s.42General provisions as to rights of licensees in case of infringement
42
Section 42Part 5 — NATURE OF REGISTERED MARK AND LICENSING

General provisions as to rights of licensees in case of infringement

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This section applies to a licensee in relation to infringement of a registered trade mark but does not apply where there is a right to bring the proceedings in the licensee's own name.
A licensee is entitled, unless the licence provides otherwise, to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects the licensee's interests.
Where a proprietor — (a) refuses to proceed in accordance with subsection (2); or (b) fails to do so within two months after being called on, proceedings may be brought in the licensee's own name as if the licensee were the proprietor.
refuses to proceed in accordance with subsection (2); or
fails to do so within two months after being called on,
Where infringement proceedings are brought by a licensee by virtue of this section, the licensee may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant but this does not affect the granting of interlocutory relief on an application by a licensee alone.
A proprietor who is added as a defendant pursuant to subsection (4) shall not be made liable for any costs in the action unless the proprietor takes part in the proceedings.
In infringement proceedings brought by the proprietor of a registered trade mark, any loss suffered or likely to be suffered by licensees shall be taken into account and the Court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of the licensees.
This section applies in relation to an exclusive licensee to the extent that the exclusive licensee has the rights and remedies of an assignee as if the exclusive licensee were the proprietor of the registered trade mark.

Defined Terms

licenseeinfringementexclusive licenseeassignee

Referenced By