Chapter VI - Use of Trade Marks and Registered Users
Section 52
Section 52: Registered user’s infringement proceedings
A registered user may sue for infringement in its own name, subject to the parties’ agreement and the requirement to join the proprietor as defendant.
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Need advice on Section 52?
This article is for general information. Refer to the Trade Marks Act, 1999 official text for the official provisions. If you need professional advice for your situation, contact Bizeneed.
Statutory text
Bare law
(1) Subject to any agreement subsisting between the parties, a registered user may institute proceedings for infringement in his own name as if he were the registered proprietor, making the registered proprietor a defendant and the rights and obligations of such registered user in such case being concurrent with those of the registered proprietor.
(2) Notwithstanding anything contained in any other law, a registered proprietor so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
Rule and business relevance
The user’s rights and obligations are concurrent with the proprietor’s as stated. A proprietor joined only in that capacity is not liable for costs unless it appears and participates.
Limits and related provisions
Distinguish a registered user from another permitted user under section 53. Check the agreement before asserting an unconditional right to institute proceedings.
Hypothetical business example
Hypothetical example: A registered licensee identifies infringement and reviews the licence’s litigation terms before filing in its own name with the proprietor joined as required.
Practical decision flow
Verify current registered-user status.
Read the subsisting agreement on proceedings.
Join the proprietor appropriately and assess participation and costs.
Applying the Act and current procedure
Read the statutory rule together with the applicable Trade Marks Rules, current Registry directions and the facts of the particular mark. Forms, fees and procedural requirements should be checked against their current official source before filing.
Practical checklist
Do
- Verify current registered-user status.
- Read the subsisting agreement on proceedings.
- Join the proprietor appropriately and assess participation and costs.
Avoid
- Distinguish a registered user from another permitted user under section 53. Check the agreement before asserting an unconditional right to institute proceedings.
Glossary
- Concurrent rights
- The user and proprietor’s corresponding rights and obligations in the stated case.
- Joined proprietor
- The registered proprietor made a defendant under subsection (1).
Frequently asked questions
Does the agreement matter?
Yes. The right is expressly subject to the subsisting agreement.
Must the proprietor be included?
The section requires making the proprietor a defendant.
Is a merely joined proprietor automatically liable for costs?
No. The cost exception depends on appearance and participation.
Need help applying this provision to your situation?
Contact BizeneedLast updated 10 October 2026