Design assignment agreement

A design assignment contract is the contract by which the owner of a registered design, or of an application for registration, transfers ownership to an assignee, in whole or in part, for a price or free of charge. It differs from a licence, which grants only a right of exploitation. The contract is governed by Articles L. 513-2 et seq. of the French Intellectual Property Code and by the general law of sale.

Formalities

The assignment must be recorded in writing, both for the parties’ security and to allow recordal. It is enforceable against third parties only after recordal in the national designs register kept by the INPI, or in the EUIPO register for a Community design. Without recordal, the assignee can neither sue third parties for infringement nor assert its rights against a second acquirer. An assignment of a Community design can only cover the whole European Union, owing to its unitary character.

Essential clauses

The contract identifies the assigned titles by number, specifies the territories and scope of the assignment, sets the price and its terms, and organises the assignor’s warranties: existence of the title, absence of undisclosed pledges or licences, absence of known challenges. The assignor warrants against eviction arising from its own acts, but a warranty of validity of the title must be expressly stipulated. The contract also settles the conduct of pending infringement actions and the fate of accrued royalties.

Cumulation with copyright assignment

In French law, a creation protected by a design is most often also protected by copyright. Assigning the design title does not carry the copyright with it: copyright assignment follows its own formalities, each assigned right having to be mentioned separately, with its scope, purpose, territory and duration. A complete design assignment therefore includes a copyright section, failing which the assignor retains competing rights. In practice, the firm drafts such contracts and handles disputes over ownership of creations, as presented on its contracts page.