Selling Your Registered Design
Written by Jane Coyle on 05 September 2008« Return to Reading Room
The owner of a registered design may assign it by a written assignment which must be signed by, or on behalf of, the assignor. The assignee must register the assignment at the Designs Registry and applications for registration are made on Designs Form DF12A. The owner of a registered design may assign the registration in respect of part only of his exclusive rights, or assign future registered designs, although, in contrast to copyright and design right, there is no statutory provision dealing with these issues. Where a registered design and the design right coexist and are owned by the same person, an assignment of the design right will be taken also to be an assignment of the registered design, unless there is a contrary intention. As in the case of an assignment of copyright, consideration should be given to the inclusion of appropriate warranties and a further assurance clause when dealing with an assignment of registered designs. Stamp duty is no longer payable on assignments of registered designs executed on or after 28 March 2000. Unlike copyright, moral rights are not relevant to registered designs.
In respect of licenses statute dictates that whenever any person becomes entitled to an interest in a registered design they shall apply for registration of that interest (section 19(1), RDA). While the licence will not be invalid due to a lack of registration, any assignee of the owner's rights in the design may not be bound by the licencee's rights. Another consequence of failure to register an interest in a design is that unless the court directs otherwise, the document relating to that interest cannot be admitted in court as evidence of title (section 19(5) RDA). The only exception to this rule relates to applications to rectify the register under section 20 of the RDA. As such it is strongly advisable that licences of registered designs are registered.
Given that the Designs Registry may require written proof of the licence, a written licence is recommended. Currently statute only requires that exclusive licences are recorded in writing. However, as in any commercial arrangement, it will be advisable for any licence to be in writing in order to provide an accurate record of the terms. To register an interest in a design, the licensee must complete Form DF12A.Until 29 April 2006, when the Enforcement Regulations came into force, the registered proprietor was the only person authorised to commence proceedings in respect of the infringement of his design (section 7, RDA). However, a new section (section 24F) was inserted in the RDA by the Enforcement Regulations which provides that an exclusive licensee and a registered proprietor have concurrent rights and remedies. As in the case of copyright, stamp duty is no longer payable on licences of registered designs executed on or after 28 March 2000.
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