PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
area. To record an assignment, an application must be filed on Form TM-23 or TM-24 along with the pre - scribed fee, supported by relevant documents such as the registration certificate, incorporation documents and a board resolution, where applicable. For validity, the assignment must be recorded with the Registrar of Trademarks. Upon satisfaction that the requirements are met and no third-party rights are prejudiced, the Registrar issues a certificate of assignment in favour of the assignee. Section 69 (3) of the Ordinance expressly allows partial assignments limited to specific goods, services, modes of use, or localities. Assignment of a Copyright Section 14 of the Copyright Ordinance permits the assignment of copyright, wholly or partially, in exist - ing works and in future works, subject to conditions imposed by the owner. Assignments may be limited in duration or scope and, in the case of future works, take effect only once the work comes into exist - ence. Where the author is also the copyright owner, an assignment is statutorily limited to ten years, after which rights revert to the author or, if deceased, to the author’s heirs or legal representatives. This limitation does not apply to assignments in favour of govern - ment, educational, charitable, religious or non-profit institutions. In unpublished works, assigned for pub - lication, rights revert to the author if the work is not published within three years. Upon assignment, the assignee is treated as the own - er of the assigned rights, while the assignor retains ownership of unassigned rights. The author’s moral rights remain enforceable during the assignment period. Any aggrieved owner or publisher may apply to the Copyright Board within one year to challenge adverse assignment terms, whose decision is binding. Assignments must be in writing and may be recorded with the Registrar of Copyright. 6.2 Licensing Requirements or Restrictions Licensing of a Trade Mark A trade mark may be licensed exclusively or non- exclusively, in whole or in part, limited by conditions or unlimited, and may be governed by a specific term or be perpetual. Terms of licence depend on the under -
standing and agreement of the parties, and while it is not necessary to register a licence agreement, it may be recorded with the Trade Marks Registry under Sec - tion 70 (2)(b) of the Trade Marks Ordinance. Licensing of Copyright Section 35 of the Ordinance provides that the copy - right owner has the right to license their work to third parties. The owner of the copyright in any existing work or the prospective owner of the copyright in any future work may grant any interest in the copyright by licence in writing, signed by the author or their duly authorised agent. 6.3 Registration or Recording of an Assignment or Licence Section 70 of the Trade Marks Ordinance requires that any registrable transaction affecting a registered trade mark be recorded in the Trade Marks Register. Until such recordal is made, the transaction is ineffective against third parties acquiring a conflicting interest. Further, a person claiming rights as a licensee is not entitled to statutory protections, such as those relating to assignment, infringement remedies or surrender of the mark, until the transaction is duly recorded with the Registry. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits As per the Limitation Act, 1908, a claim of infringe - ment shall be made within three years of the date of knowledge of the infringement; for trade marks, Sec - tion 81 provides for a period of five years from date of knowledge. 7.2 Legal Claims for Infringement Lawsuits and Their Standards In Pakistan, trade mark and copyright owners have multiple enforcement options, depending on whether the rights are registered. Trade mark infringement involves the unauthorised use of an identical or decep - tively similar mark to exploit goodwill and gain com - mercial advantage. A claim for trade mark infringe - ment requires a valid registration; in the absence of
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