24.3. Assignments and other interests: Possible complications

Assignment by a co-owner

A co-owner of a registered design can only assign their share to someone else if all the other co-owners agree (s 14(2)).

If a co-owner submits a request to record an assignment and does not provide evidence that the other co-owners endorse it, it is an invalid request. In such cases we write to the requester asking for evidence/signatures showing the other owners’ consent.

Before recording any assignment of a co-owned design right, we notify all the other co-owners of the request. They then have 1 month to object before we amend the Register (s 114(3), reg 9.03).

Assignment by a minor

People under the age of 18 can own intellectual property and assign it. Therefore, the process for dealing with requests to record an assignment of ownership from a minor to someone else is the same as for any other request to record a change of ownership.

Ceased designs

We do not record a change of ownership of a ceased design (i.e. when the design right has expired). The exception is where the change happened before the design ceased.

If a registration ceases and is then restored, we can record a change of owner once the design is restored.

Doubts about original ownership

As part of the formalities assessment of design applications, we check the applicant’s entitlement to own the design before granting the registration. If they later assign the design to someone else, we accept their right to do so at face value (see George Stack v State of Queensland [1996] 739 FCA 1).

Sometimes the ownership of a design changes between the application date and the registration date. In these cases the registration is valid even though it is registered to the wrong person. What matters is that the registered owner was fully entitled to own the design on the date when they assigned it to someone else. If so, we can record the assignment on the Register.

Errors in the assignment document

If there is a mistake in the document provided as proof of a transfer of ownership, we can accept a declaration under the Designs Act or a statutory declaration correcting the error. Both parties must sign the declaration.

Alternatively there is precedent (Westpac Banking Corp v Dawson (1990) 8 ACLC 681) for the Registrar to accept other information about what the document should have said.

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Mergers

When the ownership of a design changes as a result of 2 companies merging, it is not always clear whether the change is just a name change or whether it is an assignment.

For Australian companies, the deciding factor is whether the ACN/ABN number has changed. If it has, the change is an assignment.

For overseas companies, we will make the change under the provision specified by the requester.

The relevant provisions are:

• for design applications: s 28 or s 30​​​​​​​
• for existing registered designs: s 114(3), reg 9.03 and reg 9.05​​​​​​​(2)(b).
  
  

Whether it is a name change or an assignment makes a difference because:

• if it is an assignment, we must notify any registered co-owners and give them 1 month to object
• if it is a name change, we are not required to notify the co-owners. We can however do so under 9.05(3).

Mortgages and licences

Sometimes there is a registered interest in a design other than that of the owner. Typically, this interest is a mortgage or a licence to use the design. In these cases the registered owner can still assign the design to someone else.

In this situation, when we get a request to record an assignment of ownership we go through the normal process of checking the evidence and recording the change. We then send the mortgagee (e.g. the bank) or the licensee a letter notifying them of the assignment.

Retrospective assignments

We do not record retrospective assignments. Therefore if the assignment agreement states that the change of ownership happened at an earlier date, we take the date of the agreement as the date of the assignment.

Time-limited or partial assignments

Sometimes a design is assigned for a fixed period of time or for only part of Australia (s 11(3)). In these cases we record the end date or the relevant region on the Register.

Sometimes an ‘assignment’ only relates to part of the exclusive rights to a design. This is really a licensing arrangement rather than an assignment. In these cases we record the change as ‘assignment/licence’.