Trademark Opposition in Pakistan: Forms TM-5 & TM-6 Guide

Trademark Opposition In Pakistan: Forms Tm-5 & Tm-6 Guide

Understand trademark opposition in Pakistan: filing Form TM-5 notices, Form TM-6 counter-statements, statutory 2-month deadlines, evidence affidavits, and heari

By Syed Asad Hussain Zaidi · 8 September 2026

Author Note / Last Updated: Updated for 2026–27 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 conclude the registration process. Under the Trade Marks Ordinance, 2001 and the Trade Marks Rules, 2004, every accepted application is published in the official monthly Trade Marks Journal for public scrutiny.

Publication triggers a statutory two-month opposition window. During this period, any person or enterprise possessing legitimate legal interest may challenge the application under Section 28 by filing a formal Notice of Opposition on Form TM-5. The applicant must then defend their mark by submitting a Counter-Statement on Form TM-6.

(Procedural Note on Forms: Form TM-5 and Form TM-6 are the statutory instruments for ordinary trademark opposition proceedings. Forms TM-8 and TM-9 are separate, specialized filings prescribed under Rules 113 and 120 specifically for collective marks and certification trade marks).

This guide provides the full legal procedure, deadlines, evidence requirements, and hearing stages of trademark opposition in Pakistan.

1. Statutory Opposition Workflow (Section 28 & Rules 30–38)

The opposition procedure is governed by Section 28 of the Trade Marks Ordinance, 2001, read alongside Rules 30 through 43 of the Trade Marks Rules, 2004:

| Stage | Action / Statutory Step | Relevant Form & Rule | Timeframe / Deadline | | :--- | :--- | :--- | :--- | | Stage 1 | Journal Publication | Published in monthly Trade Marks Journal | Day 0 (Commencement of opposition window) | | Stage 2 | Notice of Opposition | Form TM-5 (Section 28(1), Rule 30) | Within 2 months of Journal publication | | Stage 3 | Service of Notice | TMR formally transmits notice copy to applicant | Registry processing | | Stage 4 | Filing Counter-Statement | Form TM-6 (Section 28(3), Rule 31) | Within 2 months of receiving TM-5 copy | | Stage 5 | Opponent's Evidence | Evidence by Affidavit (Rule 32) | Within 2 months of receiving TM-6 copy | | Stage 6 | Applicant's Evidence | Evidence by Affidavit (Rule 33) | Within 2 months of receiving opponent's affidavit | | Stage 7 | Opponent's Evidence in Reply | Rebuttal Affidavit (Rule 34) | Within 1 month of receiving applicant's affidavit | | Stage 8 | Oral Hearing & Final Order | Arguments before Registrar (Rule 37) | Hearing notice issued; final decision by Registrar |

Where no opposition is filed within the statutory two-month window (or any extension granted), the application proceeds to registration upon payment of the registration fee (Form TM-11).

2. Grounds for Opposition (Form TM-5)

An opponent must establish recognized statutory grounds under the Trade Marks Ordinance, 2001:

A. Relative Grounds of Refusal (Section 17)

Most oppositions arise under Section 17, where an existing rightsholder claims priority:

  1. Identity or Deceptive Similarity (Section 17(1) & (2)): The contested mark is identical or confusingly similar to an earlier registered mark or pending application in the same or related classes.
  2. Protection of Well-Known Marks (Section 17(4)): The opponent's mark is well known in Pakistan or internationally, and use of the contested sign would take unfair advantage of, or be detrimental to, its distinctive character.
  3. Prior Unregistered Rights & Passing Off (Section 17(5)): The opponent has established prior commercial use and goodwill under common law, such that use of the applied mark would constitute actionable passing off.

B. Absolute Grounds of Refusal (Section 14)

An opponent may also argue inherent legal defects:

  1. Lack of Inherent Distinctiveness (Section 14(1)(a)): The mark is generic or incapable of distinguishing goods.
  2. Descriptiveness (Section 14(1)(b)): The mark consists exclusively of descriptive terms designating the kind, quality, or origin of the product.
  3. Bad Faith Filing (Section 14(3)(b)): The applicant filed the mark dishonestly (e.g., an ex-distributor or former partner attempting to register a principal's mark).

3. The Counter-Statement: Filing Form TM-6

If you are an applicant facing opposition, filing a timely Counter-Statement is mandatory:

4. Evidentiary Phase and Hearing

Opposition proceedings mirror civil trials, conducted through written affidavits:

  1. Evidentiary Affidavits (Rules 32–34): Statements must be sworn by authorized company directors or proprietors and accompanied by documented exhibits (dated invoices, packaging samples, marketing collateral, and sales figures).
  2. Final Hearing (Rule 37): The Registrar of Trade Marks issues hearing notices. Counsel for both parties present legal arguments and cite High Court and Supreme Court precedents.
  3. Decision & Appeal (Section 114): The Registrar issues a written order either allowing the opposition (refusing registration) or dismissing it (granting registration). An aggrieved party has the right to file an appeal before the High Court under Section 114 within the prescribed statutory period.

Frequently Asked Questions

Can the two-month opposition period be extended?

Yes. An opponent may apply for an extension of time by filing Form TM-56 prior to the expiry of the initial two-month period, citing valid reasons such as ongoing settlement discussions or awaiting foreign powers of attorney.

What is the difference between Form TM-6 and Form TM-8?

Form TM-6 is the standard counter-statement in opposition to an ordinary trademark application. Form TM-8 is a counter-statement used exclusively in proceedings involving collective marks or certification trade marks under Rules 113 and 120 of the Trade Marks Rules, 2004.

Related Guides

Legal & Statutory Notice: The information provided in this publication is for general educational, academic, and statutory informational purposes only under the relevant laws of Pakistan (including the Income Tax Ordinance, 2001, the Companies Act, 2017, and the Trade Marks Ordinance, 2001). This content does not constitute formal legal, financial, or tax advice. For specific assessments, consult a licensed Advocate or qualified tax professional.