Once your trademark application is accepted, it doesn’t get registered right away – it’s published in the Trade Marks Journal first, and anyone who thinks it shouldn’t be registered gets a window to formally object. Here’s how that opposition process works, whether you’re opposing someone else’s mark or defending your own application.
Not familiar with the filing process yet? See our guide to registering a trademark in Pakistan first.
How Publication and Opposition Work
Under Section 28 of the Trade Marks Ordinance, 2001, once an application is accepted, IPO-Pakistan publishes it in the Journal – this publication counts as legal notice that the mark has been accepted. Anyone can then file a notice of opposition within two months of that publication date. The Registrar can extend this by up to two further months on request, with the prescribed fee.
Grounds for Opposition
Under Section 29, a trademark’s registration can be opposed on essentially the same grounds an application could have been rejected on in the first place (except that it can’t be represented graphically, which isn’t an opposition ground). Common grounds include:
- The applicant doesn’t intend to use or authorize use of the mark in Pakistan, or to assign it to a body corporate for use there
- The applicant isn’t actually the proprietor of the trademark
Step-by-Step: The Opposition Process
- Notice of Opposition (Form TM-5) – the opposing party files a written notice within the two-month window, including a statement of the grounds for opposition.
- Registrar serves the applicant – IPO-Pakistan sends a copy of the notice to the trademark applicant.
- Counter-Statement (Form TM-6) – the applicant has one month from receiving the notice (extendable by up to two further months) to file a counter-statement defending the application. If they don’t, the application is treated as abandoned.
- Rejoinder – if the applicant files a counter-statement, the opponent can respond with a rejoinder within one month of receiving it (also extendable up to two further months).
- Evidence and hearing – both sides submit evidence within the prescribed time, and the Registrar gives each party an opportunity to be heard if they request one.
- Decision – unless the proceedings are discontinued or dismissed earlier, the Registrar decides whether registration should proceed, and on what conditions or limitations, if any.
If you make a genuine error in your notice, counter-statement, or rejoinder, the Registrar has discretion to allow a correction if it’s fair and reasonable to do so.
Notice of Intention to Attend Hearing
If either party wants to be heard in person during the proceedings, they need to file Form TM-7 – a notice of intention to attend the hearing.
Forms and Fees
- TM-5 – Notice of opposition: Rs. 9,000 per application opposed
- TM-6 – Counter-statement: Rs. 1,500
- TM-7 – Notice of intention to attend hearing: Rs. 600 per party
FAQ
How long do I have to oppose a trademark application?
Two months from the date it’s published in the Trade Marks Journal, with a possible extension of up to two further months if you apply for one and pay the fee.
What happens if the applicant doesn’t respond to my opposition?
If they don’t file a counter-statement within the deadline, their application is deemed abandoned.
Can I still register my trademark if it’s opposed?
Yes – you file a counter-statement defending your application. The Registrar decides after hearing both sides, and registration can still proceed, sometimes with conditions or limitations attached.
What if I want to argue my case in person rather than just on paper?
File Form TM-7, a notice of intention to attend the hearing, so the Registrar knows to schedule you a hearing.
Dealing with an opposition and want expert help? Our trademark registration service can guide you through the process.
