D12.2 Registering Assignments

Date Published

The Designs Act 2003 (Cth) provides an express mechanism to record assignments – s 114 and reg 9.03. A request to record an assignment must be in the approved form, and must be accompanied by satisfactory evidence.

D12.2.1 Evidence of the Assignment or devolution

For the assignment to be registered, the request must be accompanied by ‘satisfactory evidence’ of the assignment or interest by devolution (reg 9.03(2)(b)). That is, evidence whereby the Registrar can be reasonably satisfied of the existence of the assignment or devolution.

An assignment must be in writing, signed by, or on behalf of the assignor and assignee (sec 14(1), (2)). There is no basis to waive this requirement merely because it is not a requirement in the country in which the assignment was executed. It must be in writing; a purported oral assignment is not effective.

Desirably, both signatures are on the same assignment document. However identical copies of the assignment document, each respectively signed by one party only, is acceptable – providing both copies (and hence both signatures) are provided in evidence. There is no requirement that the documents bear the same date, although a large difference in dates may raise questions about whether the earlier signaturee has withdrawn their agreement in the interim.

No particular form of words is required to effect an assignment, so long as the words used show a clear intention that the assignee is to have the benefit of the chose in action.

Illustrative of material that may provide evidence of the existence of the assignment or devolution are:

  • a deed of assignment signed by both the assignee and assignor (whether or not ‘commercial’ details are included in the deed)
  • deed of sale
  • letter from the Registrar of a Court, or order of a Court dealing with appointment of receiver, and various supporting evidence in bankruptcy and liquidation actions.)
  • court order providing authority for transfer of title
  • authenticated copy of the grant of Probate, or Letters of Administration (note that the transfer cannot be to 'the estate of X', and cannot be to the beneficiary of a will before probate has been granted.)

The assignment or devolution must clearly relate to the particular design. Usually this would be by way of an application or registration number, but it can be by other means – providing the assignment unambiguously relates to the design in question. Where the reference is to a design which had not been applied for at the date of the assignment, the Registrar will need to be satisfied that the design in question fell within the ambit of the assignment.

Where the assignee has changed their name between the date of assignment and registration, the Registrar will require appropriate evidence of the name change sufficient to establish that the assignment is being recorded to the correct person.

Frequently an assignment will occur as part of a larger commercial dealing between the parties. The Registrar does not require a copy of an assignment that includes other commercial dealings between the parties; all that is required is a document signed by the assignee and assignor that makes clear that the specified design has been assigned (although the assignee can file a copy of a ‘commercial’ deed of assignment as proof if they want to). Because documents filed pursuant to s 114 are available for inspection under s 111(3), the assignee may opt to file a redacted copy of the assignment document – that is, the document with the confidential portions blanked out and a statement that the document is a true copy of the original and that the blanked out portions contain {financial data} only. However, portions relating to the assignment per se cannot be blanked out because the document would then be incomplete and misleading.

Documents supplied are retained by the Registrar. Where the requestor supplies an original of the document, the Registrar will make a copy of the document for retention (suitably annotated) and return the original. Where a copy of the document is supplied, there should be an accompanying statement that it is a copy of the original document. While the Registrar will usually accept such statements at face value, in appropriate circumstances this may be insufficient – in which case the Registrar may require a certified copy of, or the actual, deed of assignment.

D12.2.2 Particular issues with assignments or devolution

D12.2.2.1 Ceased Designs

The requirement to record particulars in the Register is limited to registered designs - that is, designs that have not ceased or expired. [s 111(2), s 48]. Thus generally the Register will not make any entries in the Register in respect of ceased designs.

However, if the title or interest in the design was created before the design ceased but the request to record the interest is not made until after the design ceases, the Registrar will nevertheless record that interest in the Register.

If a change in title or interest occurs after cessation but before restoration under s.117, the Registrar will not record any change until the Design is restored.

(Note the judgements in:

  • Re Usines de Melle's Patent (1954) 91 CLR 42
  • Re Sanofi's Petition for Extension of Term (1981) 51 AOJP 2142.)

D12.2.2.2 Errors in the assignment document

If the deed is defective, it is possible to file a statutory declaration by all the parties to the assignment as to what they had intended by the deed. It may be possible to obtain information about what the deed should have said (ie. what the intention of the parties was) from other sources, but it must be sufficient to achieve a reasonable satisfaction of the entitlement of the person. In the case Westpac Banking Corp v Dawson (1990) 8 ACLC 681 it was held that an accidental mistake in the name of a party to a contract does not invalidate the contract.

D12.2.2.3 Assignee must be a Person

Only a person may be registered as the owner of a design (s 13). Where a person is not a natural person, there should be some indication that the body is incorporated (since the Register affords prima facie evidence of the existence of a corporation: Purex Corporation Ltd v Vanguard Trading Co [1965] 112 CLR 532 at 534).

A company which has been deregistered is not a person. Consequently an assignment to such a company cannot be registered. However an assignment to a company in receivership or liquidation can be recorded, as such companies continue to exist unless or until they are deregistered.

Where a document is executed for a company, it needs to be apparent that the person signing has appropriate authority.

