Supporting Change Within Organisations Assignment Of Deed

On this page ↓

The ownership of an industrial design may change for various reasons and in different ways.  A change in ownership may result from a contract, such as an assignment.  Other reasons might be a court decision, or operation of law, such as an inheritance or bankruptcy, or from the merger of two companies.

99 Article 16(1)(i)

The change in ownership of an international registration may relate to all the industrial designs covered by the international registration, or to some only of them.  Similarly, the change in ownership may be in respect of all the designated Contracting Parties or some only of them.

Rule 21(2)(v)

The Common Regulations do not distinguish between such different causes for, or different types of, change in ownership.  The uniform terminology “change in ownership” is used for all cases. Until the change has been recorded in the International Register, the former owner of the international registration is referred to as the “holder”, since this term is defined as the person or legal entity in whose name the international registration is recorded.  The new owner is referred to as the “transferee”.  Once the change in ownership has been recorded, the transferee becomes the holder of the international registration.

Furthermore, the issue of the recording of a change in ownership in the International Register must be distinguished from that of the validity of such change in ownership.  The Hague Agreement does not set out, for example, the conditions to be met regarding the validity of a deed of assignment relating to an international registration.  These conditions are, and remain, governed exclusively by the relevant domestic legislation, and may therefore vary from one Contracting Party to another (e.g., the need for execution of a document in writing certifying the assignment, proof of the age of the parties in order to assess their legal entitlement, etc.).

The Hague Agreement provides only for the requirements to be complied with in order to validly record a change in ownership in the International Register.  This issue is therefore a matter which comes into play only subsequently to the formal conclusion of the contractual arrangement or to the occurring of the non-contractual cause for the change in ownership.

The recording of a change in ownership in the International Register normally aims at ensuring that such change in ownership will be effective against third parties.

Moreover, it is to be noted that, in certain circumstances, a designated Contracting Party may refuse the effect of a recording of a change in ownership in the International Register with respect to its designation, pursuant to a declaration requiring certain statements or documents, under Article 16(2) of the Geneva (1999) Act, or to a declaration to refuse the effects of the recording of a given change in ownership issued pursuant to Rule 21bis(1) (refer to “Effect of the recording of a change in ownership” et seq).

Entitlement to be recorded as new holder

Where there has been a change in the ownership of an international registration, the new owner (transferee) may be recorded as the new holder in respect of a given designated Contracting Party provided he holds an entitlement (i.e., by virtue of establishment, domicile, habitual residence or nationality) in a Contracting Party bound by an Act to which the designated Contracting Party concerned is also bound.

99 Article 3;  Rule 21(2)(iv)

For example, if a designated Contracting Party is bound by both the 1960 Act and the 1999 Act, the transferee could be recorded as the new holder in respect of such Contracting Party to the extent that he holds an entitlement in a Contracting Party bound by either (but at least one) of these Acts.  On the other hand, where the transferee is a company holding an entitlement only in a Contracting Party bound exclusively by the 1999 Act, such transferee cannot be recorded as new holder in respect of designated Contracting Parties bound exclusively by the 1960 Act (or vice-versa).

In certain situations, the application of this principle may entail a change in the Act governing the designation of the Contracting Party concerned vis à vis the Contracting Party of the new holder.  The following example may illustrate the issue concerned.

An applicant originates from a Contracting Party bound exclusively by the 1960 Act and has designated a Contracting Party bound by both the 1960 and the 1999 Acts.  Such designation is therefore governed by the 1960 Act (the single common Act).  The corresponding registration is subsequently assigned to a company established in a Contracting Party bound exclusively by the 1999 Act.  This transfer can be recorded in the International Register, since the 1999 Act is common to the Contracting Party of the new holder and the designated Contracting Party concerned.  For the very same reason, however, it follows that the designation of that Contracting Party is no longer governed by the 1960 Act, but instead by the 1999 Act (the only common Act between the designated Contracting Party and the Contracting Party of the new holder).

Where this situation occurs, however, the following consequences must be inferred.

