Designers, Employment, Property and Assignments

The property and ownership provisions for UK registered designs, UK unregistered designs and
copyright are quite closely aligned. Those for Continuing Unregistered Community Designs and
Supplementary Unregistered Design Right differ at some points.

1 Designers and authorship

1.1 The legal position of designers

Sadly, given their importance in the real world, the itentity of the designer has little significance in UK
law. Designers have no moral rights, unlike authors of copyright works. They are not entitled to
compensation, unlike inventors. However, consideration of the designer is necessary as the basis of
analysis of ownership of a design.

1.2 (Absence of) Moral Rights

There is no provision for moral rights in relation to UK registered designs, UK unregistered designs,
Continuing Unregistered Community Designs and Supplementary Unregistered Design Right.
Although the Registered Community Design system guarantees the designer the right to be named,1
the UK national registered design system does not even make that possible.

Some moral rights exist in relation to any copyright in a design, but they are attenuated. The right to
be identified as author (“paternity”) and the right to object to derogatory treatment are only
applicable where:

 For employed designers of any kind of work, the employer is the first owner of copyright, the acts
the designer objects to are not approved by the employer.2
 For sculptures or works of artistic craftsmanship (i.e. 3D works), copies of a graphic work
representing it, or of a photograph of it, are issued to the public – i.e. the right only applies to 2D
representations, and not to competing 3D copies, of the work.3
 In addition, the paternity right (to be identified) is not applicable to design documents where the
s.51 defence applies (i.e. the acts of making articles, or copying articles when made, except where
the article is itself an “artistic work” such as a sculpture or a work of artistic craftsmanship).4

1.3 Who is the author/designer?

The Design Directive does not refer to designers and thus, in all three UK-originating rights, the
definition is consistent and time-honoured: the “author” of a copyright artistic work or a UK registered
design, and the “designer” of a UK unregistered design, is “the person who creates it”.5 The “it”

1
CUCD and SUDR: Regulation 6/2002 Art.18.
2
Copyright: CDPA 1988 ss.79(3) & 82(1)(a).
3
Copyright: CDPA 1988 ss.77(4)(c) & 80(4)(c).
4
CDPA 1988 S.79(4)(f).
5
Copyright: CDPA 1988 s.9(1), UK UDR: CDPA 1988 s.214(1); UK RD: RDA 1949 s.2(3) & s.44(1).
concerned depends on, firstly, the legal definition of what is protected and, secondly, the actual design
claimed by the proprietor in the proceedings concerned.

The EU Regulation 6/2002 (which applies after Brexit to Continuing Unregistered Community Designs
and Supplementary Unregistered Design Right) contains no such definition. The Court of Justice has
held6 that “designer” in the Regulation is an autonomous concept of EU law, but has not defined that
concept, and there does not seem any reason to give “designer” a different meaning to that it has in
the UK statutes when dealing with the UK successor rights to Community Designs.

1.4 Computer-generated works and designs

All three UK-originating rights deal with designs or works “generated by computer in circumstances
such that there is no human” designer or author. In such cases, the designer or author is the person
who makes “the arrangements necessary for the creation”.7 Mere use of CAD software tools is unlikely
to fall within these provisions, but use of artificial intelligence, for example, would seem to do so.

1.5 Joint authors/designers

UK copyright and UK unregistered design law deal with designs or works “produced by the
collaboration of two or more” designers or authors “in which the contribution of each is not distinct
from that of the other” or others.8 These are “work of joint authorship”9 or “joint works”,10 and “joint
designs”, 11 respectively. The criteria for determining joint authorship were discussed by the Court of
Appeal in Kogan v Martin.12 For such designs, any references to “the designer” or “the author” have
to be read as references to all authors/designers. The RDA 1949 law makes no reference to joint
authors. Neither the RDA 1949 nor the CDPA 1988 deals with non-joint collaborative designs, where
different designers have created distinct parts of the whole.

The person who makes the final, finished drawings is not necessarily the sole designer or author, for
“to have regard merely to who pushed the pen is too narrow a view of authorship”.13 The person who
had the original idea which led to the final design may on the facts be the sole designer, a joint designer
or not a designer at all.

