The Trademark Ordinance Act, 2001 provides for a procedure for opposition to an application for registration of a trademark.
On publication of the trademark in the Trademarks Journal, any person can oppose as to the registration of the said trademark by filing a Notice of Opposition within the prescribed period of 60 days from the date the Trademarks Journal is made available to the public.
The following can be grounds for opposition:
- relative grounds (based on proprietary rights, e.g., conflicting prior registration);
- absolute grounds (based on non-proprietary rights, e.g., descriptiveness, non-distinctiveness);
- bad faith (e.g., deceptiveness, disparagement);
- breach of copyright;
- rights under Article 6bis of the Paris Convention (notorious or well-known mark);
- rights in a company name;
- rights under Article 8 of the Paris Convention (trade names);
- registered design rights;
- rights in a personal name;
- unauthorized use of specially protected emblems or national insignia..
Once an opposition is filed against a trademark in Pakistan, a copy of Notice of Opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to file a counterstatement within 30 days (or within a period not exceeding 60 days in aggregate) of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned.
Further, a copy of Counter Statement so filed is served to the Opponent by the Trademark Registry and the Opponent may if deems necessary files a rejoinder within 30 days of receipt of the notice forwarded by the Registry.
Thereafter the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter and an opportunity of being heard is given to both the parties, after which the matter is decided accordingly.