to registration
8. Registration and publication
9. Rights conferred by
registration
10. Duration and renewal of
registration
11. Surrender of registration
12. Cancellation of registration
13. Changes in ownership
14. Licence contracts
15. Registrar
16. Register
17. Correction of errors
18. Extension of time
19. Exercise of discretionary
powers
20. Representation
21. Appeals
22. Infringement and offences
23. Application of international
treaties
24. Harare Protocol
25. Regulations
26. Interpretation
27. Repeal and saving
SCHEDULE
Schedule
THE SIX HUNDRED AND SIXTIETH
ACT OF THE PARLIAMENT OF THE
REPUBLIC OF GHANA
ENTITLED
INDUSTRIAL DESIGNS ACT, 2003
AN ACT to revise the enactments on
the protection of industrial
designs and to provide for related
matters.
DATE OF ASSENT: 31st December,
2003.
BE IT ENACTED by Parliament as
follows
Section 1—Definition of Industrial
Design
(1) For the purpose of this Act
(a) a composition of lines or
colours, any three-dimensional
form or any material, whether or
not associated with lines or
colours,
(b) a textile design
is an industrial design where the
composition, form or material
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
is not applicable to anything in
an industrial design which serves
solely to obtain a technical
result to the extent that it
leaves no freedom as regards
arbitrary features of appearance.
Section 2—Registrable Industrial
Design
(1) An industrial design is
registrable if it is new.
(2) An industrial design is new or
original if it significantly
differs from known designs or
combinations of known design
features.
(3) For the purposes of subsection
(2), disclosure to the public of
an industrial design shall not be
taken into consideration if the
disclosure
(a) occurred within twelve months
preceding the filing date or where
applicable, the priority date of
the application; and
(b) was as a result of acts
committed by the applicant or the
applicant's predecessor-in-title
or of an abuse committed by a
third party with regard to the
applicant or the applicant's
predecessor in title.
(4) An industrial design which is
contrary to public order or public
morality is not registrable.
Section 3—Right to Registration
(1) Where a person creates an
industrial design, the right to
the registration of that
industrial design belongs to the
creator.
(2) Where two or more persons
create the same industrial design,
the right to registration of that
industrial design belongs to them
jointly.
(3) Where 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 claimed priority 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 an industrial
design may be assigned,
transferred or devolve by
succession.
(5) Where an industrial design is
created in execution of an
employment contract, the right to
registration of the industrial
design belongs, in the absence of
contractual provisions to the
contrary, to the employer.
Section 4—Naming the Creator
(1) The creator shall be named the
creator in the registration of the
industrial design unless the
creator indicates in a special
written declaration signed by the
creator and addressed to the
Registrar that the creator does
not wish to be named.
(2) A promise or an undertaking by
the creator made to any person to
the effect that the creator will
make a declaration referred to in
subsection (1) is void.
Section 5—Application
(1) A person may apply to the
Registrar for the registration of
an industrial design.
(2) The application is subject to
the payment of the prescribed fees
and it shall contain
(a) a request, drawings,
photographs or other adequate
graphic representations of the
industrial design; and
(b) an indication of the article
which constitutes the industrial
design or in relation to which the
industrial design is to be used.
(3) Where the applicant is not the
creator, the application shall
contain a statement justifying the
applicant's right to the
registration of the industrial
design.
(4) The application may contain
(a) a specimen of the articles
embodying the industrial design,
where the industrial design is
two-dimensional; and
(b) a declaration claiming
priority, as provided for in the
Schedule, of one or more earlier
national or regional applications
or international deposits filed by
the applicant or applicant's
predecessor-in-title in or for any
state party to that Convention or
member of the World Trade
Organisation.
(5) Where an application contains
a declaration referred to in
subsection (4)(b), the Registrar
may require the applicant to
furnish, within the prescribed
time limit, a copy of the earlier
application or international
deposit, certified as correct by
the office with which it was
filed, and the effect of that
declaration shall be as provided
for in the Schedule.
(6) Where the Registrar finds that
the requirements under this
section and the Regulations
pertaining to a declaration are
not fulfilled, the declaration
shall be considered not to have
been made.
