OpenLegislation

Paragraph 10

Original text. Later amendments are not shown.

After paragraph 11 insert—

“11A.
(1)

Section 27 (application for registration of trade mark as an object of property) is amended as follows.

(2)

In subsection (1) after “sections 22 to 26 (which relate to a registered trade mark as an object of property)” insert “and sections 28 to 31 (which relate to licensing)”.

11B.
(1)

Section 28 (licensing of registered trade mark) is amended as follows.

(2)

After subsection (4) insert—

“(5)

The proprietor of a registered trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in the licence with regard to—

(a)

its duration,

(b)

the form covered by the registration in which the trade mark may be used,

(c)

the scope of the goods or services for which the licence is granted,

(d)

the territory in which the trade mark may be affixed, or

(e)

the quality of the goods manufactured or of the services provided by the licensee.”.

11C.
(1)

Section 30 is amended as follows.

(2)

After subsection (1) insert—

“(1A)

Except so far as the licence provides otherwise a licensee may only bring proceedings for infringement of the registered trade mark with the consent of the proprietor (but see subsections (2) and (3)).”.

(3)

In subsection (2), for “A licensee is entitled, unless his licence or any licence through which his interest is derived, provides otherwise, to” substitute “An exclusive licensee may”.

(4)

In subsection (3) after “If the proprietor” insert “mentioned in subsection (2)” and before “licensee” insert “exclusive”.

(5)

In subsection (4), after “by virtue of this section” insert “or with the consent of the proprietor or pursuant to the licence”.

(6)

After subsection (6), insert—

“(6A)

Where the proprietor of a registered trade mark brings infringement proceedings, a licensee who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.”.

11D.
(1)

Section 32 (application for registration) is amended as follows.

(2)

In subsection (2)(d) after “mark” insert “, which is capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor”.

11E.

Section 38 (publication, opposition proceedings and observations) is amended as follows.

(2)

After subsection (2) insert—

“(2A)

Where a notice of opposition is filed on the basis of one or more earlier trade marks or other earlier rights—

(a)

the rights (if plural) must all belong to the same proprietor;

(b)

the notice may be filed on the basis of part, or the totality, of the goods or services in respect of which the earlier right is protected or applied for.

(2B)

A notice of opposition may be directed against part or the totality of the goods or services in respect of which the contested mark is applied for.”.”.