PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
conditions or unlimited, and may be governed by a specific term or be perpetual. Terms of licence depend on the understanding and agreement of the parties; while it is not necessary to register a licence agreement, it may be recorded with the Trade Marks Registry under Section 70(2)(b) of the Trade Marks Ordinance. Licensing of Copyright Section 35 of the Copyright Ordinance provides that the copyright owner has the right to license their work to third parties. The owner of the cop - yright 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 author - ised agent. No specific prohibition exists in the Trade Marks Ordinance. 6.3 Registration or Recording of an Assignment or Licence Section 70 of the Trade Marks Ordinance requires that a person entitled to an interest in or under a registered trade mark due to a regis - trable transaction must have the details of that transaction entered in the trade marks register. Therefore, until an application has been made for the registration of these particulars, the transac - tion will be ineffective against a person acquiring a conflicting interest. Moreover, until an application has been made for the registration of the transaction, a person claiming to be a licensee will not be afforded protections under the following: • provisions permitting the assignment of trade marks (Section 69);
• provisions safeguarding the rights of the licensee in cases of infringement (Section 77); and • provisions allowing the surrender of trade marks by the proprietor (Section 79). 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits As per the Limitation Act, 1908, a claim of infringement should be made within three years of the date of knowledge of the infringement; for trade marks, Section 81 provides for a period of five years from the date of knowledge. 7.2 Legal Claims for Infringement Lawsuits and Their Standards In Pakistan, both trade mark and copyright own - ers have various options to address infringement issues. The nature of these claims may differ based on the registered or unregistered status of the IP. Trade mark infringement can occur through direct infringement, where an identical or deceptively similar mark is being used for the purposes of encroaching on goodwill, making undue profits and commercial interests therein. It is pertinent to note that, for a claim of trade mark infringement, a trade mark registration is mandatory; in the absence thereof, any use can be challenged only on the basis of passing off. In either case, the plaintiff must show a prima facie, case which includes substantiating rights through prior use (passing off), trade mark reg - istration, proof of potential irreparable loss and a balance of inconvenience. Copyright infringement may involve unauthor - ised reproduction, distribution or display of pro -
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