Responding to a Madrid Provisional Refusal in Pakistan

Do this before anything else. Since 1 November 2023 the Madrid Regulations require each office to give holders at least two months to respond to a provisional refusal, but they let members notify WIPO that this minimum does not yet apply to them (Rule 40(8); WIPO Information Notice No. 26/2023, paragraphs 9 and 10). Pakistan is listed by WIPO among the members for which the two-month minimum does not apply (WIPO’s list of declarations, last updated 8 October 2026). Pakistan is also not on WIPO’s table of response periods notified under Rule 17(7) (last updated 28 August 2026).

So the period is the one stated in the refusal itself. Every notification of provisional refusal must state the time limit for requesting a review, appealing or responding, and the authority with which the response is filed (Rule 17(2)(vii) and (ix)). Where the period runs from the date WIPO sends you the notice, or the date you receive it, WIPO’s cover letter states the start and end dates (Information Notice No. 26/2023, paragraphs 5 to 7). Diary the end date the day the notice arrives, and instruct Pakistani counsel straight away.

For comparison only: a national applicant who receives an objection from the Registrar has two months from the date of the communication to respond, failing which the application is deemed abandoned (rule 27(2) of the Trade Marks Rules 2004). Do not assume that period applies to your refusal unless the notice says so.

Section 92E of the Trade Marks Ordinance 2001, inserted by the Trade Marks (Amendment) Act 2023, governs designations of Pakistan. The Registrar may refuse protection, or grant it only subject to conditions or limitations, after hearing the holder if the holder so wishes, and must inform WIPO within 18 months of receiving the notification of the designation (section 92E(2)). The Registry examines the designation as if it were a national application, applying sections 14 to 31 of the Ordinance (section 92E(4)). Sections 92E and 92F were inserted by the 2023 amendment, as published in the Gazette of Pakistan on 16 August 2023.

Refusals raised on examination (ex officio)

These come from the Registry’s own examination. The grounds are those that apply to any Pakistani application: absolute grounds, such as a mark that lacks distinctive character or describes the goods (section 14), and relative grounds based on an earlier mark (section 17). IPO-Pakistan states that the holder may respond, and that the Registry in Karachi then considers the response and either confirms the refusal or moves the designation to publication in the Trade Marks Journal, where it can be opposed.

Refusals based on an opposition

After publication, anyone may oppose a designation in the same way as a national application, on Form TM-5 with a statement of grounds and the official fee. The Registry then sends WIPO a provisional refusal based on the opposition and runs the opposition under the national rules. Because of Pakistan’s declaration under Article 5(2)(c) of the Protocol, this kind of refusal can arrive after the 18 months have run (WIPO Information Notice No. 4/2021).

Rule 17(2) of the Madrid Regulations requires a notification of provisional refusal to state, among other things:

• all the grounds for the refusal, with a reference to the main provisions of the law relied on;
• for a refusal based on an earlier mark, that mark’s filing date and number, any priority date, its registration date and number if available, the owner, and the goods or services it covers;
• whether the refusal covers all the goods and services or only some, and if so which;
• the time limit for requesting a review, appealing or responding, and the authority to file with;
• where applicable, that the response must be filed through a representative whose address is in Pakistan (Rule 17(2)(x)).

Under the 2023 amendments, a notice that fails to state the start and end dates of the response period, where they are required, is not regarded as a provisional refusal until the office sends a rectified notification (Rule 18(1)(d); Information Notice No. 26/2023, paragraphs 11 and 12). If anything in the list above is missing, raise it with Pakistani counsel at once.

The response goes to the Trade Marks Registry, not to WIPO. The usual options, alone or together, are:

• Written arguments on distinctiveness, descriptiveness or the comparison with the cited mark.
• Evidence of use. A mark is not refused as non-distinctive, descriptive or customary if, before the date of application, it had in fact acquired a distinctive character through use, or is a well-known mark (proviso to section 14(1)).
• A hearing. Section 92E(2) provides for the holder to be heard before protection is refused, if the holder so wishes. The Ordinance and the Rules do not set out how a hearing is requested on a designation; we confirm the current procedure in each matter.
• Narrowing the goods or services so that they no longer overlap with the cited mark. The published texts do not say whether IPO-Pakistan needs the limitation filed with the Registry or acts on one recorded through WIPO; we confirm the current requirement in each matter.
• The earlier owner’s consent. Section 17(5) provides that nothing in section 17 prevents registration where the owner of the earlier trade mark or other earlier right consents.
• Honest concurrent use, where the facts support it (section 19).

