IP = Personal property so can be assigned to 3rd parties and forms part of owner’s estate
upon death
Assignment = outright transfer of property i.e. assignor parts with ownership
Rights in Passing-off and breach of confidence = NOT property so cannot be assigned
Can in principle assign a share in IP – IP becomes jointly owned by assignee and assignor
Joint ownership best avoided in practice – creates new layers of logistical complexity for
joint owner who wishes to exploit or enforce rights
o Waivers/consents may have to be sought from other owner for property to be dealt
with freely
Oral assignment or agreement to assign will NOT effect transfer of legal title to asset
o Takes effect in equity only – equitable assignee has right to require assignor to
execute legal assignment
Once assignment of registered right executed, assignment itself must be registered so new
owner appears on register – s.25(2)(a) TMA / s.19 RDA / s.33 PA
o In interests of assignee to get it registered ASAP
o Failure to register = not effective against another person acquiring conflicting interest
in right UNLESS that person actually knows about earlier (unregistered) assignment
Until assignee registered as owner he will face difficulties enforcing right if it is infringed
o ™ and patents – unregistered assignee may NOT claim costs in proceedings in
respect of infringements occurring between assignment and registration
s.25(4) TMA / s.68 PA
o Registered designs can only be enforced by registered proprietors s.7A(1) RDA
o Assignee cannot rely on assignment doc as evidence of ownership – s.19(5) RDA
Consequence of not registering – s.25(3)(a) transaction ineffective against a person
acquiring a conflicting interest + s.25(4) not entitled to costs if not registered within 6mos
ASSIGNING NON-PROPERTY RIGHTS
Passing off + Confidential info cannot be assigned as such – not property rights
One party may want to dispose of such rights in favour of another to achieve same effect
Passing off – Goodwill can be assigned as part of a package comprising the whole
business to which it accrues / attaches
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