Who May Sue, and Whom To Sue

In one line

The registered proprietor sues, the registered user may sue in his own name making the proprietor a defendant, a permitted user under an unrecorded licence may not sue at all, and section 136 says who else must be brought before the tribunal.

Who may sue for infringement

The registered proprietor. Section 28(1) gives him the exclusive right to use the mark and "to obtain relief in respect of infringement of the trade mark in the manner provided by this Act". That is the source of his title to sue.

The registered user, under section 52(1). Subject to any agreement subsisting between the parties, he may institute proceedings for infringement in his own name as if he were the registered proprietor, making the registered proprietor a defendant, his rights and obligations being concurrent with the proprietor's. And by section 52(2), the proprietor so added as a defendant is not liable for costs unless he enters appearance and takes part.

Nobody else. Section 53 is blunt: a person referred to in section 2(1)(r)(ii), which is the permitted user under an unrecorded consent, "shall have no right to institute any proceeding for any infringement."

An assignee, once the assignment is recorded and he is entered on the register as proprietor under section 45, sues as proprietor.

An applicant whose mark is not yet registered cannot sue for infringement, because section 27(1) bars it, though section 23(1) makes registration date back to the date of application once granted.

Who may sue in passing off

Anybody with goodwill. Registration is irrelevant, section 27(2) preserves the right, and the plaintiff's title is his goodwill and nothing else.

Which means an exclusive licensee may sue in passing off where he could not sue for infringement, provided he can show goodwill of his own. This is one of the practical reasons a licensee who has failed to record his licence still has a remedy.

The collective mark exception

Section 67 is different, and chapter 990 works it. The proprietor of a collective mark sues; the members do not. But the court shall take into account the loss suffered or likely to be suffered by authorised users, and may direct that the proprietor hold the proceeds of any pecuniary remedy on their behalf.

The provision on impleading

Section 136(1): "In every proceeding under CHAPTER VII or under SECTION 91, every registered user of a trade mark using by way of permitted use, who is not himself an applicant in respect of any proceeding under that Chapter or section, SHALL BE MADE A PARTY to the proceeding."

Section 136(2): "Notwithstanding anything contained in any other law, a registered user so made a party to the proceeding SHALL NOT BE LIABLE FOR ANY COSTS unless he ENTERS AN APPEARANCE AND TAKES PART in the proceeding."