A licence changes over its life, and sometimes has to end. Sections 65 to 68 of the Trade Marks Act (Chapter 385) provide the machinery.
Sections 65 and 66 — expiry and renewal
Subject to section 67(1)(b), the registration of a person as a registered user shall expire on the date of expiration of the registration of the trade mark, or on such earlier date as the Registrar determines under section 64(6).
Section 66 provides for renewal. The registration may be renewed from time to time (s 66(1)); at the prescribed time before expiry the Registrar shall send notice to the registered user and to the registered proprietor of the expiry date and the conditions for renewal (s 66(2)); on compliance the Registrar may renew for such period as he thinks fit from the expiration of the last registration, but again not beyond the expiry of the current registration of the mark (s 66(3)).
Where a mark removed under section 61(2) is restored under section 62, the registration of a person as a registered user may be renewed as of the date of expiration of the last registration — so a licensee’s entry is brought back into line with the restored mark rather than having to be applied for afresh.
Section 67(1) — the four routes
Section 67 opens with the words “Without affecting the operation of section 13” — the Court’s rectification power is preserved alongside everything below.
| Paragraph | Action | Who may apply |
|---|---|---|
| (a) | Vary the registration as to the goods for which, or any conditions or restrictions subject to which, it has effect | The registered proprietor and the registered user |
| (b) | Extend it for such period not exceeding three years as the Registrar thinks fit — but not beyond the expiry of the current registration of the mark | The registered proprietor and the registered user |
| (c) | Cancel it | The registered proprietor or the registered user — either alone |
| (d) | Cancel it on one of three grounds | Any person |
Registration requires a joint application under section 64(2); cancellation under paragraph (c) does not. Either the proprietor or the user may apply to have the entry cancelled.
That is a point to negotiate in the licence agreement itself. Cancelling the registry entry ends the statutory permitted use — and with it the protection of section 53(1) and the deeming in section 69(1) — whatever the contract says. The contractual consequences of doing so are for the agreement to address.
Section 67(1)(d) — the three grounds
(i) that the registered user has used the trade mark otherwise than by way of the permitted use, or in such a way as to cause, or to be likely to cause, deception or confusion; or
(ii) that the registered proprietor or the registered user misrepresented, or failed to disclose, some fact material to the application for the registration, or that the circumstances have materially changed since the date of the registration; or
(iii) that the registration ought not to have been effected having regard to rights vested in the applicant by virtue of a contract in the performance of which he is interested.
Ground (i) polices the boundary of permitted use as defined in section 1 — goods with which the user is connected in trade, in respect of which the mark remains registered, for which he is registered, and complying with his conditions. Ground (ii) reaches both the original application and later change. Ground (iii) protects a third party whose contractual rights are inconsistent with the entry — for example an exclusive distributor whose exclusivity is cut across by a second registered user.
Paragraph (d) says “a person”, without the “person aggrieved” requirement found in sections 13 and 14 — though ground (iii) has its own built-in standing requirement.
Sections 67(2) to (4), and 68
- Section 67(2) — an application shall be made in the prescribed manner and be accompanied by such further documents, information or evidence as is required under the regulations or by the Registrar.
- Section 67(3) — the Registrar may, instead of determining an application under subsection (1)(d), refer it to the Court, and the Court shall hear and determine it. That mirrors the referral of an opposition under section 41.
- Section 67(4) — an office copy of the Court’s order is served on the Registrar, who shall take such steps as are necessary to give effect to it.
- Section 68 — the Registrar shall cancel the registration of a registered user for any goods in respect of which the trade mark is no longer registered. This is automatic and mandatory: if the mark is partially removed for non-use, or the specification narrowed under section 11(1)(d), the user entry follows.
- Section 72 — a person aggrieved by any decision of the Registrar under Part IX may appeal to the Court.
What to put in the licence agreement
- An obligation to apply jointly for registration under section 64(2), and to co-operate in any variation, extension or renewal under sections 66 and 67(1)(a) and (b).
- Quality and control provisions — the substance behind the connexion in the course of trade, and the answer to a ground (i) attack.
- Defined goods and territory, matching the conditions and restrictions to be entered on the Register.
- A covenant not to apply for cancellation under section 67(1)(c) except on defined events, given that either party may otherwise apply alone.
- Enforcement provisions — who sues, who pays, and how the section 70(1) right to call on the proprietor is to operate, since section 70(1) applies subject to any agreement subsisting between them.
- A confidentiality request under section 64(8), made at the time of the application.
- Termination mechanics — who applies to cancel the entry, within what time, and what happens to stock in hand.
- A note that the licence is personal: section 71 provides that Part IX does not confer an assignable or transmissible right to use the mark, so sub-licensing must be structured as further registered user entries.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 11, 13, 14, 41, 53, 61, 62, 64–72
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.