Trade Marks Act 1976 Part IX — Registered user

Registered users

s 48

(1) Subject to the provisions of this section, where the registered proprietor of a trade mark grants, by lawful contract, a right to any person to use the trade mark for all or any of the goods or services in respect of which the trade mark is registered, that person may be entered on the Register as a registered user of the said trade mark whether with or without any conditions or restrictions, provided that it shall be a condition of any such registration that the registered proprietor shall retain and exercise control over the use of the trade mark and over the quality of the goods or services provided by the registered user in connection with that trade mark. (2) Where it is proposed that a person shall be registered as a registered user of a trade mark, the registered proprietor shall submit an application to the Registrar for the registration of that person as a registered user of the trade mark and such application shall be accompanied by the prescribed fee and the following information: (a) the representation of the registered trade mark; (b) the names, addresses, and addresses for service of the parties; (c) the goods or services in respect of which the registration is proposed; (d) any conditions or restrictions proposed with respect to the characteristics of the goods or services, to the mode or place of permitted use or to any other matter; and (e) whether the permitted use is to be for a period or without limit of period, and if for a period, the duration of that period. (3) The registered proprietor shall furnish the Registrar with such further documents, information or evidence as may be required by the Registrar or any regulations made under this Act. (4) On receipt of an application for registration of a person as a registered user of a trade mark under subsection (2), the Registrar shall enter on the Register all the particulars required to be provided thereunder. (5) Where a person has been registered as a registered user of a trade mark, the use of that trade mark by the registered user within the limits of his registration shall be deemed to be use by the registered proprietor of the trade mark to the same extent as the use of the trade mark by the registered user and shall be deemed not to be use by any other person. (6) Subsection (5) shall cease to have effect with regard to any registered user of a trade mark— (a) if the trade mark ceases to be a registered trade mark for any reason; (b) if the goods or services for which the trade mark is registered are subsequently limited so as to exclude any or all of the goods or services in respect of which the registration of the registered user has been made; (c) if the registered proprietor ceases to exercise control over the use of the trade mark and over the quality of the goods or services provided by the registered user concerned in relation to that trade mark; (d) at the date of expiration of the last registration of the trade mark unless a fresh application under subsection (2) accompanies any application for renewal of the registration of that trade mark; (e) at the date of any assignment or transmission of the registered trade mark, unless and until the devolution of title is recorded on the Register in accordance with the provisions of this Act and the subsequent proprietor of the registered trade mark makes a fresh application under subsection (2). (7) If the registered proprietor of a trade mark fails to exercise any of the rights conferred on him by his registration to the prejudice of any registered user of that trade mark, the registered user may apply to the Court for such relief as the Court may consider just, including rectification of the Register by ordering that the registered user be recorded as the registered proprietor of the trade mark, and in any case where use of the trade mark by any person entitled to use it would be likely to deceive or cause confusion, the Court may order that the trade mark shall be removed from the Register, notwithstanding the provisions of section 37. (8) Section 62 shall apply to any proceedings under subsection (7) that might lead to any alteration or rectification of the Register.

Powers to vary, extend or cancel registration of a registered user

s 49

(1) Without prejudice to section 45, the registration of a person as a registered user— (a) may be varied by the Registrar on the written application in the prescribed manner of the registered proprietor with respect to the goods or services for which or with respect to any conditions or restrictions subject to which the registration has effect; (b) may be extended by the Registrar on the application in writing of the registered proprietor for such period as the Registrar thinks fit; (c) may be cancelled by the Registrar on the application of the registered proprietor. (d) (Deleted by Act A881). (2) The Registrar may at any time cancel the registration of a person as a registered user of a trade mark for any goods or services in respect of which the trade mark is no longer registered. (3) Any decision of the Registrar under subsection (1) or (2) is subject to appeal to the Court.

s 50

(Deleted by Act A881).

Infringement proceeding

s 51

(1) Subject to any agreement subsisting between the registered user of a trade mark and the registered proprietor of the trade mark, the registered user is entitled to call upon the registered proprietor to take proceedings for infringement of the trade mark, and if the registered proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the registered proprietor and shall make the registered proprietor a defendant. (2) A registered proprietor so added as a defendant is not liable for costs unless he enters an appearance and takes part in the proceedings.

Registered user not to assign

s 52

This Part does not confer on the registered user of a trade mark an assignable or transmissible right to the use of that trade mark. 53–54. (Deleted by Act A881).