The Registered User's Right to Sue

In one line

A registered user may sue for infringement in his own name if he joins the proprietor as a defendant, an unregistered permitted user may not sue at all, and neither may sell his rights.

In the wording a student can write in an exam: section 52(1) provides that, subject to any agreement subsisting between the parties, a registered user may institute proceedings for infringement in his own name as if he were the registered proprietor, making the registered proprietor a defendant, the rights and obligations of the registered user in such a case being concurrent with those of the proprietor; section 52(2) provides that a proprietor so added as defendant shall not be liable for costs unless he enters an appearance and takes part; section 53 denies any right to institute proceedings for infringement to a person within section 2(1)(r)(ii); and section 54 provides that nothing in the Act confers on a registered user any assignable or transmissible right to the use of the mark.

Section 52: the registered user's action

Sub-section (1), four elements.

"Subject to any agreement subsisting between the parties." So the licence may take the right away, and in practice many licences reserve enforcement to the proprietor. A student answering a problem must ask what the agreement says first.

"May institute proceedings for infringement IN HIS OWN NAME as if he were the registered proprietor." He does not sue as the proprietor's agent; he sues as if he were the proprietor.

"Making the registered proprietor a DEFENDANT." The proprietor must be before the court, so that the whole title is represented and the defendant is not exposed to two actions on one mark.

"The rights and obligations of such registered user in such case being CONCURRENT with those of the registered proprietor." Concurrent, not derivative. Both have the rights; both bear the obligations.

Sub-section (2), costs. Notwithstanding anything in any other law, a registered proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

Why that is needed. A proprietor joined only because the section requires it should not be at risk of costs for doing nothing. If he takes part, the ordinary rules apply.

Section 53: the unregistered permitted user cannot sue

"A person referred to in sub-clause (ii) of clause (r) of sub-section (1) of section 2 shall have no right to institute any proceeding for any infringement."

That is the single most important practical difference between the two limbs of permitted use. A licensee whose licence is written but unrecorded gets the benefit of section 48(2), so his use is the proprietor's use, but he cannot sue.