Refusal period

If the recording of the change in ownership takes place during the course of the refusal period, and given that such period may differ according to whether a Contracting Party has been designated under the 1960 Act or under the 1999 Act (refer to “Time limits for refusal”), the recording of the change in ownership does not have the effect of prolonging – or reducing – the refusal period allowed for a designated Contracting Party to notify a refusal of protection.  This solution was approved by the Assembly of the Hague Union at its twenty second session in September/October 2003, by means of an interpretative statement.

Deferment of publication

If the recording of the change in ownership takes place during the period for deferment of publication, and given that such period under the 1999 Act (up to 30 months) may be longer than the maximum period of deferment provided for by the 1960 Act (12 months), the recording of the change in ownership does not have the effect of reducing the applicable deferment period where (i) deferment of publication had been requested for a period of more than 12 months under the 1999 Act and (ii) the international registration concerned is transferred, during this deferment period, to a person having an entitlement in a Contracting Party bound exclusively by the 1960 Act.  This solution was approved by the Assembly of the Hague Union at its twenty second session in September/October 2003, by means of an interpretative statement.

Individual renewal fees

Given that an individual fee may be required at the stage of renewal for Contracting Parties designated under the 1999 Act, but that such a fee is not provided for in respect of Contracting Parties designated under the 1960 Act in the context of renewal, it follows that the new holder may have to pay individual renewal fees in a designated Contracting Party (while such possibility had been precluded with respect to the initial holder), or vice versa.  This solution was approved by the Assembly of the Hague Union at its twenty second session in September/October 2003, by means of an interpretative statement.

Entitlements of the new owner in several contracting parties bound by different acts (plurality of entitlements)

The transferee may indicate, in the request for the recording of change in ownership, an entitlement in several Contracting Parties which may be bound by different Act(s) (refer to “Entitlement to file an international application”).  Therefore, assuming for example that the transferee:

  • claims a domicile in a Contracting Party bound exclusively by the 1960 Act (Contracting Party A) and the nationality of a Contracting Party bound exclusively by the 1999 Act (Contracting Party B), and
  • requests to be recorded as the new holder in respect of a Contracting Party bound by both Acts (Contracting Party C),

it is the more recent (1999) Act which is taken into account to determine which Act governs the designation of the Contracting Party concerned (Contracting Party C) vis-à-vis the new holder (the same result would ensue if, in the example above, Contracting Party B was not the State from which the assignee is a national but an intergovernmental organization of which Contracting Party A is a member State).  This solution was approved by the Assembly of the Hague Union at its twenty second session in September/October 2003, by means of an interpretative statement.  It results mainly from the fact that the 1999 Act is the more modern legal instrument and that such a solution is also in the spirit of Article 31(1) of the 1999 Act and Article 31(1) of the 1960 Act, which give preference to the more recent Act.

Who can present the request

As a matter of principle, requests for the recording of changes must be presented and signed by the holder.  However, a request for the recording of a change in ownership (form DM/2) may also be presented by the new owner, provided that it is

  • signed by the holder, or
  • signed by the new owner and accompanied by an attestation from the competent authority of the holder’s Contracting Party that the new owner appears to be the successor in title of the holder.

Rule 21(1)(b)

Contents of the request

A request for the recording of a change in ownership (form DM/2) must contain or indicate the following:

  • the number of the international registration concerned (a single request form may be used for several international registrations in the name of the same holder, provided that the request relates to a total change in ownership as provided for in item 6(a) of the form.  On the other hand, if the request relates to a partial change in ownership, as provided for in item 6(b), the request form may be used only for a single international registration);

Rule 21(2)

  • the name of the holder;
  • the name and address, given in accordance with the Administrative Instructions, of the new owner of the international registration.  Where there are several new owners with different addresses and no representative has been appointed, an address for correspondence should also be indicated.  If no such address is indicated, the International Bureau will take as the address for correspondence the address of the person named first (in item 3 of the form).  It should also be noted that where there is only one new owner and no representative has been appointed, item 4 of the form (address for correspondence) should be completed only if the correspondence address is, in fact, different from the ordinary address of the applicant already given in item 3(b);

A.I. Section 301;  A.I. Section 302

  • the Contracting Party or Parties in respect of which the new owner fulfills the conditions to be the holder of an international registration;
  • in the case of a change in the ownership of the international registration that does not relate to all the industrial designs and to all the Contracting Parties, the numbers of the industrial designs and the designated Contracting Parties to which the change in ownership relates;
  • the amount of the fees being paid and the method of payment, or instruction to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions.

