PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
• lacks distinctiveness; • is descriptive or customary in trade;
• all statutory grounds for refusal (other than lack of graphical representation); • absence of intention to use the mark in Pakistan; • lack of proprietorship; • procedural irregularities or false evidence; • improper pre-acceptance advertisement; and • conflict with a well-known trade mark. Opposition may also be based on likelihood of confu - sion, deception or dilution of another mark’s reputa - tion, as well as misuse of geographical indications. The provision expressly recognises trade mark dilution as a valid ground for opposition. 5.3 Ability to File an Opposition or Revocation/Cancellation Any interested party may file an opposition to a trade mark application in Pakistan and may do so without representation. The term “interested party” is broad and includes individuals, entities or organisations that have a legitimate concern or stake in the registration of the trade mark in question. It is not mandatory for the opponent to hold a trade mark or trade mark reg - istration to file an opposition. However, the opponent should have a genuine interest or grounds for oppos - ing the application – otherwise, the notice of opposi - tion may be dismissed by the Registrar. The official fee for filing a notice of opposition for one application is PKR9,000. With regards to attorney fees, please note that these range between PKR50,000 to PKR250,000 but can vary depending on factors such as the complexity of the case, the grounds of opposi - tion and the specific services provided by the attorney. 5.4 Opposition or Revocation/Cancellation Procedure Trade mark opposition proceedings commence with the filing of a Notice of Opposition on Form TM-5 within two months of the trade mark’s advertisement. The notice sets out the grounds of opposition and is served on the applicant by the Registrar. The applicant must file a counter-statement on Form TM-6 within one month, or within any extended period granted by the Registrar, failing which the application is deemed abandoned. The opponent may then file a rejoinder within one month of receiving the counter-statement.
• consists of functional or value-giving shapes; or • is deceptive, scandalous, contrary to law or moral - ity, or filed in bad faith. Marks failing to meet the statutory definition of a trade mark are also barred. However, such marks may still be registered if they have acquired distinctiveness through prior use or qualify as well known before fil - ing. Applicants are given an opportunity to respond to objections by submitting a reasoned reply supported by evidence. 4.11 The Madrid System The Trade Marks (Amendment) Act 2023 introduced international registration under the Madrid Protocol. It is important to note that, while the substantive law is the same for international registrations, procedural requirements have been introduced wherein an appli - cation must be examined within 18 months of the fil - ing so as to avoid registration without examination as granted under the Madrid System. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Once a trade mark application is published in the Trade Mark Journal, any person may oppose its registration by filing a Notice of Opposition on Form TM-5 within two months of the advertisement, in accordance with Rule 30 of the Trade Marks Rules. The Registrar may grant up to two extensions of one month each. Under Rule 80 (5), further extensions may be allowed at the Registrar’s discretion even after expiry of the opposi - tion period, provided no party is prejudiced. Although not expressly provided by law, a cooling-off period is commonly granted in practice to allow parties time to explore amicable settlement. 5.2 Legal Grounds for Filing an Opposition or Cancellation Section 29 of the Trade Marks Ordinance sets out the grounds on which a trade mark application may be opposed. These include:
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