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TRADE MARKS ORDINANCE 36. Rights of certain exclusive licensees

(1) This section applies in relation to an exclusive licensee if, or to the extent that, by virtue of section 34(1) (exclusive licence may provide same rights as assignment, etc.), he has the same rights and is entitled to the same remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

(2) The exclusive licensee is entitled, subject to the provisions of the licence and to this section, to bring infringement proceedings in his own name against any person other than the owner of the registered trade mark.

(3) The rights of the exclusive licensee and the remedies to which he is entitled are concurrent with those of the owner of the registered trade mark; and references to the owner of a registered trade mark in this Ordinance relating to infringement shall be construed accordingly.

(4) In infringement proceedings 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 proceedings had been brought by the owner of the registered trade mark.

(5) Where proceedings for infringement of a registered trade mark brought by the owner of the registered trade mark or an exclusive licensee relate wholly or partly to an infringement in respect of which they have concurrent rights of action, the owner or the exclusive licensee, as the case may be, may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.

(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) Nothing in subsection (5) affects the granting of interlocutory relief on application by the owner of a registered trade mark or an exclusive licensee alone.

(8) Where proceedings for infringement of a registered trade mark are brought which relate wholly or partly to an infringement in respect of which the owner of the registered trade mark and an exclusive licensee have or had concurrent rights of action—
 * (a) the court shall in assessing damages 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;
 * (b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and
 * (c) if an account of profits is directed, the court shall apportion the profits between them as the court considers just.