99 Article 16(3);  Rule 21(2)(vi)

The form should be signed or have a seal affixed and the identity of the signatory should be indicated as provided for in item 7.  There is also provision for an indication of the name of the person to be contacted, if necessary.  This may prove useful if, for example, the form is submitted in the name of a legal entity.

Rule 21(1)(b);  A.I. Section 202

Appointment of a representative

The new owner or transferee may also, optionally, appoint a representative, simultaneously with the filing of the request for the recording of the change in ownership.  This is provided for in item 8 of the form, which requires that such appointment be made either by means of the attachment of the appropriate power of attorney to form DM/2 (Change in Ownership) or the annexing to form DM/2 of duly completed form DM/7 (Appointment of Representative).

Rule 3(1)(b)

Irregular or inadmissible requests

Request not admissible

A change in the ownership of an international registration may not be recorded in respect of a designated Contracting Party if that Contracting Party is not bound by an Act to which the Contracting Party, or one of the Contracting Parties, in respect of which the new owner fulfills the conditions to be the holder of an international registration, is also bound (refer to “Entitlement to be recorded as new holder”).

Rule 21(3)

Irregular request

If the request does not comply with any of the applicable requirements, the International Bureau notifies that fact to the holder and, if the request was presented by a person claiming to be the new owner, to that person.

Rule 21(4)

An irregularity in a request for recording of a change in ownership may be remedied within three months from the date of the notification of the irregularity by the International Bureau.  If the irregularity is not remedied within that three months period, the request is considered abandoned and the International Bureau notifies accordingly and at the same time the holder and, if the request was presented by a person claiming to be the new owner, that person, and refunds any fees paid, after deduction of an amount corresponding to one half of the relevant fees.

Rule 21(5)

Partial change in ownership – numbering

An assignment or other transfer of the international registration in respect of some only of the industrial designs, or some only of the designated Contracting Parties, is recorded in the International Register under the number of the international registration of which a part has been assigned or otherwise transferred.  In such case, any assigned or otherwise transferred part is cancelled under the original number of the international registration and is recorded as a separate international registration.  The separate international registration bears the number of the international registration of which a part has been assigned or otherwise transferred, together with a capital letter.

Rule 21(7)

Merger

Where the same person becomes the holder of two or more international registrations resulting from a partial change in ownership, the registrations may be merged at the request of such person.  In that regard, the requirements concerning a request for the recording of a change in ownership (refer to “Change in ownership”) apply mutatis mutandis to the request for the recording of a merger.

Rule 21(8)

The international registration resulting from the merger bears the number of the international registration of which a part had been assigned or otherwise transferred, together, where applicable, with a capital letter.


Recording, notification and publication

Provided that the request is in order, the International Bureau promptly records the change in the International Register and informs both the new holder and the previous holder.

Rule 21(6)(a)

The International Bureau publishes in the Bulletin the relevant data concerning the change in ownership and the mergers.

Rule 26(1)(iv)

Effect of the recording of a change in ownership

The recording of a change in ownership in the International Register has the same effect as if it had been made directly at the corresponding national or regional Register of the Office. However, Article 16(2) of the 1999 Act provides for one possible exception, namely a Contracting Party may, in a declaration, notify the Director General of WIPO that a recording of a change in ownership in the International Register shall not have effect in that Contracting Party until the Office of that Contracting Party has received the statements or documents specified in that declaration.

60 Article 7(1)(b);  99 Article 16(2)

Certificate of transfer in respect of a designated Contracting Party having made a declaration under Article 16(2) of the Geneva (1999) Act

As indicated above, a Contracting Party may make a declaration under Article 16(2) of the 1999 Act to the effect that a recording of a change in ownership in the International Register does not have effect in that Contracting Party until the Office has received the statements or documents specified in that declaration. It follows that, if the recording of a change in ownership concerns a designation of a Contracting Party having made the above declaration, the statements or documents specified in the declaration should be prepared by the holder, and presented to the Office of the designated Contracting Party concerned.

