On 19/06/2013,
you requested for the version in force on 19/06/2013
incorporating all amendments published on or before 19/06/2013.
The closest version currently available is that of 31/07/2005.
PART V
LICENSING
42.
—(1) A licence to use a registered trade mark may be general or limited.
(2) A limited licence may, in particular, apply in relation to some but not all of the goods or services for which the trade mark is registered.
(3) A licence is not effective unless it is in writing signed by or on behalf of the grantor.
(4) Subsection (3) may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.
(5) Subject to subsection (7), a licence to use a registered trade mark is binding on every successor in title to the grantor’s interest —
(a)
except any person who, in good faith and without any notice (actual or constructive) of the licence, has given valuable consideration for the interest in the registered trade mark; or
(b)
unless the licence provides otherwise,
and any reference in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly.
[20/2004]
(6) Every person shall be deemed to have notice of a licence if the prescribed particulars of the grant of the licence are entered in the register under section 39(1).
[20/2004]
(7) Where an application under section 39(1) is made before 1st July 2004 to register the prescribed particulars of the grant of a licence, then, unless the licence provides otherwise, the licence shall be binding on every successor in title to the grantor’s interest.
[20/2004]
(8) Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include references to a sub-licence or sub-licensee.
[UK Trade Marks Act 1994, s. 28]
43.
—(1) In this Act, an “exclusive licence” means a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence, and the expression “exclusive licensee” shall be construed accordingly.
(2) Section 42 shall apply, with the necessary modifications, to an exclusive licence.
[UK Trade Marks Act 1994, s. 29]
[20/2004]
44.
—(1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark.
(2) The provisions of this section do not apply where or to the extent that, by virtue of section 45(1), the licensee has a right to bring proceedings in his own name.
(3) A licensee is entitled, unless his licence, or any licence through which his interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects his interests.
(4) If the proprietor —
(a)
refuses to do so; or
(b)
fails to do so within 2 months after being called upon,
the licensee may bring the proceedings in his own name as if he were the proprietor.
(5) 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.
(6) Subsection (5) does not affect the granting of interlocutory relief on an application by a licensee alone.
(7) A proprietor who is added as a defendant under subsection (5) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(8) 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.
(9) 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 licensees.
(10) The provisions of this section shall apply in relation to an exclusive licensee if or to the extent that he has, by virtue of section 45(1), the rights and remedies of an assignee as if he were the proprietor of the registered trade mark.
[UK Trade Marks Act 1994, s. 30]
45.
—(1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.
(2) Where or to the extent that the provision referred to in subsection (1) is made, the licensee is entitled, subject to the provisions of the licence and to the provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in his own name.
(3) Any such rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trade mark, and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement shall be construed accordingly.
(4) In an action brought by an exclusive licensee by virtue of this section, a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark.
(5) Where the proprietor or an exclusive licensee of a registered trade mark brings proceedings for any infringement of the trade mark in respect of which the proprietor and the exclusive licensee have concurrent rights of action, the proprietor or the exclusive licensee, as the case may be, need not —
(a)
join the other as a plaintiff; or
(b)
add the other as a defendant,
unless the Court otherwise orders.
[20/2004]
(6) A person who is added as a defendant as mentioned in subsection (5) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(7) Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action —
(a)
the Court shall, when assessing damages, ordering an account of profits or awarding statutory damages under section 31(5)(c), take into account —
(i)
the terms of the licence; and
(ii)
any pecuniary remedy already awarded or available to either of them in respect of the infringement; and
(b)
subject to any agreement between them, the Court may —
(i)
assess the damages or award the statutory damages due to each of them according to the losses suffered or likely to be suffered by him as a result of the infringement; or
(ii)
apportion between them the profits due to each of them according to what is attributable to the infringement of his rights.
[20/2004]
(8) Subsection (7) shall apply whether or not the proprietor and the exclusive licensee are both parties to the action, and if they are not both parties, the Court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.
(9) The Court, in making an order under section 33, may have regard to the terms of any exclusive licence.
(10) The provisions of subsections (5) to (9) shall have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor.
[UK Trade Marks Act 1994, s. 31]