Hong Kong Ordinances

TRADE MARKS ORDINANCE - SECT 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.

(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.