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

Intellectual Property

Singapore Small Flag Singapore

Generally, the legal owner of the intellectual property rights in question will have the right to licence them to a third party. In this regard, the licence must be in writing, and must be signed by or on behalf of the grantor. Otherwise, the licence is not effective. Every person shall be deemed to have notice of a licence if the prescribed particulars of the grant of the licence are entered in the relevant register of patents, trade marks, registered designs, and plant varieties.

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

Plant varieties – No requirement.

France Small Flag France

In France, registering an assignment is not mandatory. However, enforcement of rights against third-parties is subject to the registration of the assignment.

See for:

  • patents: IPC art. L.613-9
  • designs: ICP art. L.513-3
  • trademarks: ICP art. L.714-7

Portugal Small Flag Portugal

R: As regards the IP rights ruled by the Portuguese Industrial Property Code the assignment 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 assignment cannot be enforced against any third parties.

The other rights are registered near different institutes/associations that rules such rights and the consequence is the same.

India Small Flag India

Patents: The Indian Patent Act requires that the assignment of the patent rights must be recorded in the prescribed format. To avoid any dispute regarding the ownership of the application, it is mandatory to register assignments in the Patent Office. Non-filing of assignment may lead to difficulties in enforcement of the patent right.

Trademarks: The Trade Marks Act mandates that assignment is to be recorded in the Register. To avoid any dispute regarding the ownership of the trade mark, it is mandatory to register assignments in the Trade Marks Office. Non-filing of assignment may lead to difficulties in enforcement of the trade mark right.

Copyright: in cases of registered copyright, assignee is to make an application for registration of changes in the particulars of copyright entered in the Register of Copyrights.

Designs: The Indian Design Act mandates that assignment is to be recorded in the Register if there is change in ownership., Such a request is to be filed with the Controller within six months from the date of execution of the instruments or within further period not exceeding six months in aggregate. An original/notarised copy of the instrument to be registered is required to be enclosed with the application. To avoid any dispute regarding the ownership of the application, it is mandatory to register assignments in the Patent Office. Non-filing of assignment may lead to difficulties in enforcement of the IP right.

Greece Small Flag Greece

The assignment of registered intellectual property rights and know-how (only for the contracting party that resides or has its registered seat in Greece) must be registered with the Greek Trademark Office (trade marks) or the Greek Patent Office (patents, SPCs, utility models, registered designs, know-how).

Under Greek law, the assignee cannot claim and/or enforce its rights vis-a-vis third parties, unless the assignment is registered. However, the assignee will still be able to claim unfair competition protection, even in the absence of such registration. Regardless of the registration, the assignment will still be valid between the parties.

Greek TM law (for trade marks), the Greek Codes of Civil, of Criminal and of Administrative Procedure (other IP rights and supplementary for trade marks) provide particular rules regarding the ability, requirements and procedure for assignees to enjoin potentially pending litigation. This primarily depends on whether the assignment is the result of a total legal succession (e.g. merger, acquisition) or a particular asset transfer.

As there is no copyright registry, there is also not obligation to register a copyright assignment. However, the assignment is not valid at all in the absence of a written contract. In the interest of safeguarding authors' rights, Greek copyright law provides that only the author (creator) of a work that has been the subject-matter of a non-written assignment can claim such invalidity. In practice, this means that the assignor - author (creator) can choose to enforce a non-written assignment.

Japan Small Flag Japan

In the case of failing to register an assignment of patents, utility model rights, registered trademarks or design rights, the assignment 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 assignment
agreement.

2) Spanish translation (if required);

3) Recordal application stating forth:

I) Names and nationalities of both parties;

II) Invention’s details;

III) New domicile to receive further notifications;

IV) If any, name of the new appointed legal representative;
and

V) Official fees paid.

The assignment 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 assignment
agreement.

2) Spanish translation (if required).

