Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Intellectual Property (2nd edition)
The holders of an “exclusive registered license” of a patent, utility model right, trademark right or design right are eligible to seek an injunction against or compensation for damages from the infringer of the exclusive registered license. The holders of other types of licenses, on the other hand, are generally not in the position to make such claims. However, there are court decisions which found that the holders of an exclusive non-registered license are eligible to seek compensation for damages depending on the circumstances.
The UAE IP Laws do not differentiate between exclusive and non-exclusive licensees in respect of the enforcement of the licensed rights.
In this respect, the Patent and Design Law specifies that a licensee has the right to enforce its recorded licensed rights against a third party infringer provided that he has notified the patentee of such infringement by registered letter and the patentee does not initiate proceedings within 30 days from the notification date.
Both licensees give the same rights to enforce the licensed intellectual property rights. However, such right can be limited completely or partially according to what the parties agreed.
Patent: The Indian patent law provides similar rights to the exclusive license holder such as those of the patentee and such an exclusive licensee has the right to initiate an infringement suit against an infringer if an act of infringement is committed after the date of the license.
Trade mark: in terms of the exclusive and non-exclusive licensees, there is no difference in terms of enforcement.
Copyright: No difference in terms of the enforcement rights granted.
Designs: A non-exclusive licensee does not possess the right to claim for such infringement. This condition is also applicable for registered designs.