Trade Marks Ordinance, 2001 — section 77

77. General provisions as to the rights of licensees in case of infringement..—_(1) Save as provided in section 61, a licensee shall be entitled, unless his licensee, or any licensee through which his interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects his interests: Provided that if the proprietor

(a)refuses to do so; or

(b)fails to do so within two months after being called upon, the licensee may bring the proceedings in his own name as if he were the proprietor.

(2)Where infringement proceedings are brought by a licensee under this section, the licensee may not, without the leave of the High Court or 1[an IP Tribunal], proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant; Provided that this shill not affect the granting of interlocutory relief on an application by a licensee alone.

(3)A proprietor who is added as a defendant as provided in sub-section (2) shall not be made liable for any costs in the action unless he takes part in the proceedings.

(4)In infringement proceedings brought by the proprietor of a registered trade mark any loss suffered or likely to be suffered by licensees shall be taken into account and the High Court or 1 [an IP Tribunal] may give such directions as it thinks fit as to the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of licensees. 1 Subs. by Act No. LVIII of 2023, s.31.

(5)The provisions of this section shall apply in relation to an exclusive licensee if or to the extent that he has, under sub-section (1) of section 78, the rights and remedies of an assignee as if he were the proprietor of the registered trade mark.