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Defend your brand or oppose infringing marks in the Trade Marks Journal. Learn Form TM-5, TM-8 Counter-Statements, evidence affidavits, and hearings.
By Syed Asad Hussain Zaidi · 8 September 2026
Author Note / Last Updated: Updated September 2026 by Syed Asad Hussain Zaidi | Advocate High Court | Senior IP Litigation Counsel. Passing substantive examination before an examiner at the Trade Marks Registry (TMR) of IPO-Pakistan does not guarantee that a trademark will proceed to registration. Under the Trade Marks Ordinance, 2001 and the Trade Marks Rules, 2004, every accepted application must undergo public scrutiny through publication in the official monthly Trade Marks Journal. Publication triggers a strict, non-extendable 60-day statutory opposition window. During this critical period, any third party—whether a market competitor, an existing registered trademark owner, or a prior user of an unregistered common-law mark—possesses the statutory right under Section 28 to challenge the application by filing a formal Notice of Opposition on Form TM-5. Opposition proceedings represent a rigorous, quasi-judicial litigation mechanism conducted directly before the Registrar of Trade Marks or designated Assistant Registrars. The proceeding mirrors a full civil trial: it requires statutory pleadings, evidentiary affidavits, formal cross-examination protocols, and oral arguments backed by High Court and Supreme Court case law. Whether you are an established brand owner seeking to block a copycat mark from acquiring statutory protection, or an applicant whose pending mark has been attacked by a predatory competitor, understanding the mechanics of Form TM-5 (Notice of Opposition) and Form TM-8 (Counter-Statement) is vital to securing your commercial rights. --- The Statutory Framework: Section 28 & Rule 30 The opposition mechanism is anchored in Section 28 of the Trade Marks Ordinance, 2001, read alongside Rules 30 through 43 of the Trade Marks Rules, 2004: --- Grounds for Opposition: Building a Form TM-5 Notice An opponent filing Form TM-5 cannot simply rely on generalized commercial grievance. The Notice of Opposition must articulate specific statutory grounds under the Trade Marks Ordinance, 2001. These fall into two foundational categories: A. Relative Grounds of Refusal (Section 17) The overwhelming majority of oppositions are grounded in Section 17 (Relative Grounds), wherein the opponent claims priority over the contested mark: Identical Mark for Identical Goods (Section 17(1)): The applied mark is identical to the opponent’s prior registered trademark for the exact same goods or services. Deceptive Similarity & Likelihood of Confusion (Section 17(2)): The applied mark is confusingly similar (visually, phonetically, or conceptually) to an earlier mark, creating a tangible likelihood of deception among the ordinary consumer of average intelligence. Well-Known Mark Dilution (Section 17(4)): Even if the goods fall into totally different Nice classes, the opponent’s brand is a "well-known mark" in Pakistan or internationally, and registration of the applied mark would unfairly trade upon or dilute its established reputation (e.g., attempting to register "Rolex" for cement or "Ferrari" for clothing). B. Absolute Grounds of Refusal (Section 14) An opponent can also challenge the mark on structural legal grounds: Devoid of Distinctive Character (Section 14(1)(a)): The mark lacks inherent distinctiveness and should remain in the public domain. Exclusively Descriptive or Customary (Section 14(1)(b) & (c)): The mark merely describes the nature, quality, quantity, geographical origin, or intended purpose of the goods (e.g., attempting to monopolize "Super Pure" for cooking oil or "Kashmir" for apples). Deceptive or Misleading (Section 14(3)(a)): The mark is likely to deceive the public as to the nature, quality, or geographical origin of the product. Bad Faith & Passing Off (Section 14(3)(b) / Section 17(5)): The applicant had prior knowledge of the opponent’s mark (e.g., an ex-employee, distributor, or manufacturer) and fraudulently filed the mark in bad faith to hijack the original creator's goodwill. --- Filing Form TM-5: Timing, Fees & Structure The Non-Extendable 60-Day Clock The publication of the monthly Trade Marks Journal on the IPO portal marks the statutory start date. Under Section 28(1), the Notice of Opposition must be filed within two months (60 calendar days) from the date of publication. Critical Deadline Rule: The 60-day deadline is strictly enforced. If an opponent misses this window, the Registrar has no discretionary power to entertain a belated TM-5 unless a formal extension request (Form TM-56) was filed prior* to the expiration of the initial 60 days, demonstrating valid statutory grounds (such as settlement negotiations or obtaining power of attorney from a foreign parent company). Mandatory Requirements for Form TM-5: Form: Official Form TM-5 executed in duplicate. Government Fee: Rs. 9,000 payable to IPO-Pakistan via 1Link/PSID. Grounds of Opposition: A detailed statement of facts, verified on oath, setting forth the opponent’s prior registrations, commercial use timeline, market turnover, and specific statutory paragraphs invoked under Sections 14 and 17. Power of Attorney (Form TM-48): Executed by the opponent in favor of an Advocate High Court on stamped paper. --- Defending the Mark: Drafting Form TM-8 (Counter-Statement) Once the Registrar reviews Form TM-5 for clerical compliance, an official copy is formally served upon the applicant (or their registered advocate of record). The Fatal 2-Month Default Rule Under Section 28(2), the applicant has strictly two months from the date of receipt of the Notice of Opposition to file a Counter-Statement on Form TM-8. WARNING: Unlike civil court proceedings where delayed written statements can often be condoned with minor costs, the trademark statutory clock is draconian. If