 In view of the above, as a means to alleviate the burden for holders of international registrations the standard document, entitled “Certificate of Transfer by Contract of International Registration(s) of Industrial Design(s) in Respect of a Designated Contracting Party(ies) Having Made a Declaration Under Article 16(2) of the Geneva (1999) Act”, has been established and the Assembly of the Hague Union adopted, at its thirty-fourth (15th extraordinary) session in 2014, the following recommendation:

 

“The Assembly of the Special Union for the International Deposit of Industrial Designs (Hague Union),

 

in terms of Article 16(2) of the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs (hereinafter referred to as the “Geneva Act”) which allows a Contracting Party to the Geneva Act to notify the Director General, in a declaration, that a recording of a change in ownership of the international registration shall not have the same effect as if it had been made in the Register of the Office of the Contracting Party concerned until the Office of that Contracting Party has received the statements or documents specified in that declaration,

 

recommends that where a change in ownership of an international registration in respect of a designated Contracting Party having made a declaration under Article 16(2) of the Geneva Act is recorded in the International Register, for the purpose of meeting a requirement specified in such a declaration, if

 

(a)    a “Certificate of transfer by contract of international registration(s) of industrial design(s) in respect of a designated Contracting Party(ies) having made a declaration under Article 16(2) of the Geneva (1999) Act” (hereinafter referred to as a “certificate of transfer”) established by the International Bureau of the World Intellectual Property Organization (hereinafter referred to as the “International Bureau”) is submitted to the Office of the designated Contracting Party concerned through the International Bureau at a time and in a manner and format to be ascertained by the International Bureau according to Sections 204 and 205 of the Administrative Instructions for the Application of the Hague Agreement, or

 

(b)   a certificate of transfer is submitted to the Office of the Contracting Party concerned directly,

 

that Office accepts the certificate of transfer as having the same effect as a statement or document which may be submitted for the same purpose under the law of the Contracting Party concerned.”

 

 It should also be noted that the Certificate of Transfer should be relied on only in case of a change in ownership of the international registration(s) by contract.  A list of the Offices of the Contracting Parties that are able to follow the recommendation will be made available on the WIPO website, alongside the Certificate of Transfer.

 

Refusal of the effects of the recording of a change in ownership issued by the Office of a designated Contracting Party

As indicated above, a Contracting Party may make a declaration under Article 16(2) of the 1999 Act to the effect that the recording of a change in ownership in the International Register does not have effect in that Contracting Party until the Office has received the statements or documents specified in that declaration.

Rule 21bis

Furthermore, there are situations under some national/regional laws, where the recording of a partial change in ownership is not allowed.  For example, this is the case under certain jurisdictions where a set of industrial designs is considered to constitute a single industrial design, which means that all the designs belonging to the same set acquire legal protection as a whole and do not acquire protection independently.  As a consequence, all the designs forming the set can only be transferred to the same transferee at the same time.  This is also the case under certain jurisdictions where the law provides for a “similar design” system or a “related design” system.  Industrial designs registered under this particular condition can only be transferred all together at the same time.

As described above, if a given change in ownership is not allowed under its national/regional laws, the Office of that Contracting Party may declare that the change in ownership recorded in the International Register has no effect in the said Contracting Party.

Rule 21bis(1)

That declaration must be sent by the Office to the International Bureau within six months from the date of publication of the change in ownership or within the applicable refusal period, whichever expires later.  The declaration should indicate (i) the reasons for which the change in ownership has no effect, (ii) the corresponding essential provisions of the law, (iii)  the numbers of the industrial designs concerned by the declaration where it does not relate to all the industrial designs that are the subject of the change in ownership, and (iv)  whether such a declaration may be subject to review or appeal.