(a) Originator held to be sole designer. In LED Technologies v Elecspess,14 an Australian case, the
originator of a design idea who had made sketches and passed them to a Chinese collaborator
who drew them up accurately, devised a CAD model and made moulds, was held to be the
sole author of the resulting design. Likewise in Pearson v. Morris Wilkinson,15 the claimant
had made a rough sketch of a pram containing some remarks; gave the size, and some rough
instructions to the person who fabricated the pram. There had been no ambiguity about the

6
Case C-32/08 FEIA
7
Copyright: CDPA 1988 s.9(3) & s.178, UK UDR: CDPA 1988 s.214(2) & s.263(1); UK RD: RDA 1949 s.2(4).
8
Copyright: CDPA 1988 s.10(1) & 178, UK UDR: CDPA 1988 s.259(1). For interpretation, see Kogan v Martin
[2019] EWCA Civ 1645, [2020] EMLR 4.
9
Copyright: CDPA 1988 s.10 etc.
10
Copyright: CDPA 1988 s.88 heading.
11
UK UDR: CDPA 1988 s.259(1).
12
Kogan v Martin & Ors (Rev 1) [2019] EWCA Civ 1645, [2020] EMLR 4.
13
Cala Homes (South) Limited v Alfred McAlpine Homes East Limited [1995] FSR 818, approved in Kogan v
Martin at [41].
14
LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941.
15
In the Matter of Frederick Pearson's Registered Designs, (1906) 23 RPC 738.
 instructions, and the prototype produced was exactly what the claimant had wanted, so he
was held to be the sole designer.
(b) Originator held to be joint designer. A company director who gave detailed instructions (with
some sketches) to an architect as to the design of a house which the architect then drew was
held to be a joint author.16
(c) Originator held not to be a designer at all. Where “[o]n the instructions given” someone
“might easily have produced any one or other of these two particular [prior art] designs
or the registered Design or, perhaps, something different from each of them”, a design
(in that case, of a fabric) has not yet been made.17 Thus, where the claimant had an
idea for a desk and asked the defendant (a furniture maker with whom he had worked
before) to make it for him, he was unhappy with what was produced and the two went
back and forth until the final design was reached; clearly, the instructions given did
not map directly onto the eventual design, and the defendant was the sole designer.18
The question is whether the original conception is “specific enough to amount to a
design, rather than a number of ideas of what the design should include."19
Some other things which have been held insufficient to constitute being a joint author or
designer include:

 Selecting silicone to compensate for differential expansion of glass blocks, not visible
in the design as registered;20
 Selecting adhesives;21
 Approving and accepting a design created to order by someone else;22
 Spotting a design abroad;23
 Commercialising and exploiting the design;24
 Scanning images and cleaning them up, under the direction of a designer;25
 Setting the specification for computer software, and fixing errors and bugs in it.26

2 First Ownership
The “first owner” of all three UK-originating rights, and also Continuing Unregistered Community
Designs and Supplementary Unregistered Design Right, is by default the author/designer.27 However,
in each case there are important exceptions. As International design registrations are treated like
national applications and registrations, the provisions of the RDA 1949 also apply to them.28

16
Cala Homes.
17
Pressler & Co v Gartside & Co. [1933] 50 RPC 240.
18
Heinrichs' Design (1892) 9 R.P.C. 73.
19
Uwug Ltd & Anor v Ball (t/a Red) [2013] EWPCC 35.
20
Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1.
21
Henrick v Taplin and Henrick [2009] ADO 1.
22
A. Pressler & Co. Ltd. v. Gartside & Co. (of Manchester) Ltd. and Widd & Owen Ltd.; (1933) 50 RPC 240.
23
Lazarus v Charles (1873) Law J. Rep. Chanc. 507; L. R. 16 Eq. 117.
24
Ibid.
25
MEI Fields Designs Ltd v Saffron Cards And Gifts Ltd & Anor [2018] EWHC 1332 (IPEC) at [76]-[77].
26
Fylde Microsystems Ltd v Key Radio Systems Ltd [1998] FSR 449 at 455, approved in Kogan v Martin at [42].
27
Copyright: CDPA 1988 s.11(1), UK UDR: CDPA 1988 s.215(1); UK RD: RDA 1949 s.2(1).
28
Hague Agreement (Geneva Act), Art.14; The Designs (International Registration of Industrial Designs) Order
2018, SI 2018 No. 23.
2.1 Commissioned designs
In the past, a person who commissioned a design for money was the first owner of UK registered and
unregistered designs.29 No such provisions existed for copyright.30 These provisions were repealed
by the Intellectual Property Act 2014 for consistency with Community design law (but still have effect
in relation to designs created before the deletion took effect31). Thus, where a design is newly
commissioned the commissioner will not be the first owner of copyright or design rights.

