The trade mark licensing ‘black hole’ (Lifestyle Equities v Sportsdirect)
IP analysis: This case is of interest to trade mark lawyers who advise clients on and litigate trade marks, particularly where the trade marks are licensed. In the UK, trade mark licenses can be registered, which confers benefits on the licensee, but there are also more subtle benefits for the licensor, which are explored in this judgment. Although the Trade Marks Act 1994 (TMA 1994) sets out the rules of the statutory licensing scheme, its effects and who it applies to, practical questions can and do arise. This case provides a close analysis of the scheme, and answers three discrete questions. First, sub-licensees of an exclusive license need not necessarily be registered to recover damages; second, non-exclusive sub licensees may not be joined to proceedings; and third, while late registration of a licence can cure non-registration, there are significant safety mechanisms to prevent over-recovery or improper recovery of damages. Written by Sam Fisher, associate at CMS Cameron McKenna Nabarro Olswang LLP.