Hong Kong Ordinances

TRADE MARKS ORDINANCE - SECT 35

Rights of licensees generally

Infringement proceedings

(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.