Singapore legislation
Section 45
Section 45
Exclusive licensee having rights and remedies of assignee
(1)
An exclusive licence may provide that the licensee has, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.
(2)
Where or to the extent that the provision referred to in subsection (1) is made, the licensee is entitled, subject to the provisions of the licence and to the provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in the licensee’s own name.
(3)
Any such rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trade mark, and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement are to be construed accordingly.
(4)
In an action brought by an exclusive licensee by virtue of this section, a defendant may avail himself, herself or itself of any defence which would have been available to the defendant if the action had been brought by the proprietor of the registered trade mark.
(5)
Where the proprietor or an exclusive licensee of a registered trade mark brings proceedings for any infringement of the trade mark in respect of which the proprietor and the exclusive licensee have concurrent rights of action, the proprietor or the exclusive licensee (as the case may be) need not —
join the other as a plaintiff; or
add the other as a defendant,unless the Court otherwise orders.
(6)
A person who is added as a defendant as mentioned in subsection (5) is not to be made liable for any costs in the action unless the person takes part in the proceedings.
(7)
Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action —
the Court is, when assessing damages, ordering an account of profits or awarding statutory damages under section 31(5)(c), to take into account —
the terms of the licence; and
any pecuniary remedy already awarded or available to either of them in respect of the infringement; and
subject to any agreement between them, the Court may —
assess the damages or award the statutory damages due to each of them according to the losses suffered or likely to be suffered by the person as a result of the infringement; or
apportion between them the profits due to each of them according to what is attributable to the infringement of the person’s rights.
(8)
Subsection (7) applies whether or not the proprietor and the exclusive licensee are both parties to the action, and if they are not both parties, the Court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.
(9)
The Court, in making an order under section 33, may have regard to the terms of any exclusive licence.
(10)
The provisions of subsections (5) to (9) have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor.