The short answer
Under Section 20 of the Bangladesh Industrial Design Act, 2023, the owner of a registered design can licence a third party by agreement. The licence must be in writing, signed by the parties and recorded with the Director General. Until it is recorded, it creates no rights against third parties (Section 20(5)). If the design is owned jointly, a co-owner who is not a party must consent in a signed document (Section 20(6)). If the registration is cancelled, the licence ends (Section 20(7)).
What a valid, recorded licence needs
Write and sign
- The licence agreement must be in writing and signed and executed by the parties (Section 20(2)).
Record it
- The licence is recorded in the prescribed way (Section 20(3)). Any interested party can ask the Director General to record it (Section 20(5)).
File the proof
- With the application, file either a copy of the licence showing the parties and the rights licensed, certified by the relevant public authority, or a certified statement about the licence signed by the registered owner and the licensee (Section 20(4)).
Co-owners
- If a co-owner is not a party to the licence, it will not be recorded unless that co-owner consents in a signed document filed with the Director General (Section 20(6)).
Risks to plan for
- Unrecorded licence: it creates no right against third parties until recorded (Section 20(5)).
- Cancellation of the design: the licence stops having effect, and the parties can recover money paid under it in whole or in part, unless the payer benefited from using the licence in good faith (Section 20(7)). Add a clause that says what happens to fees paid.
- Rules: the type of licence, recording, cancellation and the licensee's rights are further set by the Rules (Section 20(8)). Check the current Design Rules before you sign.
The Act does not say whether a licensee may sub-license. Say so in the agreement.
Design licence questions
Is a private agreement enough?
No. It must be in writing, signed and recorded with the Director General (Section 20).
What happens if I do not record it?
It creates no rights against third parties (Section 20(5)).
Can the licensee sub-license?
The Act is silent. State it in the licence.
What if the design is cancelled?
The licence stops, and money paid can be recovered unless the payer used the licence in good faith and benefited (Section 20(7)).
What if the design has several owners?
A co-owner who is not a party must consent in a signed document (Section 20(6)).
Need help with a registered design?
SUPREMEiP® handles design renewals, assignments, licences and cancellations in Bangladesh. Tell us your registration number.
