90		

Government	Gazette	23	March	2012	

Act No. 1, 2012

No.	4907


INDUSTRIAL PROPERTY ACT, 2012

	
(2)	
A	 voluntary	 licence	 contract	 concerning	 a	 trade	 mark	 application	
or	 a	 registered	 trade	 mark	 must	 be	 in	 writing	 and	 signed	 by	 the	 licensor	 and	 may	 be	
submitted	 in	 the	 prescribed	 manner	 as	 contemplated	 in	 section	 171	 to	 the	 Registrar	
who	must	keep	its	contents	confidential	but	must,	record	the	grant	of	the	licence	in	the	
appropriate	register.
	
(3)	
Any	 licence	 contract	 made	 in	 respect	 of	 a	 trade	 mark	 which	 is	 the	
subject	of	an	application	for	registration	or	a	registered	trade	mark	must	provide	for	the	
effective	control,	by	the	licensor,	of	the	quality	of	the	goods	or	services	of	the	licensee	
in	connection	with	which	the	mark	is	to	be	used.
	
(4)	
The	 Registrar	 must	 publish	 a	 reference	 to	 the	 grant	 of	 a	 voluntary	
licence		in	the	bulletin.
	
(5)	
is	effected.

A	licence	contract	has	no	effect	against	third	parties	until	such	recordal	

	
(6)	
The	 recordal	 of	 a	 licence	 under	 subsection	 (2)	 may	 be	 cancelled	 on	
request	to	the	Registrar	in	the	prescribed	manner,	accompanied	by	proof	that	the	licence	
has	expired	or	has	been	terminated.
	
(7)	
The	registration	of	a	certification	trade	mark	or	a	collective	trade	mark,	
or	an	application	for	such	registration,	may	not	be	the	subject	of	a	licence	contract	other	
than	 a	 licence	 granted	 to	 any	 person	 in	 terms	 of	 the	 rules	 governing	 the	 use	 of	 such	
marks	as	contemplated	in	section	188(1)	and	(2).
Invalidation of licences
166.
(1)
If	 a	 licence	 contract	 as	 provided	 for	 in	 section	 165	 does	 not	
provide	for	such	quality	control	as	contemplated	in	section	165(3),	the	licence	contract	
is	invalid.	
	
(2)	
If	 a	 licence	 has	 been	 recorded	 as	 provided	 for	 in	 section	 165(2)	 and	
such	quality	control	is	not	effectively	carried	out,	any	registered	user	may	apply	to	the	
Registrar	 for	 the	 right	 granted	 to	 the	 licensee	 to	 use	 the	 trade	 mark	 to	 be	 cancelled	 as	
contemplated	in	section	173(1).
Effect of licences
167.		

Where	a	licence	has	been	recorded	in	accordance	with	section	165(2)	–

	

(a)	

the	licensee	must	be	a	registered	user	of	the	trade	mark	as	contemplated	
in	section	171;

	

(b)	

the	 licensee	 has	 the	 right,	 in	 the	 circumstances	 as	 contemplated	 in	
section	170(4),	to	institute	action	against	any	person	who	infringes	the	
trade	 mark	 as	 provided	 for	 in	 section	 152	 or	 section	 183,	 unless	 the	
licence	agreement	has	a	contrary	provision.

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