Assigning and licensing a design and the importance of registration?

This article will illustrate the issues that relate to the assignment and licence of a design, looking firstly, at the UK provisions and secondly at the EU provisions surrounding this area of law. A design owner may assign, mortgage, or licence a design (s.19 of the Registered Designs Act 1949 RDA). Having said that, it is important to illustrate the importance of registration.

The UK Design Registry deals with, inter alia, assignments and licensing: s.17(1)(b) RDA. Those who have an interest in a design are advised to register that design, as neglecting to do so means that a court will not allow such evidence of title to be admitted as evidence of title: “unless the court otherwise directs”: s.19(5) RDA.

A purchaser of a registered design will take subject to any interests that are registered. The effect of which gains importants in relation to unregistered interests, particularly the licence. Those who have a licence but have failed to register that interest, the said interest will not bind a successive purchaser, because the interest is not proprietary, the effect of registration transforms the licence interest from a non-proprietary, into one which is proprietary.

The EU position.

The Community Design Regulations (CDR) provides the mechanism by which one can assess which member states’ law applies in relation to the transfer of interests, it does not establish the rules which deal with the transfer. In sum, the national law in which the holder is domiciled applies. For registered designs the transfer must be registered.

From the point of view of a licence these can be granted for the whole, or part of the EU (s.19(4) of the RDA). Licences can be registered, certainly this is advisable if the transferring transaction is in respect to the UK as illustrated above.

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