Section 42
of Industrial Designs Order, 1999
Section 42
(1)
Where an order is made under section 41 that a registered industrial design shall be transferred from any person or persons (the old owner or owners) to one or more persons
(whether or not including an old owner), then, except in a case falling within subsection (2), any licences or other rights granted or created by the old owner or owners shall, subject to section 32 and to the provisions of the order, continue in force and be treated as granted by the person or persons to whom the industrial design was ordered to be transferred (the new owner or owners).
Incorporating amendments until S 3/2020
(Clean version) Norhasnani/fiqah/Karimah_as of 8th June 2020
32
BLUV as at 13th February 2020
(2)
Where an order is so made that a registered industrial design shall be transferred from the old owner or owners to one or more persons (none of whom was an old owner) on the ground that the industrial design was registered in the name of a person not entitled to be registered as an owner, any licences or other rights in or under the industrial design shall, subject to subsection (3) and to the provisions of the order, lapse on the registration of that person or those persons as the new owner or owners of the industrial design.
(3)
Where an order is so made that a registered industrial design shall be transferred as mentioned in subsection (2) and, before particulars of the reference resulting in the making of the order are entered in the Register, the old owner or owners or a licensee –
(a)
does in good faith an act which would have constituted an infringement of the industrial design if particulars of the reference had been registered at the time the act was done; or
(b)
makes in good faith effective and serious preparations to do such an act, the old owner or owners or the licensee shall on making a request to the new owner or owners within the prescribed period be entitled to be granted a licence, but not an exclusive licence, to continue to do the act or, as the case may be, to do the act.
(4)
Any such licence shall be granted for a reasonable period and on reasonable terms.
(5)
The new owner or owners of the industrial design or any person claiming that he is entitled to be granted any such licence may refer to the court the question whether that person is so entitled and whether any such period is, or any such terms are, reasonable, and the court shall determine the question and may, if it considers it appropriate, order the grant of such a licence.
Incorporating amendments until S 3/2020
(Clean version) Norhasnani/fiqah/Karimah_as of 8th June 2020
33
BLUV as at 13th February 2020
Licences granted by order of court.