Technology &
Internet Law

Trade Marks - Assignment & Licensing  

As trade marks are property, they may be assigned in the same way as other intangiable property under section 24 of the Trade Marks Act. Furthermore, under section 28 of the Trade Marks Act it is possible to licence to use a registered trade mark on a general or limited basis or on an exclusive or non-exclusive basis. This means that it is possible for the trade mark owner to licence production or distribution under the mark. Any such licence, however, must be in writing.

Rights of Licensees

Whether exclusive or not or even sub-licensees in certain situations - can sue for infringement. Moreover, a non-exclusive licensee may cause the trade mark owner to take infringement proceedings and if the latter fails to do so within 2 months, the former may proceed in his own name. However, for other interlocutory relief the owner must be joined in. An exclusive licensee, on the other hand, may proceed on his own in any infringement action as if there had been an assignment of rights. It is important in order to benefit from these rights that licences be registered under section 25. 

To find out more about trade marks and what and the kinds of signs that can be registered as trade marks, click here.

NEED TO KNOW MORE?

For further information on trade marks and passing off, contact Maitland Kalton or Julian Danobeitia or call us on +44 (0)20 7278 1817

Kaltons Solicitors, Suite 302, Spitfire Studios, 63-71 Collier Street, London, N1 9BE. Telephone +44 (0)20 7278 1817; Fax: +44 (0)207 278 1835.

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