Who can bring trademark infringement proceedings?

Posted by Jane on June 15, 2015 / Posted in Trade Marks
Trade mark infringement is actionable by the trade mark proprietor- section 14 TMA.

Who can bring trademark infringement proceedings?
Trade mark infringement is actionable by the trade mark proprietor- section 14 TMA. If a UK mark is co-owned, proceedings can be brought by any of the proprietors, but a proprietor cannot proceed with the action unless all co-owners of the mark are joined into the proceedings (either as a claimant or a defendant), unless he has obtained the court’s leave to do so.
A licensee can bring trademark infringement proceedings in its own name in the following circumstances (although this right can be, and commonly is, excluded by express provision in the licence):
• The mark is a UK registered trademark, and the licensee has asked the proprietor to bring proceedings, but the proprietor has either refused to do so or failed to do so within two months.
• The mark is a UK registered trade mark, the licence is exclusive, and the licence includes a provision giving the licensee the same rights and remedies as if the licence had been an assignment. In this situation, the licensee’s rights run concurrently with those of the proprietor.
• The mark is a CTM, and the proprietor has given its consent for the licensee to bring proceedings (Article 22(3).
• The mark is a CTM, the licence is exclusive, and the proprietor has failed to bring proceedings within “an appropriate period” after being given formal notice to do so
• The High Court has ruled that an oral licensee of a CTM can sue for infringement
Trade mark
Trademark infringement
jane@trademarkroom.com
www.trademarkroom.com

Jane Coyle
This entry was posted on June 15, 2015 and is filed under Trade Marks. You can follow our blog through the RSS 2.0 feed.

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