World Intellectual Property Organization

Singapore

Trade Marks Rules (Revised Edition 2008)

 

 


TRADE MARKS ACT

(CHAPTER 332, SECTION 108)

TRADE MARKS RULES

History

G.N. NO.S 635//98

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1990 REVISED EDITION

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2000 REVISED EDITION

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R1 2008 REVISED EDITION

[15th January 1999]

Arrangement of Provisions

PART I PRELIMINARY 1 Citation 2 Definitions 3 Fees 3A Filing of documents 4 Forms 5 Size of documents 6 Signature on documents 7 Service of documents 8 Furnishing of address 9 Address for service 10 Agents

PART II REGISTRATION OF TRADE MARKS DIVISION 1 — REGISTRABILITY OF TRADE MARKS 11 Representation of President 12 Singapore Crest, Presidential Coat of Arms, Royal Arms, etc. 13 Registration of mark consisting of arms, etc. 14 Persons living or recently dead DIVISION 2 — APPLICATION FOR REGISTRATION 15 Application for registration 16 Representation of trade marks 17 Division of application for registration 18 Claim to priority 19 Specification 20 Translation and transliteration 21 Deficiencies in application

DIVISION 3 — AMENDMENT OF APPLICATION 22 Amendment of application 23 Amendment of application after publication DIVISION 4 — EXAMINATION OF APPLICATION FOR REGISTRATION 24 Examination report and applicant’s response 25 Acceptance of application DIVISION 5 — PUBLICATION 26 Publication of application 27 Photographs and artworks, etc. 28 Publication of series of trade marks DIVISION 6 — OPPOSITION TO REGISTRATION 29 Notice of opposition 30 Contents of notice of opposition 31 Counter-statement 32 Evidence in support of opposition 33 Evidence in support of application 34 Evidence in reply by opponent 35 Further evidence 36 Exhibits 36A Pre-hearing review 37 Opposition hearing 38 Registrar’s decision in opposition proceedings 39 Extension of time in opposition proceedings 40 Costs in uncontested oppositions DIVISION 7 — REGISTRATION 41 Certificate of registration

PART III REGISTER 42 Entry in register of particulars of registered trade mark 43 Registration subject to disclaimer or limitation 44 Application to change name or address in register 45 Death of applicant before registration 46 Removal of matter from register 47 Certificate of validity 48 Extract from register

PART IV RENEWAL OF REGISTRATION OF TRADE MARK 49 Renewal of registration 50 Notice of renewal 50A Notice of non-compliance 51 Removal of trade mark from register 52 Delayed renewal 53 Restoration of registration

PART V REGISTRABLE TRANSACTIONS 54 Entry in register of particulars of registrable transactions 55 Application to register or give notice of transaction

PART VI ALTERATION OF REGISTERED TRADE MARK 56 Application to alter registered trade mark

PART VII REVOCATION, INVALIDATION, RECTIFICATION AND CANCELLATION 57 Application for revocation, declaration of invalidity and rectification 58 Counter-statement 59 Further procedure 60 Intervention by third parties 61 Application to cancel registered trade mark

PART VIII COLLECTIVE MARKS AND CERTIFICATION MARKS 62 Application of Rules to collective marks and certification marks 63 Filing of regulations 64 Filing of amended regulations 65 Opposition to registration 66 Amendment of regulations 66A Opposition to amendment of regulations

PART IX EVIDENCE AND PROCEDURE 67 Right of affected party to be heard 68 Hearing before Registrar to be in public 69 Evidence in proceedings before Registrar 70 Statutory declarations 71 Notice of seal of officer taking declaration

PART X COSTS 72 Application for costs 73 Taxation of costs 74 Taxation proceedings 75 Scale of costs 76 Certificate

PART XI EXTENSION OF TIME AND REINSTATEMENT OF APPLICATIONS, RIGHTS AND THINGS 77 Request for extension of time 77A Where non-compliance with time caused by act of person employed in Registry 77B Reinstatement of application, right or thing 78 Change of commencement date of period for filing evidence

PART XIA ELECTRONIC ONLINE SYSTEM 78A Establishment of electronic online system 78B Registration as account holder 78C Identification name and authentication code 78D Obligation to inform Registrar of change of particulars 78E Security measures 78F Duty of person using electronic online system 78G Cancellation of registration as account holder 78H Documents to be signed, made on oath, etc.

PART XII HOURS OF BUSINESS AND EXCLUDED DAYS 79 Hours of business and excluded days 80 Excluded days 80A Extension of period where interruption in postal service, etc.

