Part IX of the Trade Marks Act (Chapter 385) is how a trade mark is licensed. Section 64 is its centrepiece.
Section 64(1) and (2) — the joint application
Subject to this section, a person other than the registered proprietor may be registered as a registered user of a trade mark for all or any of the goods in respect of which the mark is registered.
An application shall be made to the Registrar in the prescribed manner by the registered proprietor and the proposed registered user, and shall be accompanied by such further documents, information or evidence as is required under the regulations or by the Registrar.
Note that the application is joint. A licensee cannot secure registration alone, and neither can the proprietor. That reflects what the registration is for: the Registrar is being asked to accept that the proprietor genuinely controls the use, so that the mark continues to indicate a single trade source.
Use of the mark by a registered user (a) in relation to goods (i) with which he is connected in the course of trade, (ii) in respect of which the mark remains registered, and (iii) for which he is registered as a registered user; and (b) which complies with any conditions or restrictions to which his registration is subject.
Every element must hold. Use outside the goods for which the user is registered, or in breach of the conditions, is not permitted use — and so is not protected by section 53(1), which exempts only a registered user using by way of permitted use.
Sections 64(3) to (5) — registration, refusal, and trafficking
Where the requirements of subsection (2) have been complied with, the Registrar may register the proposed user for all or any of the goods in respect of which the application is made, and subject to such conditions or restrictions as he thinks appropriate.
The Registrar may refuse to register a person as a registered user for all or any of the goods if, in his opinion, such registration would be contrary to the public interest.
The Registrar shall not register a person as a registered user if it appears to him that the registration would tend to facilitate trafficking in the trade mark.
Subsection (5) is a prohibition, not a discretion. “Trafficking” means dealing in the mark as a commodity in its own right, divorced from any real goods or any real control — licensing a mark to whoever will pay, for whatever they wish to sell. The Act’s answer is consistent: a mark must indicate a connexion in the course of trade, and a licence that severs that connexion is not permitted.
The same policy appears in section 73(2)(a), which invalidates an assignment without goodwill of a mark never used in good faith in the country, and in section 14(1)(a), which allows removal of a mark registered without an intention in good faith that it be used.
Sections 64(6) and (7) — the period of registration
The Registrar may determine that the registration shall be for such period as, having regard to the information supplied to him, he thinks fit — but the period shall not extend beyond the date of expiration of the current period of registration of the trade mark.
The Registrar may determine that the period shall be deemed to have commenced on the date the application was lodged, and that person shall be deemed to have been a registered user from that date.
Section 64(7) matters because of section 69(1): permitted use is deemed to be use by the registered proprietor. Backdating the registration backdates the period over which the licensee’s use counts as the proprietor’s — which can be decisive on a non-use attack.
Section 65 then ties the two registrations together: the registered user’s registration expires on the date of expiration of the registration of the mark, or on any earlier date determined under section 64(6). Renewal is dealt with by section 66.
Section 64(8) — keeping the licence terms confidential
The Registrar shall, if so required by an applicant under subsection (2), ensure that any document, information or evidence furnished for the purpose of the application — other than matter entered in the Register — is not disclosed to any other person except by order of the Court.
The protection operates only if so required by an applicant. Since the Registrar will normally want to see the licence agreement — to satisfy himself about control, quality standards, the goods and the conditions — a request under section 64(8) should be made at the time of the application, not afterwards.
Note the carve-out: matter entered in the Register is not protected. The fact of the registered user entry, the goods and the conditions are public; the commercial terms behind them need not be.
Why bother registering a licensee
| Provision | Benefit |
|---|---|
| s 69(1) | Permitted use is deemed use by the registered proprietor for section 14 and every other purpose where the proprietor’s use is material |
| s 17(3) | Pre-application use by a person under the applicant’s control, consent and authority, who will be registered as a user, may count towards distinctiveness |
| s 35(1)(b) | A mark may be registered although the applicant does not use or propose to use it, where a registered user will be registered immediately after |
| s 53(1) | A registered user using by way of permitted use does not infringe |
| s 70(1) | The user may call on the proprietor to sue, and may sue in his own name if the proprietor does not act within two months |
| s 73(3)(b) | An assignment without goodwill escapes s 73(2)(a) where a registered user was registered within six months of the mark and used it in that period |
Without registration, the licensee’s use is not deemed to be the proprietor’s use under section 69(1). A brand owner whose mark is used in the country only by an unregistered distributor may therefore face a section 14 removal application with no use of its own to point to — and, worse, a distributor who claims the goodwill for itself.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 14, 17, 35, 53, 64–71, 73
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.