Title and interest to sue in trade mark infringement proceedings

Abstract

The provisions of a trade mark licence relating to title to sue can be key to protecting a licensee's investment and ability to take swift effective infringement action but often little or no consideration is given to this issue during licence negotiations. Where the default position is governed by statutory provisions for UK registered marks and Community trade marks, it is important to be aware of the effect of these provisions. Defects in a party's title to sue may not come to light until they need to raise proceedings or even after they have already commenced. This can delay the commencement of court proceedings which can be critical, particularly where interim remedies are urgently sought, or can even create a fatal defect in the action raised. This article looks firstly at the statutory provisions which will apply if the licence agreement itself does not deal with title to sue. It will then touch upon commercial issues which should be addressed by each party when negotiating a licence and whether or not a licensor should grant the licensee a right of action. Provisions governing the title to raise proceedings and their conduct should ideally be set out in the trade mark licence and be clear at the outset. Failure to achieve this may lead to undesirable and damaging consequences in subsequent litigation enforcing the trade mark(s) in question.