No.	4907	

Government	Gazette	23	March	2012	

Act No. 1, 2012

89

INDUSTRIAL PROPERTY ACT, 2012
	

	

(b)	

to	grant	a	licence	or	to	assign	the	whole	or	any	part	of	his	interest	in	the	
trade	mark	registration;	or

	

(c)	

to	 take	 any	 steps	 or	 institute	 any	 proceedings	 relating	 to	 the	 trade	
mark.

	
(3)	
Despite	subsection	(2),	a	joint	trade	mark	owner	may	pay	any	renewal	
fee	that	is	payable	without	recourse	to	any	other	trade	mark	owner,	unless	the	Tribunal
	
directs	otherwise	in	proceedings	in	terms	of	subsection	(7).
	
(4)	
Where	 an	 article	 to	 which	 the	 registered	 trade	 mark	 has	 been	 applied	
is	disposed	of	by	a	joint	trade	mark	owner,	the	acquirer	or	any	person	claiming	through	
him	 or	 her	 is	 entitled	 to	 deal	 with	 it	 in	 the	 same	 manner	 as	 if	 the	 article	 had	 been	
disposed	of	by	the	trade	mark	owners	jointly.
	
(5)	
Any	joint	trade	mark	owner	may	institute	proceedings	for	infringement	
and	must	give	notice	thereof	to	every	other	joint	trade	mark	owner,	and	any	such	other	
trade	 mark	 owner	 may	 intervene	 as	 co-plaintiff	 and	 recover	 any	 damages	 in	 respect	 of	
any	damage	he	or	she	may	have	suffered	as	a	result	of	the	infringement.
	
(6)	
If	 in	 any	 proceedings	 under	 subsection	 (5)	 damages	 are	 awarded	 to	 a	
plaintiff,	damages	must	be	awarded	as	if	he	or	she	were	the	sole	trade	mark	owner,	and	
the	defendant	is	not	obliged	to	compensate	any	other	joint	trade	mark	owner	in	respect	
of	the	infringement	in	question.
	
(7)	
Where	 any	 dispute	 arises	 between	 joint	 trade	 mark	 owners	 as	 to	 their	
respective	rights	in	or	to	a	trade	mark,	the	institution	of	proceedings	relating	to	the	trade	
mark	or	the	manner	in	which	they	should	deal	with	the	trade	mark,	any	joint	trade	mark	
owner	may	apply	to	the	Tribunal	to	decide	the	matter	in	dispute.
	
(8)	
If	 in	 considering	 any	 application	 under	 subsection	 (7)	 the	 Tribunal	 is	
satisfied	that	a	joint	trade	mark	owner	is	unable	or	unwilling	to	remain	a	trade	owner,	the	
Tribunal	 may	 order	 him	 or	 her	 to	 assign	 his	 or	 her	 rights	 to	 any	 other	 joint	 trade	 mark	
owner	able	and	willing	so	to	remain	but,	where	it	appears	to	the	Tribunal	to	be	just	and	
equitable,	 it	 may	 order	 the	 payment	 of	 compensation	 to	 such	 joint	 trade	 mark	 owner	
who	is	so	ordered	to	assign	his	or	her	rights.
	
(9)	
In	considering	any	application	under	subsection	(7)	the	Tribunal	must,	
unless	 it	 appears	 that	 there	 are	 good	 reasons	 to	 the	 contrary,	 resolve	 the	 dispute	 in	 a	
manner	which	will	lead	to	the	preservation	and	use	of	the	trade	mark.
PART 7
VOLUNTARY LICENCES, REGISTERED USERS AND TRANSFERS
Voluntary licences
165.
(1)	
The	 owner	 of	 a	 trade	 mark	 application	 or	 a	 registered	 trade	
mark	may	enter	into	a	contract	with	one	or	more	other	persons	to	authorise	such	person	
or	persons	to	use	the	trade	mark	covered	by	the	application	or	the	registered	trade	mark	
in	Namibia	(herein	referred	to	as	a	“voluntary	licence”).

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