D12.2.2.4 Mergers vis à vis Assignments

When a party requests a change of ownership it may not be readily apparent from the request whether the change is a mere change of name, or an assignment, and consequently which of s 28 or s 30 (for applicants), or reg 9.05(2)(b) or s 114(3) (for registered designs), apply. For Australian corporations, the presence or absence of a change in the ACN/ABN number will usually be determinative [if the ACN number changes, the company has changed – so the transaction must be an assignment]. However the situation for foreign corporations will generally be incapable of easy determination.

For applications, it is not necessary to determine which of s 28 or s 30 apply. As long as the change of ownership is clearly established and capable of being effected by the provision used by the requestor, the change will be given effect under that provision.

For registered designs, there is a procedural difference between s 114(3) and reg 9.05(2)(b). For assignments, the Registrar is required to notify any other registered owner (that is, a co-owner not party to the request) and allow them 1 month [reg 9.03(1)] to indicate a lack of consent to the assignment. This notification is not required for a name change under Reg 9.05 – although it is permitted under 9.05(3). Accordingly as long as the change is clearly justified and capable of being effected by the provision used by the requestor, the change will be given effect under that provision – except that:

  • if reg 9.05 is used, the Registrar will notify any co-owners under reg 9.05(3) and allow them 1 month to indicate any lack of consent; and
  • the change in entitlement is simply recorded as a 'change of name/assignmen'.

D12.2.2.5 Time-limited assignments, partial assignments

A design may be assigned for a limited period of time, or for only part of Australia (s 11(3)).

If the assignment is for a period of time with a specified date for its conclusion, the Register will record that period. If there is no specified date for the end of the period, the Register will not record the conclusion of the assignment unless the relevant parties makes a request to so record.

If the assignment is only for part of Australia, the Register will record that region.

If a purported assignment is for only part of the Exclusive rights under s 10, the effect is to create a license. In such cases the Register will record the relevant details as an ‘assignment/license’.

D12.2.2.6 Entitlement of Later Registered Owner

The entitlement of an assignee is determined by reference to the entitlement of the original registered owner under s 13. [See s 93(3)(b) and (c)]. Consequently where at the time of filing the applicant did not have full entitlement to the design, this must be rectified before registration.

Any request to record an assignment must be treated at face value. Reconsideration of the entitlement of the owner of record is not appropriate when deciding whether to register a transfer (see George Stack v State of Queensland [1996] 739 FCA 1).

If a design application is assigned shortly before registration - such that there has been no time to request a recording of the assignment before grant (which is an inevitable situation) - the design registration is not invalid for being registered to the wrong person. In such situations the question to be asked is whether the registered owner at the date of registration was fully entitled to the design at the date the assignment was executed. If so, the recording of an assignment after the design has been registered is no more than a conversion of the equitable interest established by the assignment to a legal interest.

D12.2.2.7 Assignment when there is a Registered Interest

It will sometimes happen that an owner will assign a design in respect of which there is a registered interest, such as a license or a mortgage.

Provided the evidence of the assignment is sufficient to satisfy the Registrar of the entitlement of the assignee, the assignment is to be recorded. Prior to recording an assignment, the Registrar is only required to notify the registered owners of the design [s 114(3)]. Upon registration, the Registrar will send the licensee or mortgagee a letter advising them of the assignment.

D12.2.2.8 Assignment by a Co-owner

A co-owner of a registered design cannot assign an interest in the design without the consent of the other co-owners (s 14(2)(c)). Before the Registrar will record an assignment from a co-owner, the other co-owners must be notified by the Registrar [s 114(3)], who then have one month to indicate a lack of consent. The co-owner will need to satisfy the Registrar that the correspondence has been forwarded to all other co-owners.

Where there are proceedings pending under s 51, the person making the s.51 application is not per se a co-owner. That is, no consent is required from a s 51 requestor. In this regard, it should be noted that a post-registration assignment is incapable of removing the ground of revocation of s 93(3)(b), or of defeating a claim under s 51.

D12.2.2.9 Assignment by a Minor/Infant

It appears to be accepted that an infant or minor (i.e., a person under the age of 18 years) can own intellectual property and assign it: see re D'Ambigou, Andrews v Andrews (1880) 15 Ch D 222 and Chaplin v Lesley Frewin (Publishers) Ltd (1966) Ch 71.

D12.2.2.10 Retrospective assignments, Constructive trusts

Assignments sometimes purport to operate retrospectively – for a variety of commercial or strategic reasons. This was discussed in Black & Decker v GMCA (No 2) [2008] FCA 504, where it was stated:

'it is not possible for {two entities} by internal arrangements to shift between themselves entitlements under the statute as against strangers. The … Deed does not operate retrospectively.'

That is, while two parties might come to an agreement that has retrospective effect between themselves, such an agreement cannot give rise to retrospectivity with respect to the rights or interests of third parties. Accordingly deeds of assignment that purport to operate retrospectively (include deeds of confirmation purporting to merely confirm what had been previously agreed between the parties) should not be recorded in so far as they assert an effect prior to the date of execution of the assignment in accordance with ss 11(1) and (2) of the Designs Act 2003 [that is, in writing, and signed by or on behalf of the various parties.]

If a person asserts the existence of a Constructive Trust, it may be noted that in The University of Sydney v ResMed Ltd (No 2) [2008] FCA 1969, Lindgren J observed:

'64. My present view is that there is no property in an application for a patent and so a constructive trust could not subsist over such an application…'

Prima facie this is of equal relevance an application for a design.