2.2 Employee designs

In each case, works or designs made by an employee in the course of employment will usually vest in
the employer who is therefore the first owner.32 “Employment” here is used in the narrow sense of
“employment under a contract of service or of apprenticeship”.33 However, someone hired via their
Personal Services Company will be treated as an employee, if that is what they are.34

In place of “course of his employment”, the CDR refers to “the execution of his duties or following the
instructions given by his employer”,35 (though this will usually come to the same thing). In applying
this test, the Court of Justice has also adopted a narrow definition of “employment”.36

2.3 Future copyright or design right

A contract which purports to assign a design which has yet to be created (and therefore does not exist
at the time of the contract) will usually be treated as an agreement to assign the rights after they come
into being, and hence something which transfers the equitable ownership but not the legal title in the
design or work.37 However, the CDPA varies this position for copyright and UK UDR.38 If there is an
agreement in writing and signed by the person who would otherwise be the first owner of the right,
which purports to assign the work or design to an assignee, then as soon as the right comes into being
the right does indeed vest in the assignee (or his successor in title), in law as well as equity, and no
further formalities or transactions are required. PRS v B4U (at both instances) contains a rather
detailed analysis of the effects of an assignment of future copyright.39

29
UK UDR: CDPA 1988 s.215(2) & s.263(1); UK RD: RDA 1949 s.2(1A).
30
The Copyright Act 1956 did contain such provisions for photographs (s.4(3)) and sound recordings (s.12(4))
but these disappeared in the CDPA 1988 – though the commissioner of a photographs benefits instead from a
privacy right.
31
On 1st October 2014.
32
Copyright: CDPA 1988 s.11(2), UK UDR: CDPA 1988 s.215(3); UK RD: RDA 1949 s.2(1B).
33
Copyright: CDPA 1988 s.178, UK UDR: CDPA 1988 s.263(1); UK RD: RDA 1949 s.44(1).
34
Sprint Electric Ltd v Buyer's Dream Ltd & Anor [2018] EWHC 1924 (Ch) at [141]-[142] & [186].
35
CUCD and SUDR: Regulation 6/2002 Art.14(3)
36
Case C-32/08 FEIA, referring to contracts of employment and excluding commissioned designs.
37
See KCI Licensing v Smith & Nephew [2010] EWHC 1487 (Pat) at [64] – [66], a patent case which seems
applicable by analogy.
38
Copyright: CDPA 1988 s.91, UK UDR: CDPA 1988 s.223.
39
Performing Right Society Ltd. v B4u Network (Europe) Ltd. [2012] EWHC 3010 (Ch), [2013] FSR 19, and B4U
Network (Europe) Ltd v Performing Right Society Ltd [2013] EWCA Civ 1236, [2014] FSR 17
No such provisions exist for UK registered designs, presumably because these are rights in applications
or registrations and therefore require the existence of an application or registration. There is also no
such provision for SUD or CUCD.

2.4 Joint works

Joint works or designs (or other collaborative designs, where the contributions are separable) will
normally be jointly owned (for which, see below) where the designers are not employees. However,
there are some exceptions:

 For UK UDR, in relation to non-employed designers, if any of the designers are not “qualifying
persons”40 they have no share in ownership.41
 For International Designs, only qualifying persons can be applicants, and transfers will only be
recorded for assignees who are qualifying persons.42

2.5 First Marketers (UK UDR only)

Where a UK unregistered design does not qualify for protection by reference to the designer or
employer,43 it may qualify by reference to first marketing in the UK by a qualifying person, but in this
case, that first marketer is the owner of the design right.44

There is no equivalent for Unregistered Community Designs, or the successor SUDs or CUCDs. The
German Supreme Court has held that the first discloser of a design is not to be presumed to be the
legal owner.45 The SUD and CUCD versions of Regulation 6/2002 explicitly provide that the true owner
can challenge ownership of a person who has published a design.46

3 Property in Designs

3.1 Nature of property

A right in a UK design (or an International Design (UK)47) or copyright work is a species of property
right, as is that in a pending application for a registered design.48 Different laws of property apply in
England, Wales and Northern Ireland on the one hand; and Scotland on the other, so the statutes
make separate provision for Scotland. UK registered designs, Continung Unregistered Community
Designs and Supplementary Unregistered Designs are personal property (specifically, intangible
property) in England, Wales and Northern Ireland, and incorporeal moveable property in Scotland.49
Although not expressly stated in the statutes, the same is true of other intellectual property rights.