(7) Two or more industrial designs
may be the subject of the same
application if they relate to the
same class of the International
Classification or to the same set
or composition of articles.
(8) The applicant may withdraw the
application during its pendency.
Section 6—Examination
(1) The Registrar shall record as
the filing date, the date of
receipt of the application, where,
at the time of receipt, the
application contains indications
allowing the identity of the
applicant to be established and
the required graphic
representations of the industrial
design.
(2) Where the application did not
at the time of receipt, fulfill
the requirements referred to in
subsection (1), the Registrar
shall invite the applicant to file
the required correction and shall
record 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 recording the filing
date, the Registrar shall
ascertain whether
(a) the application complies with
the requirements of section 5;
(b) the prescribed application fee
has been paid; and
(c) the industrial design complies
with sections 1 and 2(4).
Section 7—Opposition to
Registration
(1) Any interested person may
within the prescribed period and
in the prescribed manner give
notice to the Registrar of any
opposition to the registration of
an industrial design on the ground
that one or more requirements of
sections 1 and 2 have not been
fulfilled or that the applicant
does not have a right to the
registration of the industrial
design.
(2) The Registrar shall send a
copy of the notice to the
applicant within the prescribed
period.
(3) The applicant shall within the
prescribed period and in the
prescribed manner, send to the
Registrar a counter-statement of
the grounds on which the applicant
relies for the application.
(5) If the applicant sends a
counter-statement, the Registrar
shall on receipt of the
counter-statement send a copy of
the counter-statement to the
person giving the notice of
opposition.
(6) The Registrar shall hear the
parties if either or both wish to
be heard and after considering the
merits of the case, decide whether
the industrial design is
registrable.
Section 8—Registration and
Publication
Where the Registrar finds that the
conditions referred to in sections
1 and 2(4) are fulfilled and the
registration of the industrial
design
(a) has not been opposed within
the prescribed time limit; or
(b) has been opposed and the
opposition has been decided in the
applicant's favour,
the Registrar shall register the
industrial design, publish a
reference to the registration and
issue to the applicant a
certificate of registration of the
industrial design.
(2) Where the Registrar is
satisfied that the industrial
design is not registrable the
Registrar shall refuse the
application.
Section 9—Rights Conferred by
Registration.
(1) The exploitation of a
registered industrial design by
persons other than the registered
owner shall require the consent of
the owner.
(2) For the purposes of subsection
(1), "exploitation" of a
registered industrial design means
the making, selling, importing or
otherwise distributing for
commercial purposes, articles
bearing or embodying a design
which is a copy or substantially a
copy of the industrial design.
(3) The rights conferred by
registration are not applicable to
acts in respect of articles which
have been put on the market in any
country by the registered owner or
with the registered owner's
consent.
(4) The registered owner may, in
addition to any other rights,
remedies or actions available
under any enactment, institute
court proceedings against any
person who infringes the
industrial design or who perform's
an act which makes it likely that
infringement will occur.
Section 10—Duration and Renewal of
Registration
(1) The registration of an
industrial design shall be for a
period of five years from the
filing date of the application for
registration.
(2) The registration may be
renewed for two further
consecutive periods of five years
upon the payment of the prescribed
fee.
(3) A grace period of six months
shall be allowed for the late
payment of the renewal fee on
payment of the prescribed
surcharge.
Section 11—Surrender of
Registration
(1) A registered owner may
surrender the industrial design by
written declaration to the
Registrar who shall record the
surrender in the register and
publish it in the prescribed
manner.
(2) The surrender is effective
from the date on which it is
recorded.
Section 12—Cancellation of
Registration
(1) Any interested person may
apply to the Court to cancel the
registration of an industrial
design.
(2) The Court shall cancel the
registration of an industrial
design if the person requesting
the cancellation proves that a
requirement of sections 1 and 2
has not been fulfilled or if the
registered owner is not the
creator or successor in title.
(3) A cancelled registration of an
industrial design or part of it is
void from the date of the
registration.
(4) The Registrar of the Court
shall notify the Registrar of the
decision of the Court and the
Registrar shall record it and
publish a reference to it.
Section 13—Changes in Ownership
(1) A change in the ownership of
the registration of an industrial
design or in the ownership of an
application for an industrial
design, shall be in writing and
shall, upon the request of an
interested party made to the
Registrar, be recorded and, except
in the case of an application, be
published by the Registrar.
