24.5. Assignments and other interests: Registering other interests

The Register records the name of the owner of a design as well as the names of other people, such as assignees, who have an interest in the design (reg 9.01(b)).

Before recording a name, the Registrar must be reasonably satisfied that the person has an interest in the design (s 131).

The Registrar does not have to record the nature of the interest. It just needs to clearly identify the interest (e.g. ‘licence agreement dated ...’) and the person who holds it.

The Register only records the name of the person. However, there should be more information in the supporting documentation – for example, an address – that identifies the person who holds the interest.

All people who are registered as having an interest must be notified when:

• a design has been examined and there is a ground for revocation that needs to be addressed (s 67(2))
• a registration is revoked or surrendered – to give each person with an interest an opportunity to be heard (reg 4.11).

Licences and mortgages

The types of interests that are usually recorded are licences and mortgages.

The owner of a design can license their design – that is, they can give others the right to use their design. An owner can:

• license their design to a number of people
• grant a sole license (which allows the owner to use the design)
• grant an exclusive license (where the owner cannot use the design).

The Register will only record that a licence exists (and any limitations of the licence, like term or region) – it does not need to state what type of licence exists.

A registered design may be included as part of a security interest. A mortgagee (e.g. a bank) may hold an interest in the design until the mortgage is repaid.

Rights of lien and other unregistrable interests

Some interests are not registrable – for example, a right of lien. A lien is the right to hold another person’s property as security for the performance of an obligation or the payment of a debt.

It may be difficult to decide whether something is an ‘interest in a design’ or notice of a trust. An interest in a design can be registered, but a notice of trust cannot.

A document which deals with the design and in doing so creates a trust can be distinguished from a document that simply declares the existence of a trust (e.g. a declaration of trust).

Any provisions in a deed of assignment setting out obligations between the trustee and the trust beneficiaries are not relevant and must not be recorded in the Register.

The Registrar is not obliged to consult or seek the approval of the trust beneficiaries if a trustee who is the registered owner of a design assigns or takes other actions with regard to the design rights.