Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

Intellectual Property

Singapore Small Flag Singapore

Copyright/layout-designs (topographies) of integrated circuits – No requirement.

Registered designs/patents/plant varieties/trade marks – Until an application has been made for registration of the licence, the licence is ineffective as against a person acquiring a conflicting interest in the rights in ignorance of it.

Portugal Small Flag Portugal

R: As regards the IP rights ruled by the Portuguese Industrial Property Code the licence must be registered before the Portuguese Industrial Property Institute.

The consequences of failing to register before the Portuguese Institute it’s the fact that such licence cannot be enforced against any third parties.

India Small Flag India

Trade mark: While it is not mandatory to register a license of trade mark, it is advisable to do so.

Patent: An change in the title or interest in a patent must be recorded in the prescribed format before the Controller of Patents

Design: The procedure for recordal of the licence agreement is the same as that for the assignment agreement.

Greece Small Flag Greece

Please see above.

Japan Small Flag Japan

See 13. In the case of certain types of exclusive licenses, if a license is not registered, such exclusiveness of the license does not take effect.

Mexico Small Flag Mexico

Inventions

IP right

Requirements

Consequence of failing to register

Patents

1) Original document or certified copy of the license
agreement.

2) Spanish translation (if required);

3) Recordal application stating forth:

I) Names and nationalities of both parties;

II) Invention’s details; and

III) Official fees paid.

The license agreement will not have legal effects against
third parties.

Utility models

Industrial designs

Integrated circuits

Trade secret

N/A

N/A

Brands

IP right

Requirements

Consequence of failing to register

Trademarks

1) Original document or certified copy of the license
agreement.

2) Spanish translation (if required);

3) Recordal application stating forth:

I) Names and nationalities of both parties;

II) Sign’s details; and

III) Official fees paid.

The license agreement will not have legal effects against
third parties.

Trade names

Slogans

Appellations of Origin

Since the authorization to use it is granted by the Mexican
Patent and Trademark Office, it is automatically
registered.

N/A

Copyright and other rights

IP right

Requirements

Consequence of failing to register

Copyright

1) Original document or certified copy of the assignment
agreement;

2) Parties’ IDs;

3) Spanish translation (if required);

4) Recordal application; and

5) Official fees paid.

The agreement will not be presumed valid.

Related rights

N/A

N/A

Reservation of rights

1) Original document or certified copy of the assignment
agreement;

2) Parties’ IDs;

3) Spanish translation (if required);

4) Recordal application; and

5) Official fees paid.

The license agreement will not have legal effects against
third parties.

Plant varieties

No need to register.

N/A

China Small Flag China

Unlike assignment, licence agreement registration is optional.

United Kingdom Small Flag United Kingdom

There is no mandatory requirement to register licences of IP rights under English law. However, it is prudent to do so because, until registered, the relevant transaction is ineffective against a third party who acquires a conflicting interest in the right in good faith. In relation to exclusive licences of patents and trade marks, if the licence is not registered within 6 months (or as soon as practicable thereafter), then if it were to be infringed by a third party, the failure to register in time may prevent the IP owner recovering costs in infringement proceedings.

There is no requirement to register a licence of copyright or other unregistered rights.

South Africa Small Flag South Africa

Patents and Designs
There is no general requirement that licences for patents must be registered in order to ensure their validity. However, in order for a licensee to be able to join patent enforcement litigation proceedings, for example, to claim damages, the licence must be registered on the official patent office register. The same principles apply to registered designs.

Plant Breeders’ Rights
The Registrar must be notified within 30 days of the issuance of a licence, and must be provided with a copy thereof. Failure to comply appears to have no consequences.

Trade Marks and Copyright
There is no obligation to register a licence in terms of the relevant Acts, but it is possible to record a trade mark licensee as a registered user.

Updated: June 26, 2017