D12.3 Registering other interests

Date Published

D12.3.1 General issues

Regulation 9.01(b) requires the Registrar to record ‘the name of each other person who has an interest in the Design’. That is, persons other than the owner (and hence any assignee).

The regulations do not set out the requirements for persons requesting the making of such entries. However given s 131 of the Designs Act 2003 (Cth) (see D12.1.3), it is clear that the Registrar should only make an entry on the basis of being reasonably satisfied of the existence of the relevant interest. Note also the requirement under s 67(2) (examination) and reg 4.11 (surrender) to notify all persons entered on the Register as having an interest in the Design. Consequently, section D12.2.1 (Evidence of the Assignment or devolution) applies equally to the registration of other interests.

In recording an interest pursuant to reg 9.01(b), the Registrar is merely required to record the name of the person that has that interest. Consequently the nature of the instrument need not be identified in detail. All that is required is a clear identification of the particular interest - e.g. 'license agreement dated ...', and of the person having that interest. Note that while the Register only records the name of the person, the supporting documentation would be expected to provide other information – such as an address – that identifies the person holding an interest in the design.]

Typical of interests that may be registered are licenses and mortgages. Purported interests that are not registrable include the right of lien provided by s 142.

D12.3.2 Licences

Broadly speaking, an owner can grant licenses to any number of people, grant a sole license (allowing the owner to ‘use’ the design), or an exclusive license (where the owner cannot ‘use’ the design. However the Designs Act 2003 does not distinguish between these types of licenses. Accordingly the Register will merely record the existence of a license (and any limitations such as term or region); it will not record the type of license.

D12.3.3 Registration of other Interests

There is no problem with registering legal mortgages, licenses and proprietorships, but some other ‘interests’ (such as equitable interests) present a problem. Are they 'an interest in a design', or notice of a trust? Note that a notice of Trust is ‘not receivable’ by the Registrar (see D12.6) and must not be registered.

The available case law can be summarized as follows:

Stewart v Casey 9 RPC 9

'you must draw a distinction between agreements and other things which do affect the proprietorship and simple notices of trust ... notice of trust is not to be put on, documents which affect the proprietorship, whether by creating trusts or otherwise, are not to be excluded' (at page 11)

'equitable assignments for a (design), or of a share in a (design), may be entered on the register' (at page 13)

'The rights of proprietorship are purely legal rights; but any other rights - any right that may appear on the register - must therefore be, if not a legal right to proprietorship, either a legal right of some lesser description or an equitable right, and, therefore, it seems to me to be plain that the legislature contemplated the prescription by the Rules of a power to enter on the register, rights which are not rights of proprietorship, including equitable rights.' (at page 16)

'it is impossible to say that the fact that this equitable assignment may create a trust prevents it from creating an interest within the meaning of the word used in the Rule or a right within the meaning of the 87th Section which would preclude its being put on the register.' (at page 16)

Haslett v Hutchinson 8 RPC 457

'unless the plaintiffs are in a position to obtain specific performance, they are not a shadow of interest, legal or equitable' (at page 466)

The distinction seems to be between a document which deals with the design, and in doing so creates a trust, and a document which simply declares the existence of a trust (eg. a declaration of trust). This seems to be the approach adopted in Kakkar v Szelke (1989) 15 FSR 225.