Intellectual Property

Trademark Examination Reports in Pakistan: Replying to Objections, the Show-Cause Hearing and What Follows

Most trademark applications in Pakistan meet at least one objection before they reach the Trade Marks Journal, and what goes wrong is usually the handling rather than the objection: a late reply, an argument that misses the examiner's point, or a hearing attended without evidence. This guide covers the procedure from examination through hearing, acceptance and publication to appeal, while the grounds of objection are covered separately. If you are looking for the best trademark lawyer in Pakistan because an examination report has just arrived, check the date on it first, because the two-month response period runs from the date of communication, not from the day the report reaches you.

The route from filing to registration

The Ordinance and the Rules set out a fixed sequence. The table below gives each step, the provision that governs it and the time limit where one is prescribed.

Stage	Provision	Time limit
Examination and search of earlier marks	Section 27(1)-(2); rule 26	“As soon as practicable” (no fixed period)
Objection or conditional-acceptance proposal communicated in writing	Section 27(3); rule 27(1)	—
Applicant amends, replies or asks for a hearing	Rule 27(2)	Two months from the date of communication
Hearing before the Registrar	Section 111(2); rule 77	At least ten days' notice, unless shorter notice is accepted
Decision: acceptance (absolute or conditional) or refusal	Section 27(4)-(6)	—
Request for written grounds (Form TM-15)	Rule 28(1)	One month from communication of the decision
Advertisement in the Trade Marks Journal	Section 28(1); rule 29	“As soon as may be” after acceptance
Opposition by third parties	Section 28(2)	Two months from advertisement, extendable by up to two months in aggregate
Registration	Section 33(1)	After the opposition period, if no opposition or if it fails
Appeal against any decision of the Registrar	Section 114; rule 85	Two months from the decision, or further time allowed by the High Court

Overall timing depends heavily on the Registry's workload; our note on trademark registration timelines discusses what to expect.

What an examination report actually says

Rule 27(1) describes two kinds of communication. The Registrar may have an objection to accepting the application at all, or may propose to accept it subject to conditions, amendments, disclaimers, modifications or limitations. The practical difference is large. An objection needs to be overcome; a conditional proposal can often be accepted with a single letter, and the application then moves to advertisement.

This page deals with procedure. The usual grounds, such as conflict with an earlier mark, descriptiveness, wrong classification and defective powers of attorney, are explained in our guide to trademark refusal reasons in Pakistan.

Read the report for three things: the provision relied on, any earlier marks cited (with their numbers and classes), and whether the examiner has made a proposal you can live with. Section 27(6) requires the Registrar to give written grounds and the materials relied on when refusing or accepting conditionally, so a vague report can itself be challenged by asking for those materials.

Practitioners often call this stage the “show-cause” stage, because the applicant is effectively asked to show why the mark should be accepted. That label is not used in the Ordinance. The statutory rights are the opportunity to make representations or amend under section 27(3) and the right to be heard under section 111(2) and rule 77.

Your options within the two-month window

Rule 27(2) treats the application as abandoned unless, within two months, the applicant alters it as proposed or applies for a hearing. Rule 28(1) also contemplates a decision on written observations where the applicant states that it does not wish to be heard. The realistic options are:

• Amend. Narrow the specification of goods or services, accept a disclaimer of a non-distinctive element under section 21, or accept a colour limitation under section 15. Section 27(7) allows amendments only if they do not substantially affect the identity of the mark or extend the goods or services covered, so a fresh logo or a wider specification needs a new application.
• Argue in writing. Explain why the objection is wrong on the facts or the law, and attach evidence.
• File evidence. Rule 27(1) expressly contemplates evidence of use or distinctiveness. Evidence before the Registrar is ordinarily given by affidavit (section 111(1)(b)).
• Request a hearing. Under section 111(2) the Registrar cannot use a discretionary power against a party who has asked in writing to be heard without first hearing that party.
• Attack the cited mark. If an earlier registration is the obstacle and appears unused, apply to revoke it; see our guide to non-use cancellation and rectification. Keep the application alive while that runs.

Rule 80 lets the Registrar extend most periods fixed by the Rules, up to three months in aggregate, on request and on terms. Ask before the two months expire. If the deadline has already passed, rule 27(3) allows an application treated as abandoned to be restored to the file if sufficient cause is shown, but that relief is discretionary and should not be relied upon.

How to write the reply

A good reply is short, organised and tied to the report. The structure we use is:

1. Identify the application and the report by number and date, and list each objection separately.
2. Concede what costs nothing. If the examiner proposes deleting goods you do not trade in, accept it. A narrower registration that issues is worth more than a broad application that stalls.
3. Answer each remaining objection in turn, with the reason it does not apply and the evidence that shows it. Where an earlier mark is cited, compare the marks as a whole and the actual goods, not just the class numbers.
4. Attach evidence in usable form: a sworn affidavit from a director or proprietor, with dated invoices, packaging, advertisements and sales figures as exhibits.
5. Ask for a hearing in the alternative. End by stating that, if the Registrar is not minded to accept the application on the papers, the applicant requests a hearing. This preserves the right under section 111(2).