PART XIII MISCELLANEOUS 81 General certificates by Registrar 81A Case management conference 81B Production of documents, information or evidence 82 Appeal 83 Irregularities 84 Address altered by public authority 85 Application to Court 86 Order of Court 86A Trade Marks Journal

PART XIV TRANSITIONAL PROVISIONS 87 Pending applications for registration 88 Notice under paragraph 11 of Third Schedule to Act 89 Savings

FIRST SCHEDULE

SECOND SCHEDULE

THIRD SCHEDULE CLASSIFICATION OF GOODS AND SERVICES

FOURTH SCHEDULE SCALE OF COSTS

Actual Provisions

TRADE MARKS ACT

(CHAPTER 332, SECTION 108)

TRADE MARKS RULES

[15th January 1999]

PART I

PRELIMINARY

Citation

1.—These Rules may be cited as the Trade Marks Rules.

Definitions

2.—(1) In these Rules, unless the context otherwise requires —

"account holder" means a person registered as an account holder by the Registrar under rule 78B;

"authentication code" means an identification or identifying code, password or any other authentication method or procedure that may be assigned to or approved for an account holder by the Registrar;

"electronic online system" means the electronic online system established under rule 78A;

"folio" means 100 words, each figure being counted as one word;

"identification name" means an identification name assigned to an account holder by the Registrar under rule 78C;

"specification" means the specification of goods or services in respect of which —

(a) a trade mark; or

(b) a transaction in relation to a registered trade mark or an application for the registration of a trade mark,

is registered or proposed to be registered;

"Trade Marks Journal" means the journal by that name published under rule 86A.

(2) Unless the context otherwise requires, the word “month”, wherever it occurs in any decision, direction or other document issued by the Registrar, means calendar month.

(3) Any period of time fixed by these Rules or by any decision, direction or other document for the doing of any act shall be reckoned in accordance with paragraphs (4), (5) and (6).

(4) Where the act is required to be done within a specified period from or after a specified date, the specified period begins immediately after that date.

(5) Where the act is required to be done within or not less than a specified period before a specified date, the period ends immediately before that date.

(6) Where the act is required to be done within a specified number of clear days before or after a specified date, at least that number of days must intervene between the day on which the act is done and that date.

Fees

3.—(1) The fees specified in the First Schedule shall be payable to the Registrar in respect of the matters specified in that Schedule.

(2) Any fee in the First Schedule shall be paid at the same time as the filing of the matter in question.

Filing of documents

3A.—(1) The Registrar may refuse to accept or process any document filed at the Registry that fails to comply with the Act or these Rules.

(2) Every document filed at the Registry shall —

(a) be in English; or

(b) where the document is not in English, be accompanied by an English translation of the document.

(3) Every document filed at the Registry which is not filed using the electronic online system shall —

(a) be filed using durable paper; and

(b) be in writing that is legible and permanent.

(4) Where the Registrar refuses to accept any document that does not comply with paragraph (2) or (3), the Registrar shall give the applicant a notice stating the manner in which the document does not comply with paragraph (2) or (3), as the case may be.

(5) Where any document filed at the Registry is a copy, the Registrar may —

(a) decide whether to accept or process the document; and

(b) require the original to be filed with the Registry.

(6) The Registrar may require the filing of a hard copy of any document filed using the electronic online system.

Forms

4.—(1) The Registrar shall publish in the Trade Marks Journal —

(a) the forms to be used for any purpose relating to the registration of a trade mark or any other proceedings before the Registrar under the Act;

(b) the Registrar’s directions relating to the use of any form; and

(c) any amendment or modification of any such form or direction.

(2) Any form may be modified on the direction of the Registrar —

(a) for use in a case other than the case for which it is intended; or

(b) for carrying out any transaction by means of the electronic online system.

(3) The Registrar may accept, in lieu of any form, any other document which is filed with the Registry for any purpose for which the form was published, if the document —

(a) complies with rule 3A (2) and every direction of the Registrar relating to the use of the form; and

(b) is in a format that is acceptable to the Registrar.

(4) Any reference in these Rules to a numbered form shall be construed as a reference to the current version of the form bearing the corresponding number which is —

(a) described in the Second Schedule; and

(b) published in the Trade Marks Journal.

Size of documents

5.—Subject to any directions that may be given by the Registrar, all forms, notices and other documents required or authorised by the Act or these Rules to be given or sent to, filed with or served on the Registrar, other than by means of the electronic online system, shall be given, sent, filed or served using A4 size paper.

Signature on documents

6.—(1) A document to be signed for or on behalf of a partnership shall contain the names of all the partners in full and shall be signed by —

(a) all the partners;

(b) any partner stating that he signs on behalf of the partnership; or

(c) any other person who satisfies the Registrar that he is authorised to sign the document on behalf of the partnership.