40
UK UDR: Which in practice normally requires a connection with the UK, Hong Kong or New Zealand – or, if
the design is pre-BREXIT, any EEA country.
41
UK UDR: CDPA 1988 s.218(4).
42
Hague Agreement (Geneva Act), Art.3 & Art.16(1)(i).
43
Or, in the past, the commissioner.
44
UK UDR: CDPA 1988 s.215(4).
45
Bolerojäckchen (Bolero Jacket), I ZR 23/12, BGH 13 December 2012.
46
SUD, CUCD; Regulation 6/2002, Art 15(1) as amended in both versions.
47
The Designs (International Registration of Industrial Designs) Order 2018 Schedule 2 para 14.
48
Copyright: CDPA 1988 s.1(1), UK UDR: CDPA 1988 s.213(1); UK RD: RDA 1949 s.15A.
49
UK RD: RDA 1949 s.15A; CUCD and SUDR: Regulation 6/2002 Art.27 as amended.
Additionally, all intellectual property rights in designs50 may be classified (under English law) as
“choses” (or “things”) “in action”. This has implications on the formalities necessary when they can
be assigned in law.51

In English law, it is possible for the legal ownership of a design (or any other property) to become
separated from the equitable, or beneficial, ownership. This might be done intentionally: it is possible
to set up an express trust whereby X holds the design for the benefit of Y. However, it can also happen
accidentally where an intended transfer fails for some reason to pass legal ownership.

Directors of a company, whether or not they are also employees, have duties to further the fortunes
of that company in the interests of its shareholders. Thus, subject to any agreement between the
director and the shareholders to the contrary, copyright or design rights held by a director will usually
be held on trust for the company itself, which can call for them to be assigned to it.52 Likewise,
partners who hold intellectual property may owe a duty to assign it to the partnership.53

There are thus three potentially different proprietors to consider:

1. The owner in law;

2. The beneficial owner (the owner in equity); and
3. The registered proprietor (for a registered right), who is presumed to be the owner.

3.2 Co-Ownership and Joint Ownership

Co-owners of a design may own different parts of the design (or the designs of different parts of the
whole) or they may jointly own the whole.

In the second case they may under English law of property be either “joint tenants” or “tenants in
common”. These forms of ownership have rather different effects. Subject to contract, joint tenancy
usually requires equal shares, and when one co-owner dies the rights pass to the other tenants.
Tenancy in common does not require equal shares, and each share can be separately transmitted (e.g.
to the heirs of the deceased tenant). The usual default in England and Wales is that co-owners of
designs and copyright will hold them as tenants in common, but it may be clear from the circumstances
(or agreed by contract between the co-owners) that joint tenancy or some other arrangement
applies.54

Although the Acts generally refer to the proprietor in the singular, this has to be read as a reference
to all of the joint owners.55 This has the consequence that the joint owners cannot separately licence
the design or work – consent of all of them must be sought.56 Joint owners cannot even separately

50
See Ifejika v Ifejika & Anor [2010] EWCA Civ 563 at [25]. Unlike rights in patents, see the Patents Act 1977,
s.30(1). See, generally, Dictionary of Intellectual Property Law, Elgar Publications, P Groves (Ed).
51
Law of Property Act 1925, s.136.
52
Vitof Ltd v Altoft [2006] EWHC 1678 (Ch) at [144]-[151], and more generally Ultraframe v Fielding [2003]
EWCA Civ 1805 , [2004] RPC 24.
53
Coward v Phaestos Ltd & Ors [2013] EWHC 1292 (Ch) at [222].
54
See Copinger & Skone James on Copyright 17th Ed., 5-01 & 13-122.
55
Copyright: CDPA 1988 s.173(2), UK UDR: CDPA 1988 s.258(2); UK RD: RDA 1949 s.44(1).
56
This is explicit in the CDPA. It is hard to read the RDA 1949 differently.
exploit the design without consent of all other owners.57 Joint ownership in design cases is therefore
an inconvenient outcome for warring parties, and is accordingly rarely sought or granted.

Joint ownership of SUD and CUCD is mentioned in each version of Regulation 6/2002 as amended58
and the Community Design Regulations as amended,59 but not discussed beyond a provision that any
one of joint owners can on their own refer a Crown Use dispute to Court if the other owners are named
as parties (this has an identical counterpart for UK UDR60).

