Industrial Property Law

Any act amending or transferring the rights attached to a registered design is enforceable against third parties only if it has been entered in the national register of designs and models (Art. L. 513-3, para. 1, IP Code) . Entry in the national design register is made at the request of one of the parties to the transaction or, if he or she is not a party to the transaction, at the request of the  …

Enforceability against third parties

Any act amending or transferring the rights attached to a registered design is enforceable against third parties only if it has been entered in the national register of designs and models (Art. L. 513-3, para. 1, IP Code) . Entry in the national design register is made at the request of one of the parties to the transaction or, if he or she is not a party to the transaction, at the request of the proprietor on the date of the application. A registration may only be made if the person indicated in the deed as the proprietor of the design registration prior to the modification resulting from the instrument is registered as such in the national register of designs (Art. R. 512-15 IP Code).

This means that an exclusive or non-exclusive licensee or transferee can only bring an infringement action once the transfer of ownership has been published. However, the licensee is entitled to intervene in infringement proceedings initiated by the owner of the design even if the license has not been entered in the national register of designs and models, in order to obtain compensation for his own harm (Art. L. 513-3, para. 3, IP Code). In addition, the Law of 20 October 2007 added to Article L. 521-2 of the Intellectual Property Code, paragraph 2, the right of the exclusive licensee to bring an infringement action. While, in principle, civil action for infringement is brought by the owner of the design, the beneficiary of an exclusive exploitation right may, unless otherwise stipulated in the license agreement, bring an action for infringement if, after formal demand, the owner of the design does not take such action.

In addition, prior to registration, an act is enforceable against third parties who have acquired rights after the date of the act, but who were aware of the act when they acquired their rights (Art. L. 513-3, al. 2, IP Code). Consequently, if a proprietor successively transfers his/her rights to two persons, ownership of the title belongs to the one who first registers the transfer agreement in the National Designs Register, unless he or she was acting in bad faith at the time of the transfer.

Nancy, October 31, 2016, LawLex202200009260JBJ; CA Paris, 26 January 2016, LawLex202100002895JBJ,

Industrial Property Law

492. Enforceability against third parties

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492. Enforceability against third parties

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise