Page:Trade Marks Ordinance (Cap. 559).pdf/28

TRADE MARKS ORDINANCE (2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as he has against the person granting the licence. Infringement proceedings 35. Rights of licensees generally

(1) This section has effect with respect to the rights of a licensee in relation to the infringement of a registered trade mark but does not apply where or to the extent that—
 * (a) by virtue of section 36(2) (rights of certain exclusive licensees), the licensee has a right to bring infringement proceedings in his own name; or
 * (b) by virtue of section 37(2) (rights of sub-licensees under certain exclusive licences), a sub-licensee has the right to call on the exclusive licensee to take infringement proceedings in respect of any matter which affects the sub-licensee’s interests.

(2) A licensee is entitled, unless his licence or any licence through which his interest is derived provides otherwise, by notice in writing served on the owner of the registered trade mark, to call on the owner to take infringement proceedings in respect of any matter which affects the licensee’s interests.

(3) Unless the licence or any licence through which the licensee’s interest is derived provides otherwise, if the owner of the registered trade mark—
 * (a) refuses to do so; or
 * (b) fails to do so within 1 month after being called on to do so,

the licensee may bring the proceedings in his own name as if he were the owner.

(4) 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 owner of the registered trade mark is either joined as a plaintiff or added as a defendant.

(5) An owner of a registered trade mark who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.

(6) Nothing in subsection (4) affects the granting of interlocutory relief on application by a licensee alone.

(7) In infringement proceedings brought by the owner 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 licensees.