3.3 Succession and Transmission of Rights in Designs

Designs and copyright can be transmitted on death or by other operation of law like other forms of
personal property.61

4 Assignments

4.1 Assignment of Rights in Designs and Works

Under the laws of the UK, designs and copyright can be assigned like other forms of personal
property.62 The law governing the transaction might be English or Scottish law, but it might
alternatively be the law of another country. For copyright, “[t]he rule at common law is that the
question of whether, and to what extent, title to copyright is assignable depends on the law under
which that copyright was created” – in some countries, copyrights cannot in fact be assigned (they are
“inalienable”). The UK is party to various EU and international mechanisms which govern valid choices
of law in contracts, and the intention is that these arrangements should be unaffected by Brexit.63

It is explicit for UK UDR and copyright that assignments “may be partial, that is, limited so as to apply—

(a) to one or more, but not all, of the things the design right owner has the exclusive right to
do;

(b) to part, but not the whole, of the period for which the right is to subsist.”

There seems no reason to doubt that the same is true of UK Registered Designs, UCD, CUCD or SUD.
However, as renewal fees are due if a Registered Design is to be kept alive, assigning it for only a

57
Robin Ray v Classic FM Plc [1998] F.S.R. 622 at [637], a copyright case but as the UKUDR provisions are
essentially identical the same result would appear to necessarily apply. As the RDA 1949 is differently worded
It is a little less clear whether the same is true for registered designs, but again this seems to be the obvious
way to read the words of the Act, and the legislature seem to have intended the licensing and assignment of
registered and unregistered designs to run parallel so it would be surprising if a different result obtained in the
case of co-owners. The point was discussed but not decided in Ifejika v Ifejika & Anor [2011] EWPCC 31 at [15].
As against this, it could be said that the reasoning in Steers v Rogers [1893] AC 232, (1893) 10 RPC 245 is as
applicable to registered designs as to patents.
58
SUD, CUCD: Regulation 6/2002 Art. 14(2) & Art. 15(2).
59
SUD, CUCD: Community Design Regulations 2005, Schedule, para. 5(3).
60
UK UDR: CDPA 1988 s.252(3).
61
Copyright: CDPA 1988 s.90(1), UK UDR: CDPA 1988 s.222(1); UK RD: RDA 1949 s.15B(1).
62
Copyright: CDPA 1988 s.90(1), UK UDR: CDPA 1988 s.222(1); UK RD: RDA 1949 s.15B(1).
63
This would seem to be the intention behind The Law Applicable to Contractual Obligations and Non-
Contractual Obligations (Amendment etc.) (EU Exit) Regulations 2019, SI 2019 No. 834.
limited period of time requires thought as to who will be responsible for maintaining and defending
the design.

4.2 Statutory Requirements for Assignments

To have legal effect in law, assignments of copyright and registered and UK unregistered designs
should be in writing and signed by or for the assignor(s).64 No such formalities are specified in the
Regulation on Community Designs, or in its UK successor versions,65 though a written, signed
assignment is advisable.

A company seal can be used to sign for a company,66 and signature by the required officers will be
treated as if it were the seal.67 Either a simple contract or a deed can be used. In other respects the
law of property (as it applies to “things in action”) is applicable to designs.

Whilst the above requirements apply to an assignment in law, “the general rules relating to equitable
assignments” apply to designs as to “ any other form of chose in action”.68

4.3 Assignment of Priority Application, and/or Priority Right

An application for a UK Registered Design can claim priority from an earlier design application filed in
a “convention country”69 within the preceding 6 months, but only by the earlier applicant, their
personal representative or assignee.70 If the UK applicant (or, if there is more than one, all the UK
applicants71) does not satisfy this requirement the consequence can be loss of priority, or refusal.72

The applicant must be the successor in title by the date of filing of the UK Registered Design – an
assignment afterwards cannot cure a title defect. However, it is enough to be the equitable, as
opposed to the legal, owner.73 In fact, if the equitable title has been transferred, legal ownership may
not be enough.74
Thus, where the original priority applicant has assigned the foreign application before a UK filing, the assignee
should file the UK application. This is the case whether or not the assignment would meet the requirements of
English or Scottish law, provided it is sufficient to be treated as an assignment of the equity (the beneficial
interest) in the design – i.e. the right to call for the design to be formally assigned later.

