Newsletter
CAN TRADEMARK LICENSEES FILE CRIMINAL COMPLAINTS?
Article 69 of the amended Trademark Act, which took effect on 28 November 2003, provides that if a trademark licensee has registered the li-censing arrangement with the trademarks au-thority, and its right of use is infringed, the pro-visions on civil remedies available to a trade-mark owner apply mutatis mutandis to the li-censee.
However, the Act is silent as to whether the right of a trademark owner to institute a criminal prosecution also applies mutatis mutandis to a licensee. With regard to this issue, the Intellec-tual Property Office (IPO) has stated that trademark infringement is an indictable criminal offense, and therefore an exclusive trademark licensee may report such offense to law en-forcement agencies, or file a criminal complaint as victim, in accordance with the relevant provi-sions of the Code of Criminal Procedure (CCP).
However, this interpretation refers to an exclu-sive licensee only. A non-exclusive licensee is generally considered not to be a victim within the meaning of the CCP, and thus it remains uncer-tain whether a non-exclusive licensee can file a criminal complaint as was permissible under the old Trademark Act.