| (1) | Any interested person who can show that the rights in a registered design are being abused, may apply to the court in the prescribed manner for the granting of a compulsory licence in respect of the registered design. |
| (2) | The rights in a registered design shall be deemed to be abused if— |
| (a) | articles embodying the registered design are not available to the public in the Republic on a commercial scale or to an adequate extent after the registration date, and there is in the opinion of the court no satisfactory reason therefor; |
| (b) | the availability of articles embodying the registered design in the Republic on a commercial scale or to an adequate extent is being prevented or hindered by the importation of such articles; |
| (c) | the demand for the articles embodying the registered design in the Republic is not being met to an adequate extent and on reasonable terms; |
| (c) | by reason of the refusal of the registered proprietor to grant a licence or licences upon reasonable terms, the trade or industry or agriculture of the Republic or the trade of any person or class of persons trading in the Republic, or the establishment of any new trade or industry in the Republic, is being prejudiced, and it is in the public interest that a licence or licences should be granted; or |
| (e) | the demand in the Republic for the articles embodying the registered design is being met by importation and the price charged by the registered proprietor, his licensee or agent for the said articles is excessive in relation to the price charged therefor in countries where the said articles are manufactured by or under licence from the registered proprietor or his predecessor or successor in title. |
| (3) | The registered proprietor or any other person appearing from the register to be interested in the registered design may in the prescribed manner oppose the application. |
| (a) | The court may order the grant to the applicant of a licence on such conditions as it may deem fit, including a condition precluding the licensee from importing into the Republic any articles embodying the registered design. |
| (b) | If the court is of the opinion that an order directing the grant of a licence is not justified, it may refuse the application. |
| (5) | If the only abuse found by the court to have been established is that set out in subsection (2) (a), any licence granted shall be non-exclusive but shall not be transferable except to a person to whom the business or the part of the business in connection with which the rights under the licence were exercised has been transferred. |
| (6) | In all other cases the court may grant an exclusive licence if, having regard to all the circumstances of the case, it considers it justified, and for that purpose the court may revoke any existing licence on such conditions as it may deem fit. |
| (7) | In determining the conditions on which any licence is granted the court shall have regard to all relevant facts, including the risks to be undertaken by the licensee, the research and development undertaken by the registered proprietor or his predecessor and the terms and conditions usually stipulated in similar licence agreements in respect of registered designs between persons who voluntarily enter into such agreements. |
| (8) | Any order of the court under this section shall be made with a view to avoiding the abuse found by the court to have been established. |
| (9) | The court may amend or revoke any licence granted under this section. |
| (10) | Subject to the provisions of subsection (11) and to the conditions that may be attached to the licence, a licensee under this section shall have the same rights and obligations as any other licensee under a registered design. |
| (11) | An exclusive licensee under this section may, subject to the conditions attached to the licence, institute any proceedings which may be necessary to prevent infringement, and to recover damages as a result of infringement, of the design in question, as if he were the registered proprietor: Provided that— |
| (a) | the registered proprietor concerned shall be joined as a party to such proceedings; |
| (b) | the registered proprietor may join in the proceedings either as co-plaintiff or as co-defendant; and |
| (c) | the registered proprietor shall not be liable for any costs in connection with such proceedings unless he enters an appearance and takes part in those proceedings. |
| (12) | Notwithstanding the provisions of subsection (11), a registered proprietor whose design is the subject of an exclusive licence in terms of this section may institute any proceedings which are necessary to prevent infringement and to recover damages as a result of such infringement: Provided that— |
| (a) | the exclusive licensee shall be joined as a party to such proceedings; |
| (b) | the exclusive licensee may join in the proceedings either as co-plaintiff or as co-defendant; and |
| (c) | the exclusive licensee shall not be liable for any costs in connection with such proceedings unless he enters an appearance and takes part in those proceedings. |
(13)
| (a) | The court may award costs against the applicant or registered proprietor concerned or any person opposing the relevant application whenever it orders the grant of a licence under subsection (4) (a). |
| (c) | In so awarding costs, the court shall inter alia have regard to— |
| (i) | the nature and extent of the abuse found by it to have been established; and |
| (ii) | whether the application for a licence under this section might have been avoided by the grant, by the registered proprietor concerned to the applicant, of a voluntary licence on reasonable terms. |
| (a) | subsections (2) (b), (5), (6), (11) and (12) shall not apply; |
| (b) | the court shall consider that application on its merits in deciding whether or not to grant a licence as provided for in subsection (4); |
| (c) | a licence granted under subsection (4) upon that application shall include a provision that, subject to adequate protection of the legitimate interests of the licensee, the licence shall, on application by the registered proprietor of the registered design, be terminated if the circumstances which led to its grant cease to exist and, in the opinion of the court, are unlikely to recur; and |
| (d) | a licence granted under subsection (4) upon that application shall be non-exclusive and shall not be transferable except to a person to whom the business or part of the business in connection with which the rights under the licence were exercised has been transferred. |
[Sub-section (14) added by section 74 of Act No. 38 of 1997.]