64
Copyright: CDPA 1988 s.90(3), UK UDR: CDPA 1988 s.222(3); UK RD: RDA 1949 s.15B(3).
65
These are therefore in the same position as was the design in Ifejika v Ifejika & Anor [2010] EWCA Civ 563 at
[25] under the RDA as it then was: “Although a written legal assignment is the usual method of transmission,
s.2(2) imposes no requirements as to the form any assignment or transmission of the right should take”.
66
Copyright: CDPA 1988 s.176(1), UK UDR: CDPA 1988 s.261; UK RD: RDA 1949 s.15B(4).
67
See for example section 44(2)(b) of the Companies Act 2006.
68
Ifejika v Ifejika & Anor [2010] EWCA Civ 563 at [25].
69
Which includes all parties to the Paris Convention and all World Trade Organisation countries, plus some
others with which the UK has bilateral agreements, but not the UK itself.
70
RDA 1949 s.14(1). However, other forms of succession such as inheritance are accepted in practice.
71
EPO Technical Board of Appeal Case T 0844/18 (CRISPR-Cas/BROAD INSTITUTE).
72
RDA 1949 s.3A(3).
73
See Cook v Edwards and, most recently, Accord Healthcare v Research Corporation Technologies [2017]
EWHC 2711 (Pat), [2018] RPC 4 at [75]; the Court of Appeal expressed provisional approval of this general
approach in Idenix Pharmaceuticals v Gilead Sciences [2016] EWCA Civ 1089 at [266] – patent cases applicable
by analogy.
74
Accord Healthcare v Research Corporation Technologies [2017] EWHC 2711 (Pat), [2018] RPC 4 at [76].
The IPO has the right to examine entitlement to priority, and to refuse the application if the applicant does not
appear to be the priority applicant or his/her successor in title. 75 As it is necessary to file a copy, and sometimes
a translation, of the priority application, discrepancies between the priority applicant and the UK applicant are
liable to lead to objections. As a result, Application Form DF2B76 includes a box allowing applicants to explain in
advance: “If the earlier application was made in a different name, say how the current applicant has a right to
apply. If, for example, by assignment of the earlier application, give the date of the transaction.” It may be
necessary to provide a copy of the assignment if so requested.

Even if the priority application has not been assigned, there is an accepted practice of assigning the right to file
in another country and claim priority to it.77 The right to claim priority is a future “thing in action”, so that an
assignment of priority right is an equitable assignment only. Nonetheless it is probably advisable that it satisfies
the same requirements as would an assignment of an existing application.

5 Linkages between different rights in designs

5.1 General
A consequence of multiple different rights in a design is that some may, inadvertantly or otherwise,
be assigned or licensed separately of others leaving the intended beneficiary blocked. The CDPA made
some efforts to reconcile UK UDR, UK RDs and (to a lesser extent) copyright. Unfortunately, UCD (and
SUD and CUCD) were never brought under the same umbrella, though the IP Act 2014 did to some
extent harmonise first ownership and defences.

5.2 Links between UK RD and UK UDR

The CDPA 1988 created some systemic links between ownership of UK Registered Designs and any
associated UK Unregistered Design Right, with the intention (subject to contract) of keeping the two
together. Specifically:

 An assignment of UK UDR is assumed also to assign any associated UK Registered Design,

subject to any contrary intention;78 and
 An assignment of a UK Registered Design is assumed also to assign any associated UK UDR,
subject to any contrary intention;79
 The applicant for a UK Registered Design has to be the person who claims to be the owner of
any associated UK UDR in the design.80 (At one time, the application form used to require a
declaration to this effect, but it disappeared in the 2006 versions of the application forms).
Ownership in equity is arguably sufficient.81

75
RDA 1949, s.3A(3).
76
Strangely, Form DF2A (the main application form) no longer does.
77
Referred to as “an entirely synthetic right” (but nonetheless accepted) by an EPO Technical Board of Appeal
in Case T 0844/18 (CRISPR-Cas/BROAD INSTITUTE) at [80].
78
RDA 1949, s.19(3B).
79
CDPA 1988, s.224.
80
RDA 1949, s.3(3). For a history of the hoary phrase "claiming to be the proprietor", see AL BASSAM Trade
Mark [1995] RPC 511 at page 523.
81
Ifejika v Ifejika & Anor [2010] EWCA Civ 563 at [28]; although now-repealed s.1(2) rather than s.3(3) was
considered it is hard to see why that should make a difference.
5.3 Links between UK RD and copyright
An assignee or licensee of a registered design does not infringe any copyright corresponding to the
design, when relying on a licence or assignment which has been registered at the IPO, even if the
licensor or assignor turns out not to have been the true owner.82

5.4 No link between UK UDR and copyright

There is no similar statutory presumption that an assignment or licence of UK UDR carries with it an
assignment or licence of copyright. Presumably the reason is that the original scheme of the CDPA
was that the two should not overlap because of the combined effects of the s.236 defence to UK UDR
infringement where copyright is infringed, and the s.51 defence to copyright infringement which
usually operates where UK UDR exists.

