Assignments and Transmissions of Designs in New Zealand

When the ownership of a registered design changes in New Zealand, it is not merely a matter of handing over the design drawings. It is a formal legal process governed by the Designs Act 1953 and the Designs Regulations 1954. Ensuring that the Register of Designs accurately reflects current ownership is critical for the enforcement and commercialization of your creative assets.

The transfer of these rights generally falls into two categories, i.e. assignment and transmission. An assignment is a transfer of rights from one party to another, typically through a contract such as a Deed of Assignment or a Sale and Purchase Agreement. Transmission, on the other hand, occurs by operation of law, such as when rights pass to an executor upon the death of an owner, or to a liquidator in the case of bankruptcy. Regardless of how the change in ownership occurs, the new owner must apply to the Commissioner to have their title officially registered.

The application process for recording title

The regulations provide a structured method for recording a change in ownership. Under Regulation 45, an application for the registration of the title of any person becoming entitled to a registered design must be made formally. This applies whether the entitlement arises by assignment, transmission, or operation of law. It also applies if a person becomes entitled to a share in a registered design or acquires an interest as a mortgagee or licensee.

The specific form used depends on who is making the application. If the person becoming entitled to the design (the assignee or new owner) is making the request, they must use Form 15. Conversely, if the application is being made by the assignor, licensor, or the party conferring the interest, they must use Form 16. This distinction ensures that the Commissioner knows exactly which party is initiating the recordal of the change.

That said, the regulations further allow for the notification of other types of documents affecting proprietorship. If there is any other document that purports to affect the proprietorship of a registered design, an application can be made in Form 17 to have a notification of that document entered in the register. This serves as a mechanism to ensure the public record is as complete as possible regarding the legal status of the design.

Mandatory Particulars and Proof of Title

Filing the application form is only the first step. To prevent fraudulent or erroneous transfers, the regulations impose strict requirements regarding the particulars that must be furnished. An application under Regulation 45 must contain the name, address, and nationality of the person claiming to be entitled to the design. That said, it must also include full particulars of the instrument, if any, under which the title is claimed or given. This means the Intellectual Property Office requires a clear legal trail showing how the rights moved from Party A to Party B.

The Commissioner requires substantive proof before altering the register. Regulation 46 dictates that an official or certified copy of any instrument or other document referred to in the application must be produced. If the document is a matter of record in New Zealand, this official copy must be produced to the Commissioner with the application. For any other document, the original must generally be produced to the Commissioner along with a certified copy that will be filed for the Office’s records. This ensures that the Commissioner acts only on verified legal documents when transferring valuable property rights.

Managing Mortgages and Licenses

Design rights are often used as financial instruments or commercial tools through licensing. The Designs Regulations recognize this and provide mechanisms for recording interests that fall short of full ownership, such as those of a mortgagee (a lender taking security over the design) or a licensee (a party authorized to use the design).

Just as these interests can be entered onto the register, they can also be removed when they no longer apply. Regulation 48 addresses the cessation of interest. If a person’s name is entered in the register as a mortgagee or licensee, they may apply to have a note entered in the register stating that they no longer claim to be a mortgagee or licensee. This application is made using Form 18. This procedure is vital for clearing the title of a design, for example, when a loan has been repaid and the security interest over the design needs to be discharged.

Altering Ownership Details Without Assignment

Not every update to the register involves a transfer of ownership. Often, the owner remains the same, but their details change; for example, a company might change its name or move its headquarters. Regulation 49 allows the registered proprietor of a design to apply for the alteration of their name, nationality, address, or address for service entered on the register.

This application is made using Form 19 (for name or nationality) or Form 20 (for address). It is important to note that the Commissioner exercises oversight here as well. Before acting on a request to alter a name or nationality, the Commissioner may require such proof of the alteration as they think fit. Only if the Commissioner is satisfied that the request may be allowed will they cause the register to be altered. This prevents accidental changes that could obscure the true identity of the proprietor.

Dealing with Estates and Deceased Applicants

The regulations also provide specific procedures for handling design rights when an applicant or owner passes away. If an applicant for the registration of a design dies after the date of their application but before the registration is effected, Regulation 21 allows the Commissioner to amend the application. Upon being satisfied of the applicant’s death and the ownership of the design, the Commissioner can enter the name, address, and nationality of the person owning the design in place of the deceased applicant.

That said, Regulation 51 provides a mechanism to simplify administration in certain cases. An application can be made under section 41 of the Act for leave to dispense with the production of probate or letters of administration. This application is made using Form 22 and must be supported by evidence as required by the Commissioner. This provision can significantly streamline the transfer of design rights in the context of small estates or complex probate matters.

Voluntary Cancellation

There are circumstances where a proprietor may wish to voluntarily surrender their rights, perhaps to settle a dispute or because the design is no longer commercially relevant. Regulation 50 provides that where the registered proprietor of a design desires to cancel his registration, they shall make the application in Form 21. This acts as a formal request to remove the design from the register, terminating the monopoly rights.

Why Professional Management Matters?

Recording an assignment or transmission is not a mere formality but it is a legal necessity that establishes your right to enforce your intellectual property. Failure to properly record a transfer can lead to significant difficulties in litigation, as the “owner” on the register may not match the owner in reality. That said, the specific evidentiary requirements such as the production of certified copies and the correct use of prescribed forms like Form 15 or 16, can be pitfalls for the inexperienced.

Our firm acts as your agent in these matters. We prepare the necessary instruments of assignment, ensuring they meet the “full particulars” requirement of Regulation 47. We manage the filing process, handling the certified copies and forms required by the Commissioner, and ensure that the register accurately reflects the commercial reality of your design portfolio. Whether you are acquiring a new design or licensing your own, we ensure the paperwork is compliant, securing your rights for the future.

Contact us today for a free consultation.