3. Rights of an authorised user of a registered trade mark

Date Published

The owner of a registered trade mark may authorise another person to use it. For use to be authorised it must be under the control of the registered owner (see section 8). Section 26 of the Act gives an authorised user extensive powers, although these powers are subject to any agreement made between the registered owner and the user. The authorised user may:

  • use the trade mark in relation to the goods and/or services in respect of which it is registered, subject to any condition/limitation on the registration (paragraph 26(1)(a)).

  • bring an action for infringement of the trade mark if the registered owner refuses or neglects to do so within two months of a request from the authorised user (reg 3.2). If the authorised user takes infringement action the registered owner must be made a defendant in the action. The registered owner is not liable for costs if it does not take part in the proceedings (paragraph 26(1)(b), subsection 26(2)).

  • display on the goods or packaging a notice prohibiting any act that is a prohibited act under subsection 121(2) (paragraph 26(1)(c)).

  • give the Comptroller of Customs a notice under section 132 objecting to the importation of goods that infringe the trade mark or he or she can revoke such a notice (paragraph 26(1)(d)).

  • give permission to any person to make alterations to a registered trade mark when it is applied to, or in relation to, goods or services in respect of which it is registered (paragraph 26(1)(e)).

  • give permission to any person to apply the trade mark to, or in relation to, the goods and/or services for which the trade mark is registered (paragraph 26(1)(f)).