Rule 21bis(2) and (3)

Upon its receipt, the International Bureau records the declaration in the International Register and notifies accordingly the previous holder (the transferor) and the new holder (transferee).  The International Bureau also modifies the International Register, so that that part of the international registration which has been the subject of the said declaration be recorded as a separate international registration in the name of the previous holder (the transferor).  The International Bureau notifies accordingly the previous holder (the transferor) and the new holder (the transferee).

Rule 21bis(4)

The withdrawal of a declaration of refusal issued under this Rule shall be notified to the International Bureau which shall then record it in the International Register, modify the International Register accordingly, and notify accordingly the previous holder (the transferor) and the new holder (the transferee).

Rule 21bis(5)

The International Bureau publishes the relevant data concerning declarations of refusal of the effects of the recording of a change in ownership and their withdrawals.

Rule 26(1)(ix)

The following example may illustrate how this Rule works:  a given international registration contains the designations of Contracting Parties A and B under the 1999 Act, Contracting Party A having made the declaration under Article 16(2) of the 1999 Act.  A total change in ownership of the international registration has been recorded in the International Register from holder X to new holder Y.  After three months from the date of publication of the recording of the said change in ownership, the International Bureau receives from the Office of Contracting Party A the declaration that the change in ownership has no effect in that Contracting Party.  The International Bureau records the said declaration in the International Register and notifies accordingly the previous holder (the transferor) and the new holder (the transferee), in accordance with paragraph (4) of this Rule.  Pursuant to the said paragraph, the International Bureau modifies the total change in ownership to a change in ownership in respect of Contracting Party B, this modification leading to the creation of a new international registration in the name of X for Contracting Party A.  According to the general principle established under Rule 21(7) for the recording of a partial change in ownership, the new international registration would bear the number of the original international registration, together with a capital letter.  In the event of a further decision to withdraw the aforementioned declaration of refusal in Contracting Party A, it shall be notified to the International Bureau pursuant to paragraph (5) of Rule 21bis.  The International Bureau then modifies the name of the holder of the new international registration from X (the previous holder) to Y (the new holder) and notifies the previous and the new holder accordingly.  The International Bureau then merges those two international registrations in the name of Y (the new holder) and informs the new holder (transferee) accordingly.

Rules 21bisand 21(7)

 

Jump to Main Content

  • Patents
  • Trademarks
  • IP Policy
  • About Us
    • Back
    • About Us Home
    • Events
    • Executive Biographies
    • Find by Subject A-Z
    • News & Updates
    • Organizational Offices
      • Back
      • Office of Policy and International Affairs
      • Office of the Chief Administrative Officer
      • Office of the Chief Communications Officer
      • Office of the Chief Financial Officer
      • Office of the Chief Information Officer
      • Office of the Commissioner for Patents
        • Back
        • Office of the Commissioner for Patents Home
        • Manual of Patent Examining Procedure (MPEP) Staff
        • Office of Patent Legal Administration
        • Office of Petitions
        • Office of the Deputy Commissioner for International Patent Cooperation
        • Office of the Deputy Commissioner for Patent Administration
        • Office of the Deputy Commissioner for Patent Operations
          • Back
          • Office of the Deputy Commissioner for Patent Operations Home
          • TC 1600 - Biotechnology and Organic Chemistry
          • TC 1700 - Chemical and Materials Engineering
          • TC 2100 - Computer Architecture, Software, and Information Security
          • TC 2400 - Computer Networks, Multiplex communication, Video Distribution, and Security
          • TC 2600 - Communications
          • TC 2800 - Semiconductors, Electrical and Optical Systems and Components
          • TC 2900 - Designs
          • TC 3600 - Transportation, Construction, Electronic Commerce, Agriculture, National Security and License & Review
          • TC 3700 - Mechanical Engineering, Manufacturing, Products
      • Office of the Commissioner for Trademarks
      • Office of the General Counsel
      • Office of the Under Secretary and Director
      • Patent Trial and Appeal Board
      • Public Advisory Committees
      • Trademark Trial and Appeal Board
    • Performance and Planning
    • USPTO Locations
    • Vendor Information
  • Learning and Resources

One thought on “Supporting Change Within Organisations Assignment Of Deed

Leave a Reply

Your email address will not be published. Required fields are marked *