Avoid reopening points the examiner did not raise, and avoid general statements such as “the mark is distinctive” without saying why.

The hearing before the Registrar

Rule 77 requires the Registrar, before any decision that may be adverse to a party, to give that party an opportunity to be heard, with at least ten days' notice unless shorter notice is accepted. Section 111(1) gives the Registrar the powers of a civil court for receiving evidence, and the Registrar may take oral evidence in place of or in addition to affidavits.

In practice the hearing is brief and focused. Prepare a one- or two-page written note of arguments to hand up, bring originals of the documents relied on, and be ready to offer a fallback, such as a narrower specification or a disclaimer, if the officer is not persuaded on the main point. If the applicant has said in writing that it does not wish to be heard, the Registrar may decide on the written observations (rule 28(1)).

Note where the hearing takes place. The Registry has branch offices, and the Sindh High Court, referring to rule 131(2) of the Rules, has noted that a decision after a hearing at a branch is pronounced at that branch. That affects where any appeal is filed, as explained below.

Acceptance, conditions, disclaimers and publication

Under section 27(5), the Registrar accepts the application “absolutely or subject to such conditions or limitations” as appear fit. A disclaimer under section 21 means the proprietor does not claim exclusive rights in a particular element, such as a descriptive word or matter common to the trade, though the mark as a whole is still protected. The proviso to section 21 limits a disclaimer's effect to rights arising from that registration.

Once accepted, the application is advertised in the Trade Marks Journal (section 28(1)), and the advertisement is itself sufficient notice of acceptance. Check the advertised particulars carefully: errors are easier to fix now than after registration, and amendments made after advertisement must themselves be published (section 27(7)).

Any person may oppose within two months of advertisement, a period the Registrar can extend by no more than two months in aggregate (section 28(2)). In Muhammad Tariq v. Federation of Pakistan (C.P. No. D-6004 of 2020, Sindh High Court, heard 21 August 2023) the court explained that the general extension power in section 123(1) applies only where the Ordinance does not itself fix a time, which is the position for oppositions under section 28(2). If an opposition is filed, see how to respond to a trademark opposition. If none is filed, or it fails, section 33(1) requires registration, unless matters coming to the Registrar's notice show the application was accepted in error.

Common mistakes at the examination stage

Most lost applications we see were not lost on the merits. The recurring errors are:

• Diarising the wrong date. The two months run from the date of communication. Where an agent receives the report, the applicant may hear of it weeks later.
• Arguing without evidence. A claim that the mark has been used for years carries little weight without a sworn affidavit and dated exhibits.
• Rejecting a sensible proposal. Refusing a disclaimer of a plainly descriptive word can turn a conditional acceptance into a refusal and an appeal.
• Not asking to be heard. A written reply that does not request a hearing in the alternative risks a decision on the papers.
• Letting the application lapse while challenging the cited mark. Revocation proceedings against an earlier registration do not by themselves stop the clock on your own application.
• Missing the grounds request. If refusal is likely, diarise the one-month period under rule 28(1) as well as the two-month appeal period.

If the Registrar refuses: written grounds and appeal

The appeal route has two steps that are easy to miss:

1. Ask for the grounds. Under rule 28(1), an applicant who intends to appeal may, within one month of the decision being communicated, apply on Form TM-15 for a written statement of the grounds and the materials used. Under rule 28(3), the date that statement is sent is treated as the date of decision for appeal purposes.
2. File the appeal. Section 114(1) provides an appeal against any decision of the Registrar to the High Court having jurisdiction, and rule 85 requires it within two months of the decision, or further time allowed by the High Court. The Code of Civil Procedure, 1908 applies to such appeals (section 114(3)).

Which High Court? In Sobia Amir v. Registrar of Trade Marks (M.A. Nos. 28 and 29 of 2013, Sindh High Court, decided 1 March 2021) the court held that the appeal lies to the High Court within whose territory the Registrar who passed the order was functioning, and dismissed appeals filed in Karachi against decisions made at the Lahore branch. The proviso to section 114(1) changes this only where proceedings concerning the mark are already pending in a court. The Trade Marks (Amendment) Act, 2023 brought the IP Tribunal into that proviso but, on the amended text reproduced by the Sindh High Court, left the appeal itself with the High Court; the Tribunal's separate role is covered in our guide to the IP Tribunal.

On appeal, section 114(2) prevents the Registrar or an opponent from raising new grounds against the applicant without the court's express permission, and allows the applicant to withdraw without paying their costs if new grounds are admitted. In Muhammad Tariq, the Sindh High Court also rejected the argument that no appeal was available against an opposition-stage order. Use the statutory appeal rather than a constitutional petition wherever section 114 applies.

Common questions

This article is general information about Pakistani law and procedure, not legal advice for any specific matter. If this touches on something you're currently facing, get in touch and we'll advise on your facts directly.