Section 8 of The Designs Act, 2000
Power of Controller to make orders regarding substitution of application, etc.
- (1)If the Controller is satisfied on a claim made in the prescribed manner at any time before a design has been registered that by virtue of any assignment or agreement in writing made by the applicant or one of the applicants for registration of the design or by operation of law, the claimant would, if the design were then registered, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the design or of that interest, the Controller may, subject to the provisions of this section, direct that the application shall proceed in the name of the claimant or in the names of the claimants and the applicant or the other joint applicant or applicants, accordingly, as the case may require.
- (2)No such direction as aforesaid shall be given by virtue of any assignment or agreement made by one of two or more joint applicants for registration of a design except with the consent of the other joint applicant or applicants.
- (3)No such direction as aforesaid shall be given by virtue of any assignment or agreement for the assignment of the benefit of a design unless--
- (a)the design is identified therein by reference to the number of the application for the registration; or
- (b)there is produced to the Controller an acknowledgement by the person by whom the assignment or agreement was made that the assignment or agreement relates to the design in respect of which that application is made; or
- (c)the rights of the claimant in respect of the design have been finally established by the decision of a court; or
- (d)the Controller gives directions for enabling the application to proceed or for regulating the manner in which it should be proceeded with under sub-section (5).
- (4)Where one of two or more joint applicants for registration of a design dies at any time before the design has been registered, the Controller may, upon a request in that behalf made by the survivor or survivors, and with the consent of the legal representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone.
- (5)If any dispute arises between joint applicants for registration of a design whether or in what manner the application should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it should be proceeded with, or for both those purposes, as the case may require.
Summary
- If a claimant shows they are entitled to a design or a share of it due to a written agreement, assignment, or law, the Controller can direct the pending application to proceed in the claimant's name.
- For joint applications, such a direction cannot be made based on an assignment by one joint applicant without the consent of the other joint applicants.
- An assignment agreement must identify the design by its application number, have a written acknowledgment from the assignor, or have the claimant's rights established by a court.
- If a joint applicant dies before registration, the Controller can let the application proceed in the survivors' names, provided the deceased's legal representative consents.
- If joint applicants have a dispute about how to proceed, the Controller can hear them and direct how the application should go forward.
Practical examples
FAQ
1. What happens if one of the joint applicants dies before the design is registered?
The Controller can direct the application to proceed in the name of the surviving applicants, but this requires the consent of the deceased person's legal representative.
2. How must the design be identified in an assignment agreement for a pending application?
The design must be identified by the application number, or there must be a written acknowledgment from the assignor that the agreement relates to that specific pending design application.
3. What if joint applicants have a disagreement on how to proceed with their application?
Any of the joint applicants can apply to the Controller in the prescribed manner. The Controller will give all parties a chance to be heard and then issue directions on how the application will proceed.
Test yourself
1.Under Section 8 of The Designs Act, 2000, if one of two joint applicants assigns their interest to a third party before registration, what is required for the Controller to direct that the application proceed in the claimant's name?
2.Under Section 8 of The Designs Act, 2000, what must be done if joint applicants have a dispute regarding how to proceed with a pending registration application?
3.Under Section 8 of The Designs Act, 2000, which of the following is NOT a valid basis for the Controller to recognize an assignment of a pending design?
4.Under Section 8 of The Designs Act, 2000, if a joint applicant dies before registration, who must consent to let the application proceed in the name of the survivors alone?