the applicant fails to file Form TM-8 within two months, the application is deemed by law to be abandoned, and the trademark is permanently expunged from the registry docket. Strategic Defenses in Form TM-8: When drafting the Counter-Statement, the applicant must respond to every paragraph of the opponent's allegations with specific legal defenses: Plea of Honest Concurrent User (Section 19): Demonstrating that the applicant adopted the mark honestly in a distinct commercial geography and has operated concurrently alongside the opponent for years without instances of actual market confusion. Prior Commercial User (Section 25 / Common Law Priority): Proving with documentary evidence that the applicant commenced commercial use in Pakistan prior to the opponent’s registration or filing date. Under Pakistani law, the prior user has a superior common law right over a subsequent registrant. Differences in Trade Channels & Customer Demographic: Establishing that although the goods may fall into the same broad class, their end-users, price points, and marketing channels are radically different, eliminating the likelihood of consumer confusion (e.g., expensive prescription medical equipment sold exclusively to surgeons vs. disposable consumer bandages sold in corner pharmacies). Anti-Dissection Rule & Composite Marks: Arguing that the marks must be compared as an integrated whole rather than dissected into individual syllables. Minor phonetic commonality in a descriptive prefix does not establish deceptive similarity if the overall visual composite is distinct. --- The Evidentiary Phase: Rules 32, 33 & 34 Once Form TM-8 is accepted, the proceeding transitions into formal evidentiary submissions under the Trade Marks Rules, 2004: Rule 32: Opponent's Evidence in Support of Opposition (2 Months) The opponent must file documentary evidence in the form of an Affidavit in Evidence sworn before an Oath Commissioner or Notary Public. Evidence Required: Earliest tax returns, audited balance sheets showing sales turnover, advertising expenditure vouchers, customer invoices, trade directory listings, and sample packaging. If the opponent fails to file evidence or intimate reliance on the TM-5 pleadings within two months, the opposition is deemed abandoned. Rule 33: Applicant's Evidence in Support of Application (2 Months) Upon receipt of the opponent’s evidence, the applicant has two months to file their Affidavit in Evidence in Support of the Mark. Evidence Required: Proof of continuous domestic sales, consumer reviews, distribution agreements across provincial markets, and trademark registration certificates obtained in foreign jurisdictions. Rule 34: Opponent's Evidence in Reply (Strictly Confined to Rebuttal) The opponent has one month to submit a final rejoinder affidavit, strictly confined to matters raised in the applicant's evidence. --- The Final Hearing & Registrar's Quasi-Judicial Order Upon completion of the evidentiary record, the Registrar issues an official notice fixing the matter for a Contested Hearing at the relevant regional registry (Karachi, Lahore, or Islamabad). Hearing Mechanics The proceeding is conducted by the Registrar or Assistant Registrar sitting as a quasi-judicial tribunal under Section 9 of the Trade Marks Ordinance, 2001. Counsels for both parties present comprehensive oral arguments referencing landmark High Court and Supreme Court precedents (e.g., PLD, CLD, SCMR* authorities on deceptive similarity, consumer intelligence tests, and passing off). The Judgment: The Registrar issues a comprehensive written order: Opposition Allowed: The trademark application is rejected and refused registration. Opposition Dismissed: The trademark application is accepted and proceeds to registration. Conditional Acceptance: The Registrar orders acceptance subject to statutory disclaimers (Section 16) or geographical/specification limitations. --- Judicial Appellate Remedies: High Court Appeals (Section 114) The Registrar's final order is not final. Under Section 114 of the Trade Marks Ordinance, 2001, any party aggrieved by a decision of the Registrar possesses the statutory right to file an Intellectual Property Appeal before the High Court (e.g., Sindh High Court or Lahore High Court) within two months of the date of the order. In the High Court, the appeal is heard by a specialized Commercial/IP Division Bench, which possesses the legal jurisdiction to stay the Registrar’s order, re-evaluate evidentiary findings, or direct the registry to cancel or register the mark. --- Key Tactical Checklist for Opposition Litigation [ ] Track Journal Publications: Establish an active trademark watch service monitoring every monthly publication of the Trade Marks Journal. [ ] Calendar Day 60 Strictly: Never wait until the final week to file Form TM-5; ensure government fees and Power of Attorney (TM-48) are ready. [ ] Enforce 2-Month TM-8 Defense: If your mark is opposed, acknowledge receipt immediately and instruct counsel to file Form TM-8 to avoid statutory abandonment. [ ] Assemble Audited Financials: Support evidence affidavits with FBR tax declarations, sales invoices, and verifiable advertising expenditures. [ ] Evaluate Settlement Opportunities: Assess whether a coexistence agreement, specification carve-out, or statutory disclaimer can resolve the dispute amicably before escalating to High Court appeals. --- Conclusion: Defending Market Exclusivity Opposition proceedings represent the definitive proving ground for brand value in Pakistan. For brand owners, proactively opposing conflicting applications prevents brand dilution and consumer confusion. For applicants, aggressively defending against predatory oppositions protects hard-earned market identity and enterprise value. Facing a pending trademark opposition or looking to challenge a copycat mark published in the Trade Marks Journal? Consult an experienced High Court IP advocate to prosecute or defend your case with strategic precision.