Section 49
of Industrial Designs Order, 1999
Section 49
(1)
An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights in respect of matters occurring after the grant of the licence as if the licence had been an assignment. Where or to the extent that such provision is made, the licensee is entitled, subject to the provisions of the licence and to subsections (2) to (8), to bring infringement proceedings in his own name, against any person other than the owner.
(2)
Any such rights of an exclusive licensee are concurrent with those of the owner;
and references in this Order to the owner which relate to infringement shall be construed accordingly.
Incorporating amendments until S 3/2020
(Clean version) Norhasnani/fiqah/Karimah_as of 8th June 2020
36
BLUV as at 13th February 2020
(3)
In an action brought by an exclusive licensee under this section, a defendant may avail himself of any defence which would have been available to him if the action had been brought by the owner.
(4)
Where infringement proceedings brought by the owner or an exclusive licensee relate wholly or partly to an infringement in respect of which they have concurrent rights of action, the owner or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other of them has either been joined as a plaintiff or added as a defendant. Nothing in this subsection affects the granting of interlocutory relief on the application of an owner or exclusive licensee alone.
(5)
A person who has been added as a defendant under subsection (4) shall not be made liable for any costs in the action unless he has taken part in the proceedings.
(6)
Where infringement proceedings are brought which relate wholly or partly to an infringement in respect of which the owner and an exclusive licensee have or had concurrent rights of action –
(a)
the court shall in assessing damages take into account –
(i)
the terms of the licence; and
(ii)
any pecuniary remedy already awarded or available to either of them in respect of the infringement;
(b)
no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and
(c)
the court shall, if an account of profits is directed, apportion the profits between them as the court considers just, subject to any agreement between them.
This subsection applies whether or not the owner 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.
Incorporating amendments until S 3/2020
(Clean version) Norhasnani/fiqah/Karimah_as of 8th June 2020
37
BLUV as at 13th February 2020
(7)
The owner of the industrial design shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 53; and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.
(8)
Subsections (4) to (7) have effect subject to any agreement to the contrary between the owner and the exclusive licensee.
Application of section 49 to exclusive licensee.