Ownership and Incidents of Ownership of Designs

The rules for determining ownership of designs are similar to those found in copyright law. To qualify for the design right, the legal person must be a qualifying individual, in a qualifying country or a qualifying State. Qualifying individuals include British citizens, citizens of a qualifying country and companies incorporated in the UK or the EEC.

The Owner of the Design

The designer of a design the person who created it, which necessarily means that person who made it. The first owner of the design is the designer, or if they are employed, their employer. This operation of the law may be readily changed by a written, rather than an oral contract. An exception to the rule is where the design has been created in ‘pursuance of a commission’. In that case, that person is the first owner of the design. A condition precedent for a commission to exist is that a contract must have been in place prior to the creation of the design. Generally speaking, the contract must be for value, and not gratuitous.

Affect of Employment Contracts

The generally accepted meaning of employment is a relationship where the employee has agreed that in return for some form of payment, the employee will provide their own work and skill in the performance of their services; they will be subject to another’s control of a sufficient degree to constitute an employer; and the other terms of contract are not inconsistent with the type of provisions found in employment contracts. If the contract falls within this description, the work must still have been created in the course of the employment under that contract.

Design Rights as Personal Property

As designs are personal property, they may be mortgaged as security; licensed for exploitation and in each case registered with the Designs Registry of The Patents Office to formalise the security on the Register. Registering the security or the licence is a useful device to mitigate against claims to the property to a bona fide purchaser for value and without notice, which is a key principle in contesting and determining rights to the design. The ownership of a design application or registration may also be transferred to another legal entity.