Allow exclusive licensee to bring proceedings for infringement under Designs Acts

Policy ID: 
46
Status: 
On hold
Priority: 
Medium
Issue summary: 

IP legislation treats exclusive licensees of IP rights inconsistently when it comes to the ability to bring proceedings for infringement. In particular, exclusive licensees of patents, trade marks and copyrights have the right to bring proceedings for infringement under certain conditions. However, exclusive licensees of designs do not have the right to bring proceedings for infringement. This can cause problems for exclusive licensees of these rights when the owner of the right is unwilling or unable to enforce their rights, and can complicate licensing negotiations.

Amendment to the designs legislation would allow exclusive licensees of designs to bring proceedings for infringement of those rights. This was recommended for designs by the former Advisory Council on Intellectual Property in its 2015 review of the designs system. The government accepted this recommendation in May 2016.

History: 
On hold 04-Sept-2017
Comments: 

Medium priority. Issue to be considered in future, but has some complexities that will require time and consultation to work through.

See also items 19 and 47.

Tag: 
ACIP
Designs

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