Page:Trade Marks Ordinance (Cap. 559).pdf/30

TRADE MARKS ORDINANCE (9) Subsection (8) applies whether or not the owner of the registered trade mark and the exclusive licensee are both parties to the proceedings; 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.

(10) The owner of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 23 (order for delivery up); and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.

(11) Subsections (5) to (10) have effect subject to any agreement to the contrary between the owner of the registered trade mark and the exclusive licensee.

37. Rights of sub-licensees under certain exclusive licences

(1) This section applies in relation to a sub-licensee of an exclusive licensee if, or to the extent that, by virtue of section 36(2) (rights of certain exclusive licensees), the exclusive licensee has a right to bring infringement proceedings in his own name.

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

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

the sub-licensee may bring the proceedings in his own name as if he were the exclusive licensee.

(4) Where infringement proceedings are brought by a sub-licensee by virtue of this section, the sub-licensee may not, without the leave of the court, proceed with the action unless both the exclusive licensee and the owner of the registered trade mark are either joined as plaintiffs or added as defendants.

(5) A person 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 sub-licensee alone.