(2) A change under subsection (1)
is of no effect against third
parties until it has been recorded
and published.
Section 14—Licence Contracts
(1) A copy of each licence
contract concerning
(a) a registered industrial
design,
(b) an application for the
registration of an industrial
design
shall be submitted to the
Registrar who shall keep its
contents confidential but shall
record it and publish a reference
of the licence contract.
(2) A licence contract is of no
legal effect against third parties
until it has been recorded in
accordance with this section.
Section 15—Registrar
The Registrar shall be responsible
for all the functions relating to
the procedure for the registration
of industrial designs and for the
administration of registered
industrial designs as specified in
this Act.
Section 16—Register
(1) The Registrar shall maintain a
Register in which shall be
recorded all matters required by
this Act to be recorded.
(2) The Register may be consulted
by any person and extracts from
the Register may be obtained
subject to the prescribed
conditions.
(3) The Registrar shall publish in
the prescribed manner all the
publications provided for under
this Act.
Section 17—Correction of Errors
The Registrar may correct any
error or translation or
transcription, clerical error or
mistake in any application or
document filed with the Registrar
or in any matter recorded pursuant
to this Act.
Section 18—Extension of Time
(1) The Registrar on being
satisfied that the circumstances
justify it, may, upon receiving a
written request, extend the time
for doing any act or taking any
proceeding under this Act, upon
notice to the parties concerned
and upon the terms as the
Registrar may direct.
(2) The extension may be granted
though the time for doing the act
or taking the proceedings has
expired.
Section 19—Exercise of
Discretionary Powers
The Registrar shall, in exercising
a discretionary power conferred by
this Act, comply with article 296
of the Constitution.
Section 20—Representation
If the ordinary residence or
principal place of business of an
applicant under this Act is
outside the country, the applicant
shall be represented by a legal
practitioner resident and
practising in the country.
Section 21—Appeals
Any decision taken by the
Registrar in the performance of
the functions under this Act, is
subject to appeal as of right by
any interested party to the Court.
Section 22—Infringement and
Offences
(1) Subject to section 9(3) any
act specified in section 9(2)
performed by a person other than
the registered owner and without
the consent of the owner
constitutes an infringement of the
Industrial design.
(2) On the application by
(a) the registered owner; or
(b) a licensee who has requested
the registered owner to institute
court proceedings for a specific
relief and the registered owner
has refused or failed to do so,
the Court may grant an injunction
to prevent any infringement or an
imminent infringement, award
damages and grant any other remedy
as the Court considers appropriate
in the circumstances.
(3) Any person who knowingly
performs an act which constitutes
an infringement as defined in
subsection (1) commits an offence
and is liable on summary
conviction to a fine not exceeding
two thousand penalty units or to a
term of imprisonment not exceeding
two years or to both.
Section 23—Application of
International Treaties
Any international treaty in
respect of industrial property to
which the country is a party is
applicable to matters dealt with
by this Act and in the case of a
conflict with a provision of this
Act, the provisions of the
international treaty shall
prevail.
Section 24—Harare Protocol
An international application may
designate Ghana for an industrial
design under the Protocol.
Section 25—Regulations
The Minister may by legislative
instrument make Regulations for
the effective implementation of
this Act, and in particular,
prescribing
(a) the fees payable in respect of
applications and other matters;
(b) the details of the
requirements and procedures on the
filing and examination of
applications;
(c) the details in relation to the
consultation of the Register;
(d) the procedure for extracting
copies from the Register; and
(e) other particulars required to
be prescribed under this Act.
Section 26—Interpretation
In this Act unless the context
otherwise requires
"Court" means the High Court;
"Creator" means the person who
creates the industrial design;
"Harare Protocol" means the
Protocol on Patents and Industrial
Designs adopted in 1982 in Harare,
Zimbabwe and ratified by the
Government of Ghana on 20th
September, 1983;
"International Classification"
means the classification according
to the Locarno Agreement of
October 8, 1968 establishing an
International Classification for
Industrial Designs;
"Minister" means the Minister
responsible for Justice;
"Paris Convention" means the Paris
Convention for the Protection of
Industrial Property of March 20,
1883, as revised,
"priority date" means the date of
the earlier application that
serves as the basis for the right
of priority provided for in the
Paris Convention;
"Register" means the Register of
Industrial Designs;
"Registered owner" means the
registered owner of an industrial
design; and
"Registrar" means the
Registrar-General.
