Section 71
Exclusive licensee having rights and remedies of assignee
(2)
Where or to the extent of the provision referred to in subsection (1), the licensee shall be entitled, subject to the provisions of the licence and this section, to bring infringement proceedings, against any person other than the registered proprietor, in his own name.
(3)
Any such rights and remedies of an exclusive licensee are concurrent with those of the registered proprietor and references to the registered proprietor relating to infringement shall be construed accordingly.
(4)
In an action brought by an exclusive licensee under this section, a defendant may avail himself of any defence which would have been available to him as if the action had been brought by the registered proprietor of the trademark.
(5)
Where proceedings for infringement of a registered trademark 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 the exclusive licensee may not, without leave of the Court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.
(6)
Subsection (5) does not affect the granting of interlocutory relief on an application by a registered proprietor of the trademark or exclusive licensee alone.
(7)
A person who is added as a defendant under subsection (4)
shall not be liable for any costs in the action unless he takes part in the proceedings.
(8)
Where an action for infringement of a registered trademark brought relates wholly or partly to an infringement in respect of which the registered proprietor and an exclusive licensee have or
Trademarks 73
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.
(9)
Subsection (8) shall apply whether or not the registered 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.
(10)
Subsections (5) to (8) have effect subject to any agreement to the contrary between the exclusive licensee and the registered proprietor of the trademark.