6 Design Applicants

6.1 UK Registered Design applicants

Until 2001, the RDA required that the applicant was “a person claiming to be the proprietor”.83 This
meant, in fact, “was the proprietor” – a good faith belief was not enough to prevent a design being
removed from the Register if the registered proprietor was not in fact the true owner84 - though
arguably it was enough to be the equitable, not the legal, owner at the time of filing.85 However, this
requirement was removed in 2014,86 with the apparent effect that any person could be the applicant.
Before grant, the IPO can in principle refuse an application on proprietorship grounds if:87

 It is made by someone who is not the proprietor of the corresponding unregistered design
right,88 or
 It is made by someone who is not the owner (or assignee) of the foreign application from
which it claims priority.89 This is also true in examination of a Hague (International) design
designating the UK.

Strangely, although the requirement that the applicant claim to be the proprietor was deleted, the
power to refuse on that basis was not90 – clearly an accident. However, if the registered proprietor is
not the true owner, the true owner (and no one else91) can after registration bring proceedings (at the
IPO or in Court) to invalidate the design,92 or (in Court) to rectify the register to take it over.93

82
CDPA 1988, s.53.
83
RDA 1949 as enacted, s.3(2).
84
Ifejika v Ifejika & Anor [2010] EWCA Civ 563 at [14].
85
Ifejika v Ifejika & Anor [2010] EWCA Civ 563 at [28].
86
IP Act 2014, s.6. The Explanatory Memorandum indicated that “This brings UK law into line with the way the
EU Regulation deals with applications for registered designs.”
87
RDA 1949, s.3A(3).
88
RDA s.3(3).
89
RDA 1949, s.14(1).
90
RDA 1949, s.3A(3) still refers to s.3(2).
91
RDA 1949, s.11ZB(5).
92
RDA 1949 s.11ZA(2).
93
RDA 1949 s.20.
6.2 Registration of Assignments and other transfers at the UK IPO
The RDA indicates that anyone acquiring a UK RD (or an interest in one), is obliged to register their
title,94 though the currently registered proprietor can also do so.95 In fact, there are no apparent
penalties for non-registration, but the Act refers throughout to the privileges of the registered
proprietor,96 and registration confers several specific benefits.

 Firstly, registration of title is prima facie proof of ownership97 and an unregistered instrument
can only be admitted into Court proceedings with the permission of the Court.98
 Secondly, the registered proprietor will be the party recognised by IPO in proceedings before
it.
 Thirdly, the registered proprietor (and anyone else with a registered interest) has some
protection against later transactions, which are subject to such registered interests;99
 Fourthly, the registered proprietor is the person who can bring infringement proceedings.100
 Fifthly, registration of an assignment or licence also carries a licence under corresponding
copyright (see above, 5.3).

6.3 International Design Applicants

The Hague Agreement (Geneva Act) is a closed system – it can only be used by applicants with the
necesssary connection to a Contracting Party (a country, or a region such as the EU). This means:

 being a national of;

 having a habitual residence in;
 having a domicile in; or
 having a real and effective industrial or commercial establishment in:

a State that is a Contracting Party, or is a member of an intergovernmental organization (like the

EUIPO) that is a Contracting Party. If there are joint applicants, they all need to be entitled to apply
through one of these connections. The application form DM/1 requires the applicant(s) to explain the
basis of their entitlement to file.