(2) A document to be signed for or on behalf of a body corporate shall be signed by a director, the secretary or other principal officer of the body corporate, or by any other person who satisfies the Registrar that he is authorised to sign the document on behalf of the body corporate.

(3) A document to be signed by or on behalf of an unincorporated body or association of persons may be signed by any person who appears to the Registrar to be qualified to so sign.

(4) For the purposes of this rule, “document” means a document to be given or sent to, filed with or served on the Registrar in respect of any matter under the Act or these Rules.

Service of documents

7.—(1) Where the Act or these Rules authorise or require any document to be given or sent to, filed with or served on the Registrar or Registry, the giving, sending, filing or service may be effected on the Registrar or Registry —

(a) by sending the document by post;

(b) where there is no fee payable to the Registrar or Registry for the giving, sending, filing or service of the document, by sending the document by facsimile transmission; or

(c) by electronic communication, by sending an electronic communication of the document using the electronic online system.

(2) Where the Act or these Rules authorise or require any document to be given or sent to or served on any party other than the Registrar or Registry, the giving, sending or service may be effected on that party by sending the document by post.

(3) Where the Act or these Rules authorise or require any notice or other document to be given or sent to or served on any party by the Registrar or Registry, the Registrar or Registry may effect the giving, sending or service on the party —

(a) by sending the notice or other document by post;

(b) by sending the notice or other document by facsimile transmission; or

(c) by electronic communication, by sending an electronic communication of the notice or other document using the electronic online system.

(4) Where any notice or other document is sent by post under paragraph (2) or (3), the giving, sending or service, as the case may be, of the notice or other document shall, until the contrary is proved, be treated as having been effected at the time at which the notice or document would have been delivered in the ordinary course of post.

(5) For the purposes of paragraphs (2) and (3), a notice or other document is sent to a party by post if the notice or other document is sent by pre-paid post to the party at his address for service referred to in rule 9 or 10.

(6) Where any person has attempted to send any document by facsimile transmission under paragraph (1) —

(a) if any part or all of the document received by the Registrar or Registry is illegible or if any part of the document is not received by the Registrar or Registry, the document shall be treated as not having been submitted; and

(b) the burden of proving the legibility and completeness of the document lies with the person who has attempted to send the document.

(6A) Notwithstanding the availability of an address for service filed in accordance with rule 9, where any notice or other document to be given, sent or served by the Registrar or Registry is sent to a person by electronic communication using the electronic online system under paragraph (3)(c), it shall be taken to have been duly given, sent to or served on the person.

(6B) Service of any notice or other document under the Act or these Rules on a person by electronic communication using the electronic online system may be effected only if the person is registered as an account holder in accordance with rule 78B.

(7) Paragraph (1) (b) shall not apply to the following matters:

(a) the filing of a request for an extension of time to file a notice of opposition under rule 29 (3);

(b) the filing of a statutory declaration under rule 32 (1), 33 (1) or 34 (1).

(8) This rule shall not apply to notices and documents to be served in proceedings in court.

Furnishing of address

8.—(1) Where any person is by the Act or these Rules required to furnish the Registrar with an address, the address furnished shall be as full as possible for the purpose of enabling any person to find easily the place of business of the person whose address is given.

(2) The Registrar may require the address to include the name of the street, the number of the block of building, the number of the premises or name of premises, if any, and the postal code.

Address for service

9.—(1) For the purposes of any proceedings before the Registrar, an address for service in Singapore shall be filed in accordance with paragraph (2) or (5) by or on behalf of —

(a) every applicant for registration of a trade mark;

(b) every person opposing an application for registration of a trade mark;

(c) every applicant applying to the Registrar under section 22 of the Act for the revocation of registration of a trade mark, under section 23 of the Act for a declaration of invalidity of the registration of a trade mark, or under section 67 of the Act for the rectification of the register;

(d) every person granted leave to intervene under rule 60;

(e) every proprietor of a registered trade mark which is the subject of an application to the Registrar for the revocation of the registration of the mark, a declaration of invalidation of the registration, or the rectification of the register; and

(f) every other party to any proceedings before the Registrar.

(2) Where a form is required to be filed under these Rules for any matter in relation to the proceedings, being a form which requires the furnishing of an address for service, the address for service shall be filed on that form.

(3) The filing of an address for service in accordance with paragraph (2) shall be effective only for the matter for which the form is filed.

(4) Notwithstanding paragraph (3) —

(a) where the address for service is filed on Form TM 4 or TM 22, the filing of the address for service shall be effective for the purposes of all proceedings in respect of the trade mark in relation to which that form is filed;

(b) where the address for service is filed on Form TM 11, TM 28 or TM 29, the filing of the address for service shall be effective for the purposes of the proceedings in relation to which that form is filed and any related proceedings under Part X; and

(c) where the address for service is filed on Form TM 19 or TM 24, the filing of the address for service shall be effective for the purposes of all renewal applications or proceedings in respect of the trade mark in relation to which that form is filed.

