Industrial Designs Act, 2001

Exercise of concurrent rights.

64.—(1) Where proceedings for infringement of design right brought by the registered proprietor or an exclusive licensee relate (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the registered proprietor or, as the case may be, the exclusive licensee may not, without the leave of the appropriate court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.

(2) Subsection (1) shall not affect the granting of interlocutory relief on an application by a registered proprietor or exclusive licensee alone.

(3) A person who is added as a defendant as mentioned in subsection (1) shall not be liable for any costs in the action unless he or she takes part in the proceedings.

(4) Where an action for infringement of design right is brought which relates (wholly or partly) to an infringement in respect of which the registered proprietor and an exclusive licensee have or had concurrent right of action—

(a) the appropriate 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) the appropriate court shall, if an account of profits is directed, apportion the profits between them as the court considers just, subject to any agreement between them.

(5) The registered proprietor shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 61 and the appropriate 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.

(6) This section shall have effect subject to any agreement to the contrary between the exclusive licensee and the registered proprietor.