Section 27—Repeal and saving
(1) The United Kingdom Designs
(Protection) Ordinance (Cap 182)
and the Textile Designs
(Registration) Decree, 1973 (N.R.C.D.
213) are repealed.
(2) Subsidiary legislation made
under the repealed laws shall
remain in force until revoked.
(3) Notwithstanding the repeal of
the Textile Designs (Registration)
Decree, 1973 (N.R.C.D. 213), a
textile design registered under it
and in force immediately before
the coming into force of this Act,
shall remain in force for the
unexpired portion of the period of
protection provided under this Act
subject to the payment of the
renewal fees provided for under
this Act.
(4) A person who on the coming
into force of this Act is the
proprietor of an industrial design
which has been registered in the
United Kingdom or has filed an
application for the registration
of an industrial design in the
United Kingdom, may, within twelve
months from the date of the coming
into force of this Act, file an
application for the registration
of the same industrial design
under this Act and the application
shall be accorded the filing date
or priority date accorded to the
application or registration in the
United Kingdom.
(5) An industrial design
registered under subsection 3
shall, subject to section 10(2),
enjoy a term of protection not
exceeding five years from the
filing date.
SCHEDULE
Article 4
(Section 5 (4) (b) and (5))
[A to 1. Patents, Utility Models,
Industrial Designs, Marks,
Inventors' Certificates: Right of
Priority, - G. Patents: Division
of the Application]
A.—(1) Any person who has duly
filed an application for a patent,
or for the registration of a
utility model, or of an industrial
design, or of a trademark, in one
of the countries of the Union, or
his successor in title, shall
enjoy, for the purpose of filing
in the other countries, a right of
priority during the periods
hereinafter fixed.
(2) Any filing that is equivalent
to a regular national filing under
the domestic legislation of any
country of the Union or under
bilateral or multilateral treaties
concluded between countries of the
Union shall be recognised as
giving rise to the right of
priority.
(3) By a regular national filing
is meant any filing that is
adequate to establish the date on
which the application was filed in
the country concerned, whatever
may be the subsequent fate of the
application.
B.—Consequently, any subsequent
filing in any of the other
countries of the Union before the
expiration of the periods referred
to above shall not be invalidated
by reason of any acts accomplished
in the interval, in particular,
another filing, the publication or
exploitation of the invention, the
putting on sale of copies of the
design, or the use of the mark,
and such acts cannot give rise to
any third-party right or any right
of personal possession. Rights
acquired by third parties before
the date of the first application
that serves as the basis for the
right of priority are reserved in
accordance with the domestic
legislation of each country of the
Union.
C.—(1) The periods of priority
referred to above shall be twelve
months for patents and utility
models, and six months for
industrial designs and trademarks.
(2) These periods shall start from
the date of filing of the first
application; the day of filing
shall not be included in the
period.
(3) If the last day of the period
is an official holiday, or a day
when the office is not open for
the filing of applications in the
country where protection is
claimed, the period shall be
extended until the first following
working day.
(4) A subsequent application
concerning the same subject as a
previous first application within
the meaning of paragraph (2),
above, filed in the same country
of the Union, shall be considered
as the first application, of which
the filing date shall be the
starting point of the period of
priority, if, at the time of
filing the subsequent application,
the said previous application has
been withdrawn, abandoned, or
refused, without having been laid
open to public inspection and
without leaving any rights
outstanding, and if it has not yet
served as a basis for claiming a
right of priority. The previous
application may not thereafter
serve as a basis for claiming a
right of priority.
D.—(1) Any person desiring to take
advantage of the priority of a
previous filing shall be required
to make a declaration indicating
the date of such filing and the
country in which it was made. Each
country shall determine the latest
on which such declaration must be
made.
(2) These particulars shall be
mentioned in the publications
issued by the competent authority,
and in particular in the patents
and the specifications relating
thereto.
