The Trademark Act stipulates that an exclusive licensee is entitled, within the scope of the licence, to exclude the proprietor and any third party from using the registered trademark. It also stipulates that, unless otherwise prescribed in a licencing contract, an exclusive licensee is entitled, within the scope of the licence, to bring infringement proceedings in its own name.

Whether the so-called 'sole licence' is an 'exclusive licence' is a controversial issue.

The IP Court pointed out in a civil litigation against trademark infringement that the exclusive licence should be limited to the situations where the trademark owner will not use the licensed trademark. The court took an even stricter view on the definition of the 'exclusive licensee' and held that the wording of 'exclusive' or its equivalent should be indicated in the licence agreement. The situation where the trademark owner guarantees granting only one licence is a 'sole licence', which should not be defined as an 'exclusive licence'.

For further information on this topic please contact Ruey-Sen Tsai at Lee and Li Attorneys at Law by telephone (+886 2 715 3300), fax (+886 2 2718 7099) or email (rueysentsai@leeandli.com). The Lee and Li website can be accessed at www.leeandli.com.

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