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Licences and assignments

As with all intellectual property, registered designs can be licensed, and they can be assigned. As we have seen in the discussion about other IP licences, a licence is merely permission to do something. In the context of intellectual property, it is permission to do something which would be an infringement (but for the licence).

There are no formalities for a valid design licence. If the registered proprietor wishes the licence to be recorded in the Register of Designs, the application must be made within six months of the effective date of the licence.

An assignment, on the other hand, does have formalities. The transfer of ownership in a registered design, or an application for registration of a design must be in writing, otherwise it is not valid.

Read section 30 of the Designs Act.

But there is a catch. If you are not going to sell products according to that design, or license others to do so, someone could apply to Court for an order granting what is called a compulsory licence. For this, such an applicant must show that it wants to make or sell articles with the same design, and that the proprietor of the design has abused its position by not exploiting the design right, and has moreover refused to grant a licence.

Read section 21 of the Designs Act.