(3) The countries of the Union may
require any person making a
declaration of priority to produce
a copy of the application
(description, drawings, etc.)
previously filed. The copy,
certified as correct by the
authority which received such
application, shall not require any
authentication, and may in any
case be filed, without fee, at any
time within three months of the
filing of the subsequent
application. They may require it
to be accompanied by a certificate
from the same authority showing
the date of filing, and by a
translation.
(4) No other formalities may be
required for the declaration of
priority at the time of filing the
application. Each country of the
Union shall determine the
consequences of failure to comply
with the formalities prescribed by
this Article, but such
consequences shall in no case go
beyond the loss of the right of
priority.
(5) Subsequently, further proof
may be required.
Any person who avails himself of
the priority of a previous
application shall be required to
specify the number of that
application; this number shall be
published as provided for by
paragraph (2), above.
E.—(1) Were an industrial design
is filed in a country by virtue of
a right of priority based on the
filing of a utility model, the
period of priority shall be the
same as that fixed for industrial
designs.
(2) Furthermore, it is permissible
to file a utility model in a
country by virtue of a right of
priority based on the filing of a
patent application, and vice
versa.
F.—No country of the Union may
refuse a priority or a patent
application on the ground that the
applicant claims multiple
priorities, even if they originate
in different countries, or on the
ground that an application
claiming one or more priorities
contains one or more elements that
were not included in the
application or applications whose
priority is claimed, provided
that, in both cases, there is
unity of invention within the
meaning of the law of the country.
With respect to the elements not
included in the application or
application whose priority is
claimed, the filing of the
subsequent application shall give
rise to a right of priority under
ordinary conditions.
G.—(1) If the examination reveals
that an application for a patent
contains more than one invention,
the applicant may divide the
application into a certain number
of divisional applications and
preserve as the date of each of
the initial application and the
benefit of the right of priority,
if any.
(2) The applicant may also, on his
own initiative, divide a patent
application and preserve as the
date of each divisional
application the date of the
initial application and the
benefit of the right of priority,
if any. Each country of the Union
shall have the right to determine
the conditions under which such
division shall be authorized.
H.—Priority may not be refused on
the ground that certain elements
of the invention for which
priority is claimed do not appear
among the claims formulated in the
application in the country of
origin, provided that the
application documents as a whole
specifically disclose such
elements.
I.—(1) Applications for investors'
certificates filed in a country in
which applicants have the right to
apply at their own option either
for a patent or for an inventors'
certificate shall give rise to the
right of priority provided for by
this Article, under the same
conditions and with the same
effects as applications for
patents.
(2) In a country in which
applicants have the right to apply
at their own option either for a
patent or for an inventor's
certificate, an applicant for an
inventor's certificate shall, in
accordance with the provisions of
this Article relating to patent
applications, enjoy a right of
priority based on an application
for a patent, a utility model, or
an inventor's certificate.
Article 4bis
[Patents: Independence of Patents
Obtained for the Same Invention in
Different Countries]
(1) Patents applied for in the
various countries of the Union by
nationals of countries of the
Union shall be independent of
patents obtained for the same
invention in other countries,
whether members of the Union or
not.
(2) The foregoing provision is to
be understood in an unrestricted
sense, in particular, in the sense
that patents applied for during
the period of priority are
independent, both as regards the
grounds for nullity and
forfeiture, and as regards their
normal duration.
(3) The provision shall apply to
all patents existing at the time
when it comes into effect.
(4) Similarly, it shall apply, in
the case of the accession of new
countries, to patents in existence
on either side at the time of
accession.
(5) Patents obtained with the
benefit of priority shall, in the
various countries of the Union,
have a duration equal to that
which they would have, had they
been applied for or granted
without the benefit of priority.
Article 4ter
[Patents: Mention of the Inventor
in the Patent]
The inventor shall have the right
to be mentioned as such in the
patent.
Article 4quater
[Patents: Patentability in Case of
Restrictions of Sale by Law]
The grant of a patent shall not be
refused and a patent shall not be
invalidated on the ground that the
sale of the patented product or of
a product obtained by means of a
patented process is subject to
restrictions or limitations
resulting from the domestic law.
Date of Gazette Notification: 31st
December, 2003.
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