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 (3rd edition)

Malaysia Small Flag Malaysia

Not mandatory.

Norway Small Flag Norway

There is no requirement to register a licence of an intellectual prop¬erty right pursuant to Norwegian law, but it is recommended. Such registrations are done with NIPO. Also, registration gives legal protection in case of licensing of the same right to multiple parties or bankruptcy proceedings.

Singapore Small Flag Singapore

Recordal of a licence is not mandatory, but is recommended. For registered rights, until an application is made to record a licence, it is ineffective against a person acquiring a conflicting interest in that right in ignorance of the licence. For some rights, the licensee will also not be entitled to certain rights or remedies which accrue after the date of the licence.

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;

3)      Recordal application stating:

               I)        Names, addresses and nationalities of both parties;

              II)        Details of the invention; and

             III)        Payment of official fees.

The license agreement will not have legal effects against third parties, unless it is recorded.

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;

3)     Recordal application stating:

               I)        Names, addresses and nationalities of both parties;

              II)        Details of the trademark; and

             III)        Payment of official fees.

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

Trade names

Slogans

Trade dress

Certification marks

Appellations of Origin

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

N/A

Geographical Indications

Copyright and other rights

IP right

Requirements

Consequence of failing to register

Copyright

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

2)     Identifications of the parties or their representatives (for companies);

3)     Spanish translation;

4)     Recordal application form; and

5)     Payment of official fees.

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)     Identifications of the parties or their representatives (for companies);

3)     Spanish translation;

4)     Recordal application form; and

5)     Payment of official fees.

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

Plant varieties

No need to register.

N/A

China Small Flag China

Yes, but it is advisable not mandatory, and not influence the effectiveness of a license contract.

Ecuador Small Flag Ecuador

Yes, the license agreement must be presented before the competent authority- SENADI-, who will check if its clauses are not illegal.

South Africa Small Flag South Africa

The fact of the license should be recorded at the Patent Office for it to be effective as against 3rd parties.

Cyprus Small Flag Cyprus

It is imperative that the grant of a (compulsory) license for a patent, trade mark, certification mark, design right be recorded as outlined above in order for these to be actionable.

Japan Small Flag Japan

An ordinary license (including an exclusive ordinary license) to a patent, utility model, design, trademark, semiconductor circuit layout right or a breeder’s right or a license to a copyright cannot be registered.

As for the registration of an exclusive registered license, see the answer to #13.

Switzerland Small Flag Switzerland

The grant of licences to collective marks are only valid if entered in the trademark register. Otherwise, there is no requirement to register a license to an IP right. However, a non-registered license is not enforceable towards third parties who acquire the licensed right (including in the framework of bankruptcy proceedings) in good faith.

Brazil Small Flag Brazil

Recordal is not mandatory, but it makes the contract effective before third-parties; enables remittance of capital abroad and allows tax deductibility.

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.

Israel Small Flag Israel

See answer to (13) above.

Germany Small Flag Germany

There is no requirement to register a licence of any German intellectual property rights. Registration is not required for a licence to be effective against third parties.

France Small Flag France

Under French law, registration is not required for the validity of licence agreements.

However, enforcement of rights against third-parties is subject to registration. Indeed, a licence, whether exclusive or non-exclusive, may only give rights against third parties or against a later transaction concerning the same rights once registered.

In this way, as for assignment, the license shall be registered with the French Office by filling a specific form together with a copy of the license agreement, the relevant clauses or a confirmatory license signed by both party. If the license has been drafted in a foreign language, a French translation must be provided.

If the licence is not registered, the licensee (exclusive or non-exclusive) may join the infringement action initiated by the owner of the IPR in order to obtain compensation for his own prejudice.

For:

• patents: see Article L.613-9 of the IPC;
• supplementary protection certificates: see Article L.611-2 of the IPC;
• utility certificates: see Article L.611-2 of the IPC;
• plant varieties : see Article L.623-14 of the IPC;
• designs : see Article L.513-3 of the IPC;
• trademarks: see Article L.714-7 of the IPC;
• collective marks: see Article L.714-7 of the IPC;
• semiconductors: see Article L.622-7 of the IPC
• copyrights: no registration of the licence is required.

It should be noted however that the Trademark European Directive together with recent case-law from the European Court of Justice tend to widen the conditions of the licensee’s action.

Italy Small Flag Italy

Please see answer to question n.12.

Greece Small Flag Greece

Recordal of an IP license is necessary in order for the licensee to claim and enforce its rights against third parties.

Peru Small Flag Peru

(a) Inventions:

Patents, industrial designs, utility models:

License of registered elements:

It is required to file a copy of the contract or written agreement with certain date and signatures duly legalized, in which the exploitation licence is recorded, which must specify the following:

  • Names or company name of the contractors
  • Register of the items matter of license.
  • Delimitation of the territory comprising the license
  • Mention of the exclusive nature of the license to be the case
  • Term of validity of the license
  • Number and validity of the certificate or certificates in which it is registered.

If there is no express indication of the list of claims, it will be presumed that the license is for all of them.

If there is no indication of the delimitation of the territory, it shall be presumed to cover the entire national territory.

If the period of validity has not been indicated, it will be presumed that it coincides with the term of the registered element.

(b) Trademarks:

  • Document, indicating the trademark, class, certificate or file number. The document must contain the information of both the licensor and the licensee, as well as the name of the company / name of the person, identification and position of the person in the company.
  • The license document must have the signature of the licensor and the licensee, and be sent with the corresponding legalization and apostille.

Likewise, in case the owner of the trademark is a Natural Person, an Affidavit of own good of free disposition, signed in original, or consent of the spouse, if applicable, must be attached to the Use Licenses.

(c) Copyrights

1. Fill out a format, recording the following information:

  • Data of the applicant, number of Single Taxpayers' Register, if applicable, and address in which the notifications will be made
  • Type of act or contract to be registered
  • Object and duration of the act or contract.
  • In the case of contract, indicate the data of the parties involved.

2. Copy of the documents accrediting the License

3. If applicable:

  • Copy of the documents that prove the existence of the applicant legal entity.
  • The powers that were necessary.
  • In the case of documents prepared in a foreign language, they must be translated into Spanish.

Malta Small Flag Malta

For all registered IPRs, Maltese law requires that a licence is registered in order to have effect vis-à-vis 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. In Patent, any change in the title or interest in a patent must be recorded in the prescribed format before the Controller of Patents. In design, the procedure for recordal of the licence agreement is the same as that for the assignment agreement.

Saudi Arabia Small Flag Saudi Arabia

Under the Saudi Trademark Law, the recordal of a licence is not mandatory, and it may or may not be recorded. Since recordal is not mandatory and the law does not clarify legal consequences of non-recordal, there is no downside of non-recordal.

In case of Patent rights, recordal of license is mandatory. A license will not be effective vis-à-vis third party unless recorded with Saudi Patent Office.

Australia Small Flag Australia

No. Although security interests in personal property, including security interests in relation to IP and IP licences, can be registered on the Personal Property Securities Register (PPSR). Claimed interests in registered IP may also be recorded on the IP Registers, but are of no legal effect.

United States Small Flag United States

There is no requirement to register a license of patents, trademarks, or copyrights.  Moreover, recordation of such a license will have no legal effect.

Updated: September 12, 2019