Trade Marks Act 1994

Infringement: rights of authorised usersU.K.

11U.K.The following provisions apply in relation to an authorised user of a registered collective mark as in relation to a licensee of a trade mark—

(a)section 10(5) (definition of infringement: unauthorised application of mark to certain material);

(b)section 19(2) (order as to disposal of infringing goods, material or articles: adequacy of other remedies);

(c)section 89 (prohibition of importation of infringing goods, material or articles: request to Commissioners of Customs and Excise).

12(1)The following provisions (which correspond to the provisions of section 30 (general provisions as to rights of licensees in case of infringement)) have effect as regards the rights of an authorised user in relation to infringement of a registered collective mark.U.K.

[F1(2)Subject to any agreement to the contrary between the authorised user and the proprietor, an authorised user may only bring proceedings for infringement of a registered collective mark with the consent of the proprietor.]

F2(3). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(4)[F3Where proceedings are brought by an authorised user for infringement of a registered collective mark (with the consent of the proprietor or pursuant to any agreement referred to in sub-paragraph (2))], the authorised user may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant.

This does not affect the granting of interlocutory relief on an application by an authorised user alone.

(5)A proprietor who is added as a defendant as mentioned in sub-paragraph (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.

(6)In infringement proceedings brought by the proprietor of a registered collective mark any loss suffered or likely to be suffered by authorised users shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of such users.

[F4(7)Where the proprietor of a registered collective mark brings infringement proceedings, an authorised user who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.]