Cap. 597 Art. 39Licensing.

(1) A trademark may be licensed for some or all of the goods or services for which it is registered, and for the whole or part of Malta. A licence may be exclusive or non-exclusive.

(2) Unless the licence provides otherwise, it is binding on a successor in title to the grantor’s interest, and references in this Act to doing anything with, or without, the consent of the proprietor of a registered trademark shall be construed accordingly.

(3) Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee.

(4) The proprietor of a trademark may invoke the rights conferred by that trademark against a licensee who contravenes any provision in his licensing contract with regard to:

(a) its duration;

(b) the form covered by the registration in which the trademark may be used;

(c) the scope of the goods or services for which the licence is granted;

(d) the territory in which the trademark may be affixed; or

(e) the quality of the goods manufactured or of the services provided by the licensee.

(5) Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a trademark only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trademark, after formal notice, does not himself bring infringement proceedings within an appropriate period.

(6) A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the trademark.

(7) The Minister may make regulations for the recordal of licences in the register.