Managing Designs post Registration

RENEWALS (Section 43)

The due date of a design renewal is always calculated from the date of registration and is due every five years for a maximum of 25 years. A renewal payment can be made no earlier than 6 months before the expiration of the design right (i.e. the renewal due date) or not later than 6 months immediately following the expiration of the design right.

The renewal fees for designs under the Industrial Designs Act, 2001 are as follows:

Renewal - 2nd period of 5 years is €50.00

Renewal - 3rd period of 5 years is €70.00

Renewal – 4th period of 5 years is €80.00

Renewal – 5th period of 5 years is €100.00

After the maximum period of 25 years, the design will expire.

Request the recordal of a change of ownership or registration of title (Section 41, Rule 32)

Sometimes the ownership of a design may change, for example, if a business is sold or taken over by another organization.  In such cases it is possible to apply to have the change of ownership or interest recorded.

An application for the registration in the register of the title of any person becoming entitled by assignment to a published design application or a design, or a share in such an application or design, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in such an application or design, may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to the instrument by which the assignment is made.

If you are no longer the owner of a design, for example if you have sold it or assigned rights in it or you have become entitled by assignment to a published design application or a design, or a share in such an application or design, or entitled by virtue of a mortgage, licence or other instrument to any other interest in such an application or design, you or the assignor, mortgagor, licensor or other party to the instrument by which the assignment is made can apply to have the change of ownership or interest recorded.

The application must be accompanied by proof of title or in the absence of such proof you can state a case setting out the full particulars of the facts upon which the application or claim is based. Such a statement of case must be verified by a statutory declaration.  A Design Assignment form must be completed and be accompanied with the prescribed fee of €50.00 for the first design and €6.00 for each additional design on the application form.  An original or certified copy of the Deed of Assignment/Transfer Agreement/Licence Agreement/Security Interest/Merger evidencing the change of proprietorship must be submitted to support the application.

Request to record a change of name or address of proprietor (Section 27)

An application to record a change of name of the proprietor on the register must state-

(a)    The name and address of the person making the request

(b)   The number of the Design and

(c)    Particulars of the change required and a copy of documentation as proof of change of name. This must be in English, and if not, must be certified by an Agent

There is no fee to record change of name/address of proprietor.

Correction of clerical error (Section 37)

An application to correct an error on a Design application must consist of the following:

(a)    The name and address of the person seeking the correction and their interest in the design

(b)   The registration number of the design;

(c)    Exact details of the correction required, and

(d)   A statement of the reasons why the correction is desired

There is no fee required to record this change.

Request to Restore a Design (Section 44, Rule 35)

Proprietors of designs are obliged to pay a renewal fee and failure to pay this fee will result in the design being expired. A proprietor has 12 months from the date on which the design right expired to make an application for restoration, providing the following information -

(a)   the name and address of the applicant for restoration

(b)   the registered number of the design

(c)   a statement of the amount of the renewal fee due and the date by which it should have been paid

(d)   evidence that the registered proprietor took reasonable care to see that the period for which the design right subsisted was extended in accordance with Section 43 of the Principal Act.

The prescribed fee of €76.00 and the outstanding renewal fees.

Request to surrender a Design Right (Section 46, Rule 36)

If a proprietor no longer wishes to use their design, they may make an application to have the design removed from the register.  This is called surrender. There is no fee payable in respect of an application for surrender.

An application for surrender of a design should consist of:

(a)   the name and address of the registered proprietor

(b)   the registration number of the design

(c)   the class or product for which the design is registered which is the subject of the surrender notice

(d)   a certification from the proprietor that he/she is not precluded by contract or other agreement or arrangement from surrendering the design right

(e)   clarification of the name and address of each person entered in the Register as having an interest in the design and

(f)   certification that each of the persons named has been notified of the registered proprietors intention to surrender the design right at least 3 months prior to the date of the notice of the Controller and that none have objected to the surrender.