Hong Kong Ordinances

TRADE MARKS ORDINANCE - SECT 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.