—(1) After a design is registered, any person having or claiming an interest in the design may apply to the Court to determine —
who is the true owner of the design;
whether the design should have been registered in the name of the person in whose name it was registered; or
whether any right in the design should be transferred or granted to any other person,
and the Court shall determine the question and may make such order as it considers appropriate to give effect to the determination.
(2) Without prejudice to the generality of subsection (1), an order referred to in that subsection may contain one or more of the following directions:
that the name of the applicant be entered in the Register as the owner or one of the owners of the design (whether or not to the exclusion of any other person);
that the transaction by virtue of which that person has acquired any right in the design be registered;
that a licence for the use of the design be granted; and
that the registered owner of the design or any person having any right in the design carry out such act as the Court considers appropriate to give effect to any directions in the order.
(3) If any person to whom a direction referred to in subsection (2) (d) was given fails to comply with the direction within 14 days after the date of the order, the Court may, on application made to it by any person in whose favour or on whose application the order was made, authorise the second-mentioned person to do that thing on behalf of the person to whom the direction was given.
(4) If an application under this section is made after the end of the period of 2 years from the date of issue of the certificate of registration referred to in section 18 (c) in respect of the design in question, no order shall be made under subsection (1) transferring any right in the design from the registered owner to any other person on the ground that the registered owner was not entitled to be registered as the owner, unless it is shown that the registered owner knew at the time of the registration or of the transfer of the design to him, as the case may be, that he was not entitled to be registered as the owner.
(5) The Court shall not make any order under subsection (1) unless notice of the application has first been given to —
the registered owner of the design; and
each person registered as having a right in the registered design who is not a party to the application.
[HK Designs, s. 41; Patents 1995 Ed., s. 47]
—(1) Where an order is made under section 23(1) that a registered design be transferred from any person or persons (referred to in this section as 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 34 and to the provisions of the order, continue in force and be treated as granted by the person or persons to whom the design is ordered to be transferred (referred to in this section as the new owner or owners).
(2) Where an order is so made that a registered 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 design was registered in the name of a person not entitled to be registered as an owner), any licences or other rights in the design shall, subject to the provisions of the order and subsection (3), lapse on the registration of that person or those persons as the new owner or owners of the design.
(3) Where an order referred to in subsection (2) is made 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 —
carried out in good faith an act which would have constituted an infringement of the design if particulars of the reference had been registered at the time the act was done; or
made in good faith effective and serious preparations to carry out 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) A licence under subsection (3) shall be for a reasonable period and subject to reasonable terms.
(5) The new owner or owners of the registered design or any person claiming that he is entitled to be granted a licence under subsection (3) may apply to the Court for a determination of whether —
that person is so entitled; or
the period or terms of any such licence granted are reasonable.
(6) The Court shall make the determination under subsection (5) and may —
order the grant of a licence on such terms and for such period as it considers reasonable; or
vary the period or terms of the licence.
[HK Designs, s. 42; Patents 1995 Ed., s. 48]
25. Any order made under section 23(1) or 24(6) for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the registered owner of the registered design and all other necessary parties, granting a licence in accordance with the order.
[HK Designs, s. 43]