Who files the response. The refusal notice must indicate, where applicable, that the response has to be filed through a representative whose address is in Pakistan (Rule 17(2)(x)). The Ordinance requires an applicant who does not reside or carry on business in Pakistan to give an address for service in Pakistan (section 126(1); rule 9 of the Trade Marks Rules 2004), and lets a registered trade mark agent act for a person (section 127). In practice, a holder responding before IPO-Pakistan acts through a Pakistan-based registered trade mark agent or advocate with an address for service in Pakistan, authorised on Form TM-48 (rule 10); we confirm the current requirement in each matter. For how the national objection procedure works, see our guide to trademark objections in Pakistan.

IPO-Pakistan states that a holder who wants to defend the designation must file a counter-statement on Form TM-6 and must engage a trade mark agent or attorney with an address in Pakistan, appointed by a power of attorney on Form TM-48.

For a national application, the counter-statement is due within one month of receiving the notice of opposition, or within a further period of not more than two months in total that the Registrar may allow; an applicant who files none is deemed to have abandoned the application (section 28(4) of the Ordinance; rule 30(2) of the Rules). For a holder notified through WIPO, the notice will specify the period that applies. The evidence rounds and the hearing then follow the national timetable, set out in our guide to trademark opposition in Pakistan.

• Withdrawn or confirmed. When the procedure ends, the Registry either withdraws the provisional refusal or confirms it fully or partly, and notifies WIPO (IPO-Pakistan; Rule 18ter(2) and (3) of the Regulations).
• Partial protection. If the refusal is confirmed for some goods or services only, the designation is protected for the rest.
• No certificate. IPO-Pakistan issues no separate certificate for a designation. Protected designations are listed in the Trade Marks Journal.

A holder whose designation is not protected has the same remedy as a national applicant whose application did not proceed to registration (section 92E(8)).

• Grounds of decision. For a national decision on an objection, an applicant who intends to appeal may, within one month, ask the Registrar on Form TM-15 to state in writing the grounds of the decision and the materials used (rule 28). Whether this step applies to a designation is not stated in the published texts; we confirm it in each matter.
• Appeal to the High Court. Section 114 gives an appeal against any decision of the Registrar to the High Court having jurisdiction, or, where proceedings about the mark are pending before a High Court or an IP Tribunal, to that High Court.
• Time. Rule 85 requires the appeal within two months of the decision, or within such further time as the High Court allows.

If the refusal becomes final, the designation gives no protection in Pakistan for the refused goods or services.

• Note the end date of the response period from the notice and WIPO’s cover letter.
• Identify the type of refusal: raised on examination, or based on an opposition.
• List every ground and every cited mark, and the goods each one affects.
• Choose the strategy: argue, narrow, seek consent, or a mix.
• Appoint a representative in Pakistan and get Form TM-48 signed early.
• Ask for a hearing if you want to be heard (section 92E(2)).
• Diary the appeal period (two months under rule 85) in case the refusal is confirmed.

Raza & Associates is an intellectual property and corporate law firm established in 2005, listed in Tier 3 of The Legal 500 ranking for Pakistan intellectual property, with its head office in Lahore and offices in London and Singapore. It assists foreign companies, overseas law firms and brand owners that need Pakistan-based intellectual property support. Its partner Hashim Raza is a Registered Trade Mark Agent with IPO-Pakistan (Trade Marks Registry), Reg. No. TM-215/20. The firm handles responses to Madrid provisional refusals, both those raised on examination and those based on an opposition, before IPO-Pakistan.

To scope a response, send the refusal notice, WIPO’s cover letter, the international registration number and any evidence of use in Pakistan. How a designation of Pakistan is examined and protected from start to finish is covered in our guide to Madrid Protocol designations of Pakistan. To instruct on a Pakistan matter, see Pakistan IP local counsel.

The statute and WIPO material on this page was checked on 15 October 2026. Procedures can change; confirm the position before acting.