INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
6.3 Registration or Recording of an Assignment or Licence In India, while assignments and licences are valid even without registration, it is strongly rec - ommended to register them. Registration helps minimise risks such as disputes over priority, unenforceability, or conflicts with later recorded assignments or licences. It ensures legal cer - tainty, provides clarity, and establishes priority over subsequent claims. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits The Limitation Act 1963 sets out the statute of limitations for filing infringement actions. In most civil cases, the statute of limitations runs for three years from the date of the first breach of rights. An infringement proceeding, on the other hand, necessitates the use of a deceptively similar mark by the defendant. Because each instance of usage of such a mark gives rise to a new cause of action, the three-year limit does not apply in such cases ( Timken Company v Tim- ken Services Private Ltd , 2004 (28) PTC 121 SC). 7.2 Legal Claims for Infringement Lawsuits and Their Standards Based on the level of infringement, various strat - egies could be devised on a case-by-case basis, which could include obtaining and executing legal proceedings, serving the opposite party with cease-and-desist notices, and/or initiating pre-litigation mediation proceedings. The trade mark owner can pursue infringement actions or passing off in the competent court for civil relief such as:
• Non-exclusive licence: Allows the licensor to license the trade mark to multiple licensees while continuing to use it themselves. Perpetual Licences A perpetual licence is defined as one that remains valid indefinitely, provided it is explicitly stated in the agreement. • Copyright: A licence cannot exceed the term of the copyright (lifetime of the author plus 60 years for literary, dramatic, musical or artistic works). • Trade marks: Perpetual licences are allowed, subject to the condition that the trade mark registration is renewed every ten years to remain valid. Archival Rights • Copyrights: Licences can include archival rights, allowing the licensee to store, repro - duce and retrieve the licensed material for specified purposes. These rights must be clearly defined in the agreement. • Trade marks: Although archival rights are less relevant for trade marks, agreements may include provisions for maintaining historical usage records. Licensing of Applications for IP IP applications, such as patents, trade marks, copyrights and designs, can be licensed even before registration is granted. Licensing of applications must comply with applicable laws and may include restrictions or conditions to protect the interests of the appli - cant and the licensee.
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