Trade Marks Act, 1996

Exercise of concurrent rights.

36.—(1) Where proceedings for infringement of a registered trade mark brought by the proprietor or an exclusive licensee relate (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee 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; but this subsection does not affect the granting of interlocutory relief on an application by a proprietor or exclusive licensee alone.

(2) 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 takes part in the proceedings.

(3) Where an action for infringement of a registered trade mark is brought which relates (wholly or partly) to an infringement in respect of which the proprietor 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) the 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.

(4) The provisions of subsection (3) apply whether or not the proprietor and the exclusive licensee are both parties to the action; 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.

(5) The proprietor of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 20 ; 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.

(6) The provisions of this section shall have effect subject to anyagreement to the contrary between the exclusive licensee and the proprietor.

Application for Registered Trade Mark