Registered Designs Act

This Act may be cited as the Registered Designs Act.

This section defines key terms used in the Act and gives the Registrar power to decide whether a number of articles is a set of articles.

A Designs Office must be established under the Minister’s direction.

The provision requires appointment of a Registrar of Designs, one or more Deputy Registrars of Designs, and any examiners or other officers the Minister considers necessary.

The seal kept for the Patent Office is also the seal of the Designs Office, and impressions made under this Act must be accepted by a court as judicially noticed.

The Designs Office must keep a register of designs, record specified design details, allow public inspection at convenient times, and provide certified copies on payment of the prescribed fee.

A design can be registered only if it is new or original, and the Minister may make regulations excluding certain designs from registration.

A design registered under the Protocol has effect in Malawi as if it were registered under this Act.

This section says who is treated as the proprietor of a design.

Design registration applications must be made in the prescribed form and lodged at the Designs Office; the Registrar may search, refuse, register with modifications, and appeals lie from decisions under subsection (3).

A registered proprietor may apply to register the same design for other articles, or a modified version, and that application cannot be refused or invalidated only because the design was already registered or published.

The Registrar and Minister can restrict disclosure of certain design applications for defence reasons, and residents in Malawi generally cannot file the same design abroad first without permission and prior local filing.

A design application cannot be refused, and a design registration cannot be invalidated, just because of certain confidential or good-faith-related disclosures or related communications.

Certain qualified applicants may file a design registration application with priority, if they meet the convention-country application and six-month timing conditions.

Registering a design gives the registered proprietor exclusive rights in Malawi to deal with the protected article and to make things needed to produce it.

Copyright in a registered design lasts 5 years from registration, and the Registrar can extend it for further 5-year periods if the application and fee requirements are met.

A defendant in a registered-design copyright case is exempt from damages if they prove they did not know, and had no reason to think, the design was registered at the time of infringement.

A person interested may apply to the Registrar for a compulsory licence for a registered design, and the Registrar may decide the application.

Government departments, and people the Minister authorizes in writing, may use registered designs for Government services under this section.

This section limits private licence or agreement terms when a design is used for Government services, and gives certain exclusive licensees a right to recover part of Government-related payments.

During a period of emergency, certain government actors may use a design for purposes the Minister considers necessary or expedient.

Disputes about Government use of a design may be referred to the Tribunal, and the Tribunal must consider any benefit or compensation tied to the design.

People entitled to a registered design interest may apply to register title or notice of interest; the Registrar must register it if satisfied by proof of title; registered proprietors can deal with the design; unregistered documents are generally not admissible as evidence of title.

The Registrar may authorize or make corrections to certain clerical, omission, translation, or register errors.

The Tribunal may order the register rectified on application by an aggrieved person, and the Registrar must update the register after receiving notice of the order.

The Registrar may cancel a design registration on a prescribed request from the registered proprietor, and any interested person may apply for cancellation after registration.

The Registrar’s certified certificates, copies, and extracts can be used as evidence, and certain certified copies do not need the original to be produced.

This section sets who may inspect registered design records at the Designs Office, when inspection is restricted, and when copies may not be taken.

On request and payment of the prescribed fee, the Registrar must tell the requester whether a design is registered and give related registration details.

The Registrar must give a certificate of registration in the prescribed form to the registered proprietor when a design is registered.

The Registrar may give one or more copies of a certificate of registration if the original has been lost or destroyed, or if the Registrar thinks it is expedient.

Before the Registrar uses a discretionary power against a design-registration applicant, the applicant must be given a chance to be heard.

Evidence before the Registrar is generally by affidavit, but the Registrar may permit oral evidence on oath and cross-examination in a suitable case.

The Registrar may award reasonable costs to a party in proceedings under this Act and decide how the costs are to be paid.

The Registrar may set the hours, times, and places of sitting in proceedings before him, and may adjourn proceedings as he thinks fit.

The Tribunal hears certain appeals from the Registrar and can make procedural and case-management orders.

In Tribunal proceedings under this Act, parties may appear in person or through a legal practitioner. If the Tribunal thinks fit, it may let the Registrar intervene, and the Registrar may then appear or be represented.

The Tribunal may appoint a person with special expert knowledge to serve as an assessor in an advisory role when that knowledge is needed to decide a case properly.

The Minister may make rules for the Tribunal’s practice and procedure, including appeals, timing, costs, fees, assessor payments, and summary dismissal of certain appeals.

Appeals under this Part must be brought within three months after the decision or order, unless the Tribunal or Court allows more time on application.

The Registrar may refer a matter to the Tribunal if it raises a point of law or is unusually important or complex, after notice to the parties, and must then follow the Tribunal’s decision.

A Tribunal or Court may certify that a contested design registration is valid if the case is decided for the registered proprietor; if that happens, the proprietor can get full solicitor-and-client costs in a later case about validity, unless the Tribunal or Court orders otherwise.

Any infringement action or legal proceeding about copyright in a registered design in Malawi must be brought in the High Court.

A person who is wrongly threatened with infringement proceedings about a registered design may sue in the High Court and seek a declaration, an injunction, and damages.

The Registrar or Tribunal may require a party or appellant outside Malawi to provide security for costs, and may treat the case as abandoned if they do not comply in time.

In proceedings before the Tribunal under this Act, the Tribunal decides the Registrar’s costs, and the Registrar cannot be ordered to pay other parties’ costs.

A party to Tribunal proceedings may appeal Tribunal orders or decisions to the High Court under the applicable rules. The High Court can then confirm, set aside, vary, send the case back, use Tribunal-like powers, and decide costs.

Any person must not make or use false entries or false copies in the register, or present them in evidence, knowing they are false.

A person must not falsely say a design is registered or mark an article with “registered” (or similar wording) after the design copyright has expired.

A person commits an offence if they knowingly make or submit a false statement or representation to deceive or influence the Registrar or another Designs Office officer.

A person who has been sworn (or affirmed/declarared instead) must not wilfully give false evidence before the Registrar or Tribunal about the matter in issue.

A person guilty of an offence under the Act is liable to a £500 fine and three years’ imprisonment, unless the Act provides otherwise.

An act that must be done by or to a person under this Act may, with the regulations or special leave of the Registrar, be done by or to that person’s duly authorized agent.

Documents that must or may be lodged, made, or given under this Act can be delivered by hand or sent by registered post, and documents lodged in the Designs Office or used before the Tribunal do not need authentication.

Fees must be paid before the Registrar acts, before another person’s act is treated as done, or before a document is treated as lodged.

A person required by this Act to take an oath or swear to an affidavit’s truth may instead make an affirmation or declaration.

The Minister may direct the Registrar to publish reports of cases on designs and other relevant matters in the Patent Journal.

This section says the Act does not authorize or require the Registrar to register designs whose use would be contrary to law or morality, and it preserves the Government’s right to sell or use forfeited articles.

The Minister may make regulations under the Act, including rules about procedures, notices, the Designs Office, and fees.

This section treats certain older registered designs as registered under the Act and lets the Registrar register some designs on application made by the former proprietor before 31 December 1964.