PAKISTAN Law and Practice Contributed by: Ali Kabir Shah, Hanya Haroon, Talib Ali Shah and Saif Ahmed, Ali & Associates
The law further prohibits registration for marks containing scandalous designs, subject matter likely to deceive or cause confusion, or elements contrary to existing laws or morality. Notably, a trade mark may escape refusal based on lack of distinctiveness, descriptiveness or customa - riness if it has acquired a distinctive character through prior use or is recognised as a well- known trade mark before the application date. Moreover, registration is barred for marks made in bad faith, reflecting the importance of ethical considerations in trade mark applications. When objections are raised, the applicant is provided with an opportunity to respond and address the cited concerns. The general basis for overcoming objections depends on the nature of the objection. Applicants typically respond to objections by submitting a detailed written response addressing each concern and providing supporting documentation. 4.11 The Madrid System The Trade Marks (Amendment) Act 2023 intro - duced international registration under the Madrid Protocol. It is important to note that, while the substantive law is the same for inter- national registrations, procedural requirements have been introduced wherein an application must be examined within 18 months of filing, 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 published and advertised in the Trade Marks Journal, applications allow any individual to oppose the registration by filing a notice of
opposition in the prescribed form (ie, TM-5) in accordance with Rule 30 of the Trade Marks Rules 2004. This notice of opposition must be submitted within two months from the date of advertisement/re-advertisement. A request for extension of time to file an opposi - tion may be submitted with the Registrar, who may allow two extensions of one month each. Additionally, pursuant to Rule 80(5) of the Trade Marks Rules, a request can be made for exten - sion of time for filing the opposition after the opposition period (including extensions) has expired. In such cases, it is at the discretion of the Registrar to provide a further extension upon satisfaction that the extension would not disad - vantage any other person or party affected by it. Statutory limitations come into play from the date of knowledge of the applicant. The general law of limitations is three years from the date of knowledge; however, Section 81 of the Trade Marks Ordinance provides that an owner of an earlier trade mark or other earlier rights who has acquiesced for a continuous period of five years from the date of registration in the use of a reg - istered trade mark in Pakistan, being aware of that use, shall cease to have any entitlement on the basis of that earlier trade mark or other right. Section 73(a) stipulates that any mark which has not been put to bona fide use for a period of five years following the date of completion of registration is subject to revocation/cancellation. However, there is no such revocation provision under copyright laws. 5.2 Legal Grounds for Filing an Opposition or Cancellation Section 29 of the Trade Marks Ordinance out - lines the grounds for filling an opposition, as follows:
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