This article explains the importance and procedure behind the application for registration of ownership post mortgage or license; after execution of assignment agreement.
For a Design Application, an applicant is required to document any partial; or complete transfer in title of the design to the Design Office. If this transition is not documented with the Controller the Office; the Court may not acknowledge the same to be evidence of ownership to copyright at a subsequent stage. For this, an application for registration of ownership must mandatorily be documented; within 6 months from the date of the assignment agreement, mortgage, or license. This duration can be extended by a maximum of 6 months.
A design owner needs to document the license or any other interest of their design. This consensus between the concerning parties must be in writing and reduced to an instrument.
This period is calculated from the date on which the instrument is executed; or within an additional period not beyond 6 months in the total as the Controller allows.
The individual, who is authorized by such license; may apply in the required manner to the Controller to record their ownership; along with original or copies of the instrument, authorized by the Notary Public.
When a Design is mortgaged the authorized individual can employ the registered design as assurance for a loan.
The mortgagor has a legitimate right in the registered design until they compensate the loan.
This mortgagee or the mortgagor is required to register the mortgage with the Controller of Designs and the same is recorded in the register of designs.
A design owner has the right to give another individual the authority to utilize their registered design by approving a license with such a right.
The conditions of any license are exclusively governed by the licensor and determined between them and the licensee.
The Controller must only be informed of this license by way of Form 12 for documentation purposes.
To proceed with an application for entry of Mortgage or License in the Register of Designs through Form 12, the applicant or its representative must pay the prescribed fee depending on their nature and the number of designs.
In respect of one design, where the applicant is a natural person the fee payable is INR 500. However, where the applicant is other than a natural person the fee payable for a small entity is INR 1000 and for others except small entity is INR 2000.
Similarly, for each additional Design, where there are multiple designs, if the applicant is a natural person the fee payable is INR 200 and if the applicant is other than a natural person the fee payable for a small entity is INR 400 and for others except small entity is INR 800.
The ultimate goal of Forms 11, 12, and 13 under the Designs Act is to inform the Controller of the distribution of the rights to a registered design that has subsequently been transferred after registration. While most such rights are transferred by way of assignment the Act also leaves rooms for license agreements and mortgage agreements to be recorded so that the Register for Designs stays updated. This is further helpful as when reviewed, the Controller has full knowledge of the existing rights to a design.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
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