A registered design is property. It can be sold, licensed, mortgaged and inherited, and each of those needs a written document that is then recorded on the register. The recording has a deadline, and an unrecorded document is not merely untidy — it cannot be produced in court to prove who owns the design.
Quick reference
| Form of the deal | In writing, setting out all the terms, signed |
| Recording | Application to the Controller within six months of execution |
| Extension | A further period, not exceeding six months in all |
| If not recorded | The document is not admitted as evidence of title, except by court direction |
| Fee | ₹500 or ₹2,000 for one design; ₹200 or ₹800 for each further design |
| Small-to-large transfer | The difference in fees already paid becomes payable |
What must be in writing
An assignment, a licence, a mortgage and any other interest in a registered design must be in writing, and the agreement between the parties must be reduced to an instrument embodying all the terms and conditions governing their rights. An oral licence, or a letter that refers to terms agreed elsewhere, does not satisfy the Act. The document should identify the design by registration number, the parties, the nature of the interest — assignment, exclusive or non-exclusive licence, security — and its scope, duration and consideration.
Where the transaction also covers the trademark on the product, the copyright in the underlying artwork or a patent on how the product works, each right is dealt with under its own Act, and each needs its own recording. One composite deed can do it, but it must be lodged with each office.
Recording
The person who acquires the interest applies to the Controller to have the document registered and the title entered on the register. The application is made within six months of the date of execution, and the Controller can allow a further period, but the total cannot exceed twelve months from execution. It is filed with a certified copy of the instrument and the fee.
Once entered, the register shows the assignee as proprietor, or the licensee’s interest, and the register is prima facie evidence of what it records.
Why it matters
An instrument that has not been registered is not admitted in any court as evidence of title to the design, or of any interest in it, unless the court directs otherwise. The consequence is direct: an assignee who has not recorded the assignment cannot sue for piracy, because it cannot prove it is the proprietor. A licensee whose licence is unrecorded has no standing on the register and no protection against a later assignee.
The courts can, and sometimes do, admit an unrecorded document, but that is discretionary relief in a case that should not have needed it. Record within the six months.
The fee-difference rule
Where a design was applied for or registered at the reduced fee available to natural persons, startups and small entities, and is then transferred to someone who does not qualify, the new owner pays the difference between the reduced fees already paid and the standard fees, as a condition of recording the transfer. For a design the sum is small; it is still a step in the recordal.
Licensing in practice
A design licence should say which articles and which classes it covers, the territory, whether it is exclusive, the term — which cannot outrun the fifteen-year maximum — and who is responsible for the extension fee at year ten and for enforcement. Only the registered proprietor can sue for piracy; a licensee that wants to enforce needs the proprietor to join, or an assignment. Quality control provisions matter less than for a trademark, since a design does not indicate origin, but a licensee producing poor copies still damages the product’s reputation.
Assignments from designers
The commonest gap is not between companies but between a company and the person who created the design. The proprietor of a design is the author, unless the design was made for another person for good consideration — in which case that person is the proprietor — or unless it has been assigned. An employee’s design made in the course of employment belongs to the employer on that basis; a freelance designer’s belongs to the freelancer unless the engagement says otherwise, and the company that filed the application may find it is not the proprietor. Written assignments from every designer, before filing, close the gap.
Frequently asked questions
Does a design assignment have to be in writing? Yes. An assignment, licence, mortgage or other interest in a registered design must be in writing, in an instrument setting out all the terms agreed between the parties.
How long do I have to record a design assignment in India? Six months from the date of execution. The Controller can extend the period, but not beyond twelve months in total from execution.
What happens if a design assignment is not recorded? The document is not admitted in court as evidence of title or of any interest in the design, unless the court directs otherwise. An unrecorded assignee cannot readily sue for piracy.
Can a design licence be recorded? Yes, and it should be. A licence is an interest in the design and is recorded in the same way as an assignment, with the same six-month deadline.
What does it cost to record a design assignment? ₹500 at the reduced rate or ₹2,000 at the standard rate for one design, plus ₹200 or ₹800 for each further design in the same document. If the design moves from a reduced-rate owner to a standard-rate one, the fee difference already paid on the design is also payable.
Who owns a design created by a freelance designer? The designer, unless the design was made for another person for good consideration or has been assigned in writing. A company commissioning outside design work should take a written assignment before filing.
Useful official resources
- IP India — designs — the form for registration of documents and the fee schedule
See our related notes on design fees and the design registration process, and on assigning a trademark where the same product carries both rights.
A design changing hands, or an old assignment that was never recorded? Talk to us.