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Domain Names

Definition: A domain name is a mark which is a user friendly substitute for an Internet address.
The provisions of Trademarks Ordinance 2001 apply to domain names subject to the provisions of the Third Schedule.

Requirements for registration

  1. A domain name if used as a source identifier may be registered as a trade mark in respect of relevant goods or services.
     
  2. The applicant for registration of domain name shall show that he offers goods or services via internet using the domain name. such evidence shall be in the form of specimen showing use of the domain name as a source identifier.

    Explanation
    - For the purposes of this para, use of a domain name shall be taken as source identifier if it is used on internet to distinguish goods or services of one undertaking from the other provided that use of a domain name as a mere directional reference, similar to use of a telephone number or business address shall not be taken as use of the domain name as a source identifier.
     
  3. Provisions may be made by rules for further identification and classification of computer related services associated with internet.

Indication of geographical origin

  1. Notwithstanding the provisions of clause (c) of sub-section (1) of section 14, a domain name may be registered which consist of marks or indications which may serve, in trade, to distinguish the geographical origin of the goods or services.
    Domain name not to be misleading as to character or significance- (1) A domain name shall not be registered if the public is liable to mislead as regards the character or significance of the mark, in particular, if it is likely to be taken to be something other than a domain name.
  2. The Register may, accordingly, require that a mark in respect of which application has been made for registration include some indication that it is a domain name.
  3. Notwithstanding the provisions of sub-section (7) of section 27, an application may be amended so as to comply with any such requirement.

Procedure for acceptance, opposition and registration

The provisions of this Ordinance for acceptance, registration and opposition as they apply to trade mark shall also apply to the domain names.

Term of registration and renewal

Notwithstanding the provisions of section 32 and 33, a domain name shall be registered for a period of five years form the date of registration and may be renewed for further periods of like term, as long as, the domain name is in actual use on internet.

 

Licensing

Definition: An IP licence is an agreement between the owner of a specific IP right and a third party, in which the IP owner (licensor) provides the third party (licensee) with the right to use (part of) its IP rights for a limited time, for certain products, in an often restricted geographic area.

Managed correctly, it can provide businesses with an important revenue stream, as well as offering them a cost-effective method to extend their brand into new product or service areas, and into new markets.

Exclusive License in Trademarks:

An "exclusive license" means a license whether general or limited, authorizing the licensee to the exclusion of all other persons including the person granting the license, to use a registered trade mark in the manner authorised by the license and the expression "exclusive licensee" shall be construed accordingly.

An exclusive licensee shall have the same rights against a successor in title who is bound by the license as he has against the person granting the license.

Exclusive License in Copyright:

A license which confers on the licensee or on the licensee and persons authorized by him, to the exclusion of all other persons (including the owner of the copyright), any right comprised in the copyright in a work and "exclusive licensee" shall be construed accordingly;

Exclusive License in Patents:

Exclusive licence” means a licence from a proprietor of, or an applicant of, a patent which confers on the licensee, or on the licensee and persons authorized by him, to the exclusion of all other persons, including the proprietor or applicant, any right in respect of the invention, to which the patent or application relates, and “exclusive licensee” and “non-exclusive licensee” shall be construed accordingly;

Compulsory License in Patents:

Non-voluntary License/Compulsory License: a non-voluntary license is issued to prevent the abuses which result from the exercise of the rights conferred by the patent, for example, failure to work.

A non-voluntary license shall not be issued if the owner of the patent satisfies the Controller that circumstances exist which justify the non-exploration or insufficient exploitation of the patented invention in Pakistan.

 

Franchising

Pakistan does not have any specific law governing the issues relating to franchising. Nevertheless, Pakistan’s Supreme Court has endorsed the definition of franchise as "a privilege granted or sold, such as to use a name or to sell products or service. The right given by a manufacturer or supplier to a retailer to use his product and name on terms and conditions mutually agreed upon." In its simplest terms, a franchise is a license from owner of trademark or trade-¬name permitting another to sell a product or to serve under that name or mark.

 

Litigation

Litigation of IP matters takes several forms. One involves patents, which cover inventions on designs and products, as well as the processes through which they are manufactured or used. Patent infringement refers to the unauthorized use of a patented invention, at which point litigation can arise.

Trademarks and copyrights also can be infringed. A trademark can be a symbol, logo, word, sound, color, or name that identifies the source of a product and distinguishes it from that of others. Copyrights protect works of authorship, such as writings, music, and art. Copyrights and trademarks grant holders exclusive rights to use their works, and an unauthorized use can lead to litigation. Trade secrets are information that companies keep secret to give them an advantage over competitors. Misappropriation of trade secrets is a typical litigation scenario when such information is taken without authority.

Licensing disputes can arise that relate to any of these protections. A licensing agreement is essentially a contract between an IP rights owner and an entity authorized to use such rights, usually in exchange for an agreed upon fee or royalty. The extent to which parties do or do not follow the terms of that contract often engenders this type of litigation.

Other kinds of IP litigation can include variations of the above, including trademark dilution, domain name disputes, domestic and foreign customs seizures, and unfair competition.

IP assets are a valuable foundation of any successful venture, so when unauthorized use occurs, disputes are bound to arise.