Where priority is claimed, then as for the UK the applicant also needs to be the same as, or successor
in title to, the applicant for the priority application. WIPO does not examine this issue, but national
Offices which examine may do so: the UK can refuse an application if the applicant is not the successor
in title of the priority applicant.101

94
RDA 1949 s.19(1) “he shall”.
95
RDA 1949 s.19(2).
96
Defined in RDA 1949 s.44 as “the person or persons for the time being entered in the register of designs as
proprietor of the design”.
97
RDA 1949 s.17(8).
98
RDA 1949 s.19(5).
99
RDA 1949 s.15B(2).
100
RDA 1949 s.24A(1).
101
RDA 1949 s.3A(3) as amended by The Designs (International Registration of Industrial Designs) Order 2018
SI 2018 No 23.
Contracting States can specify that only the designer can be the applicant for that State, and/or that
the designer must be named in the application. A few have done so.102 In such cases, the application
form contains a statement that “Where the person identified as the creator is a person other than the
applicant, it is hereby stated that the present international application has been assigned by the
creator to the applicant.”103

Where the US is designated, it is desirable to file Annex 1 with Form DM1, which is a sworn declaration
by the designer (“inventor”) indicating that he authorises the filing, or on his behalf indicating the
designer and signed by the applicant as representative, legal or equitable owner of the design.

6.4 Registration of Assignments and other transfers at WIPO

Changes in proprietor can be recorded at WIPO on Form DM/2. The assignment can be “partial” in
the sense that:

 Ownership can be assigned to different people in respect of different designations, and/or

 Where the registration contains multiple designs, they can each be separately assigned.

The change is notified to WIPO, who do not require details of the mechanism by which the transfer
took place and do not enquire into it. The request to register the change can be made by the currently-
registered proprietor (assignor). It can also be registered by the new proprietor (assignee), but only if
accompanied by the signature of the current proprietor (assignor), or attested by a Court or other
competent authority of the currently-registered proprietor’s (assignor’s) State.

However, it is important to note that any new proprietor has to have suitable entitlements in the same
way as an applicant would have. WIPO will not register any change to a new proprietor who lacks an
entitlement. This makes it difficult for groups to use IP holding companies in tax havens (many of
which are not parties to the Hague Agreement (Geneva Act) to hold their International Designs.

7 Terms in Design-Commissioning Contracts

Many designs are commissioned from independent designers or firms of designers. There is no single
standard contract suitable for commissioning designs, but some issues arise regularly enough to
require mention, and some design .

The core of a design commissioning contract includes:

 The client’s specification or brief to the designer which the delivered design must meet;
 The designers delivery process (delivery date, acceptance process by the client); and
 The payment terms.

Where the IP terms are explicit, it is likely that buying outright ownership of the design rights will cost
more than buying a bare licence to use the design.

Intellectual property may not explicitly be dealt with. If not, then it is necessary to imply intellectual
property terms into the contract. These usually involve at least a non-exclusive licence to use the
delivered design – why else would the client pay for it?104 In some cases, a licence is not enough, and

102
Finland, Ghana, Hungary, Iceland and Mexico. The US also requires indication of the designer.
103
Form DM/1 Item 11.
104
See for example the discussion of the authorities in MGN v Grisbrook [2010] EWCA Civ 1399, [2011] ECDR 4.
ownership will be implied. That would be the case where, for example, the deliverable was to be a
new trade mark of the client,105 with the necessary implication that the client should be able to stop
imitators.

It is also necessary to be clear which designs are being bought, and which are licensed. For example,
a contract may specify that the designer should deliver several candidate designs, from which the
client can accept one. In that case, the rights assigned are usually only those in the accepted design.

Or a delivered design may be based substantially on the designer’s background designs existing before
the commission, and/or developed during the commission. The rights assigned are again usually only
those in the accepted design, though it would usually be necessary to imply a licence to use the
background designs to the extent that they are reproduced in the accepted design.

A normal provision is that the rights in the design are only assigned to the client when the contract is
complete, the deliverable design has been accepted, and payment has been made in full. If the
contract comes to an early or unhappy end, the client will not have acquired the rights, in law at least.

Clients may seek reassurance that the design will not infringe third-party intellectual property rights.
The value of any warranties or indemnities in the contract will depend on the resources of the
independent designer, but it is often the case that the designer or design firm is too small, compared
to the client, to be good for the client’s losses if the design should infringe third-party rights, and rare
for designers to carry professional indemnity insurance. Nonetheless, a contract term that the
designer shall not copy others has some value if the client later wishes to show “innocence” in
infringement proceedings.

Where the designer is famous, it may be necessary also to consider:

 Exclusivity, for example for a season or a year, during which the designer will not work for
competitors;
 Right (or obligation) to use the designer’s name; and
 Quality and/or marketing control, so that for example a fashion designer is not associated with
low-quality clothing, or low-end channels such as supermarkets.

© David Musker

23 November 2020

105
As in Griggs v Evans [2005] EWCA Civ 11