Trade Marks Act 1998 · 2020 Revised Edition · Part 5 · Licensing
42. Licensing of registered trade mark
Feedback & supportA licence to use a registered trade mark may be general or limited.
trade mark
“trade mark” means any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;
A limited licence may, in particular, apply in relation to some but not all of the goods or services for which the trade mark is registered.
A licence is not effective unless it is in writing signed by or on behalf of the grantor.
Subsection (3) may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.
Subject to subsection (7), a licence to use a registered trade mark is binding on every successor in title to the grantor’s interest —
except any person who, in good faith and without any notice (actual or constructive) of the licence, has given valuable consideration for the interest in the registered trade mark; or
unless the licence provides otherwise,and any reference in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark is to be construed accordingly.
Every person is deemed to have notice of a licence if the prescribed particulars of the grant of the licence are entered in the register under section 39(1).
register
“register” means the register of trade marks maintained by the Registrar under section 66;
Where an application under section 39(1) is made before 1 July 2004 to register the prescribed particulars of the grant of a licence, then, unless the licence provides otherwise, the licence is binding on every successor in title to the grantor’s interest.
Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include references to a sub‑licence or sub‑licensee.