3) Recordal application (official form) stating forth:

I) Names and nationalities of both parties;

II) Invention’s details;

III) New domicile to receive further notifications;

IV) If any, name of the new appointed legal representative;
and

V) Official fees paid.

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

Trade names

Slogans

Appellations of Origin

N/A

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

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 assignment agreement will not have legal effects
against third parties.

Plant varieties

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

2) Parties’ complete name, nationalities and domicile;

3) Letter signed by the new owner stating that he will
maintain the characteristics of the subject plant variety;

4) Spanish translation (if required);

5) Recordal application; and

6) Official fees paid.

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

China Small Flag China

Failure to register when required will result in an ineffective assignment.

United Kingdom Small Flag United Kingdom

There are no specific requirements to register assignments of IP rights in the UK. However, registration is advisable because unless assignments are registered, they will not bind a third party who later acquires, in good faith, a conflicting interest in the right (a duplicative assignment).

If a patent or trade mark assignment is not registered within 6 months of it taking place (or as soon as practicable thereafter), then if the patent or trade mark were to be infringed by a third party, the failure to register the right in time may prevent the new owner recovering its costs of infringement proceedings.

In respect of UK registered designs, where the assignor owns both the registered and unregistered rights in a design, there is an assumption that assigning the unregistered right also assigns the registered right.

South Africa Small Flag South Africa

Patents

Unless an assignment is recorded in the register, it is not valid except as between the parties to it. Upon application being made, accompanied by proof of title of an assignment, the assignment will be recorded in the register. The application for recording must be made within six months of the event entitling the applicant to request a recording, but the Registrar may extend this time limit on application bearing the prescribed fee. In general, applications of this kind are granted as a rule.

Designs

Unless an assignment is recorded in the register, it is not valid except as between the parties to it. The Registrar will record the assignment in the register against the applicable design registration or application, on application, accompanied by the proof of title of such assignment and on payment of the prescribed fee. The application for recording must be made within six months of the event entitling the applicant to request a recording, but the Registrar may extend this time limit on application bearing the prescribed fee. In general, applications of this kind are granted as a rule.

Plant Breeders’ Rights

The holder must, within a period of 30 days from the date of transfer and on payment of the prescribed fee, advise the Registrar of Plant Breeders’ Rights of the name and address of the assignee, and furnish proof that a notice of such transfer has been served on each licensee.

Trade Marks

Section 40 of the Trade Marks Act states that the assignee shall make application to record the assignment. In the event that the application is made more than 12 months after the effective date of the assignment, the assignee shall be liable to pay penalty fees.

Copyright

No requirement to register.

UAE Small Flag UAE

Rights

Requirements for an assignment agreement to be valid

Requirement to register an assignment with the Ministry of Economy

Patents (national) and utility certificates
Designs

In writing and signed by both parties

Notarised (and Legalised where notarised outside the country)

Both registrations and applications may be assigned

YES

Patent (GCC patent filing)

In writing and signed by both parties

Notarised (and Legalised where notarised outside the country)

Both registrations and applications may be assigned

YES

Trade marks

In writing and signed by both parties

Notarised (and Legalised where notarised outside the country)

Both registrations and applications may be assigned, but assignments can only be recorded against registered marks.

YES

Copyrights & neighbouring rights

In writing and signed by both parties

Shall expressly specify the rights assigned, as well as

the period of exploitation

the purpose for which the rights are assigned and

the territory of the assignment.

The UAE Copyright law contains a provision that deems any disposal of the author's future intellectual rights in five or more future works to be null and void.

Moral rights are personal and cannot be assigned. An author may only undertake in writing not to exercise his/her moral rights in relation to a specific person or entity, provided that the agreement specifies the work(s) and specific uses to which the undertaking applies. The more detailed these provisions are, the greater the likelihood that they will, if challenged, prove valid and enforceable in court.

NO

The assignment may be registered provided that the work, the copyrights of which are being assigned, has itself been registered with the Ministry of Economy.

Updated: June 27, 2017