Once the trademark application has been accepted for registration, it is then published in the Trade Marks Journal and open for opposition; that is, objections to its registration.
Below are the basic procedures that apply for either opposing a trademark application or defending an application as the applicant.
Not familiar with the process for filing a trademark application? Refer to our guide on how to register a trademark in Pakistan.
Publication and Opposition
According to section 28 of the Trade Marks Ordinance, 2001, when an application for registration of a trademark is accepted, it shall be published in the Journal by IPO-Pakistan. This is the official notice of the acceptance of the trademark application, and any person who considers that the trademark should not be registered may file notice of opposition with the Registrar within two (2) months of the publication date. Upon request and payment of the additional fee, the Registrar may allow an extension of up to two (2) additional months.
Basis for Opposition
Section 29 of the Ordinance provides that a trademark may be objected to on any of the grounds that the application for its registration could have been objected to, except for the ground relating to graphical representation (see below: Grounds for Refusal at time of Application). Possible grounds for opposition include:
- The applicant has no intention to use or authorize use of the trademark in Pakistan or to assign the trademark to a body corporate for use in Pakistan
- The applicant is not the proprietor of the trademark
Sequence of Procedures
- Notice of Opposition (Form TM-5): The party filing the opposition (opponent) shall deliver to the Registry a notice of opposition in writing, accompanied by a statement of the grounds for opposition, within the period of two (2) months mentioned above.
- Service of Notice: IPO-Pakistan will notify the trademark applicant of the opposition by serving them with a copy of the notice of opposition.
- Counter-Statement (Form TM-6): The trademark applicant shall then file a counter-statement defending the application and setting out any additional facts in reply to the opposition. The counter-statement shall be filed by the applicant within one (1) month of service of the notice of opposition (or up to two (2) additional months if the period for filing the counter-statement is extended upon request and payment of the additional fee). If the trademark applicant does not file a counter-statement, the application will be deemed to be abandoned.
- Rejoinder: If a counter-statement is filed, the opponent may then reply to it by way of a rejoinder, which shall be filed within one (1) month of service of the counter-statement (or up to two (2) additional months, if upon request an extension is granted).
- Evidence and Hearing: Both the applicant and the opponent shall provide evidence within the time limit set by the Registrar, and shall be given an opportunity to be heard if they request such an opportunity.
- Decision: Unless the proceedings are discontinued or dismissed, the Registrar shall decide whether or not the trademark should be registered and, if registration is to take place, determine any conditions or limitations upon which registration may be subject.
Correction of Errors in Statements
If a party erroneously states any matter in its notice of opposition, counter-statement, or rejoinder, the Registrar may, at his or her discretion, permit correction of the error if it would be fair to do so.
Notice of Intention to Attend Hearing
If either the applicant or opponent wish to argue the matter in person before the Registrar, each party must file a notice of intention to attend the hearing in the form of TM-7. This will allow the Registrar to set aside time for the hearing.
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
Frequently Asked Questions
How long do I have to oppose a trademark?
Within two (2) months from the date on which it has been published in the Trade Marks Journal. The time can also be extended by up to an additional two (2) months if the extension fee (see above: Fees) is paid to IPO-Pakistan.
What happens if the applicant does not reply to my opposition?
If the trademark applicant does not file a counter-statement, their application will be considered abandoned.
Will my trademark still be registered if it is opposed?
You will defend the trademark application by filing a counter-statement. The Registrar will make a decision on the registration of your trademark after hearing arguments from both parties. It is possible, however, for trademark registration to be denied.
What if I want to argue my case in person before the Registrar?
If you wish to personally argue your case before the Registrar, you must file a notice of intention to attend the hearing using TM-7 form.
If you are facing a trademark opposition and need guidance, our trademark registration service can assist you through the process.
