Designs Licenses & Assignments
Tanzania Attorneys for Design Licenses and Assignments
While there is no formal procedure for granting or recording licenses with respect to designs in Tanzania, designs registered with the African Regional Intellectual Property Organization (ARIPO) or the UK Patent Office for use in Tanzania can be licensed with official authorization. ARIPO-registered designs and designs registered in the United Kingdom can be assigned subject to recordation as well, and designs also may be assigned and transferred locally in Zanzibar.
Licensing of Designs Registered with ARIPO
Designs registered with ARIPO can be licensed by the registrant. Such licenses can be either exclusive or non-exclusive; however, in either case the owner of the registered design must guarantee that it will not grant rights to any third party that could impede or limit the licensee’s exploitation of the licensed design. If the registered owner grants an impeding or limiting right, then the licensee has the right to terminate the license agreement at its option, with such termination to be effective immediately.
A license for a design registered with ARIPO will be exclusive only if such exclusivity is expressly stipulated in the license agreement. Similarly, while design licenses generally do not include the right to grant sub-licenses, sub-licensing may be permitted if authorized by the licensor.
If the registration for a licensed design is cancelled with retroactive effect due to lack of novelty or individual character, or because it does not otherwise qualify for registration, the licensee may claim a refund only for royalties paid which were not covered by the profits the licensee derived from its exploitation of the design.
Design owners generally do not have the exclusive right to use their designs for non-commercial private, experimental or educational purposes; as a result, obtaining a license to use a registered design for these purposes may be unnecessary. However, these can be complicated issues, and to avoid infringing on a registered design owner’s rights it is best to speak with a qualified intellectual property attorney before making any use of a registered design.
Requirements for Recording Design Licenses and Assignments
Licenses and assignments for designs registered through ARIPO must be recorded in order to be effective against third parties. The documents that must be filed in order to record a design license or assignment with ARIPO are:
- A deed of assignment signed by assignor and assignee, not legalized; and,
- A power of attorney signed by assignee, not legalized.
Licensing and Assignment of Copyrights Related to Industrial Designs
It is important to note that in some cases designs can be protected both by a design registration and under Tanzanian or international copyright law. As a result, parties obtaining licenses and assignments for registered designs must take care to ensure that they have acquired the necessary copyrights as well.
Lexglobe LLP | Lawyers for Licensing and Assignment of Design Rights in Tanzania and Abroad
At Lexglobe LLP, we assist parties in Tanzania, Zanzibar and other countries across Africa in all matters pertaining to the licensing and assignment of registered designs. To speak with an attorney about your license or assignment, please call 255 22 212 4127 or contact us online today.