(5) In a case where paragraph (2) or (4) does not apply, the address for service shall be filed on Form TM 1.

(6) Where an address for service is not filed as required by paragraph (1), the Registrar may send to the person concerned notice to file an address for service within 2 months from the date of the notice and if that person fails to do so —

(a) in the case of an applicant referred to in paragraph (1) (a) or (c), the application shall be treated as withdrawn;

(b) in the case of a person referred to in paragraph (1) (b) or (d), he shall be deemed to have withdrawn from the proceedings in question; and

(c) in the case of the proprietor referred to in paragraph (1) (e) or a party referred to in paragraph (1) (f), he shall not be permitted to take part in the proceedings in question.

(7) An application requesting the Registrar to alter an address for service shall be made on Form TM 1.

(7A) (Deleted by S 370/2004)

(8) Anything sent to or served on a person at his address for service shall be taken to have been duly sent to or served on the person.

(9) Subject to any filing to the contrary under paragraph (1) or (7) or rule 44, the Registrar —

(a) may treat the address for service of an applicant for registration of a trade mark as that of the proprietor upon registration of that trade mark; and

(b) may treat the trade or business address in Singapore of a person as his address for service.

Agents

10.—(1) The Registrar, in dealing with any matter under the Act or these Rules in respect of which a person has been authorised to act as an agent on behalf of another, may require the personal signature or presence of either the agent or his principal.

(2) The Registrar may, by notice in writing sent to an agent, require the agent to produce evidence of his authority.

(3) Where a person who has become a party to any proceedings before the Registrar appoints an agent for the first time or substitutes one agent for another, the newly appointed agent shall file with the Registrar in Form TM 1 his name together with an address in Singapore as his principal’s address for service.

(4) Rule 9 (2) to (5) and (7) shall, with the necessary modifications, apply in relation to the filing by an agent of his name and address for service under paragraph (3).

(4A) Where there is a change in the name or address for service of an agent or both and the agent remains the same legal entity after such change, the agent may file one Form TM 1 in respect of such change in name or address for service or both for all the matters under the Act for which the agent has been appointed.

(5) Any act required or authorised by the Act in connection with the registration of a trade mark, or any procedure relating to a registered trade mark, may not be done by or to the newly appointed agent referred to in paragraph (3) until after he has complied with that paragraph or, in the case of a change in the name or address for service of the agent or both, until he has filed Form TM 1 in respect of such change.

PART II

REGISTRATION OF TRADE MARKS

Division 1 — Registrability of Trade Marks

Representation of President

11.—The Registrar shall refuse to register a trade mark which consists of or contains any representation of the President or any colourable imitation thereof.

Singapore Crest, Presidential Coat of Arms, Royal Arms, etc.

12.—The Registrar shall refuse to register a trade mark which consists of or contains —

(a) any representation of the Crest of the Republic of Singapore, the Presidential Coat of Arms, the Royal or Imperial Arms, or of any crest, armorial bearing, insignia, or device so nearly resembling any of the foregoing as to be likely to be mistaken for them;

(b) any representation of the Royal or Imperial crown, or of the Singapore flag, or of the Royal or Imperial flag;

(c) the word “Royal”, “Imperial”, “Presidential”, or “Singapore Government”, or any word, letter or device if used in such a manner as to be likely to lead persons to think that the applicant either has or recently has had Royal, Imperial, Presidential or the Singapore Government’s patronage or authorisation, whether or not such be the case;

(d) the words “Red Cross” or “Geneva Cross”, any representation of the Geneva Cross or the Red Cross, any representation of the Swiss Federal cross in white on a red background or silver on a red background, or any representation similar to any of the foregoing; or

(e) the word “ANZAC”,

unless it appears to the Registrar that consent to its registration and use of the person or authority entitled to give consent has been obtained.

Registration of mark consisting of arms, etc.

13.—(1) Where a representation of the name, initials, armorial bearings, insignia, orders of chivalry, decorations, flags or devices of any state, settlement, city, borough, town, place, society, body corporate, government body, statutory board, institution or person appears on a trade mark which is the subject of an application for registration, the Registrar, before proceeding to register the mark, may require the applicant to furnish the Registrar with the consent to the registration and use of the matter in question of such official or other person as appears to the Registrar to be entitled to give consent.

(2) The Registrar shall refuse to register the mark if no such consent is furnished within the time specified by the Registrar.

Persons living or recently dead

14.—(1) Where the name or representation of any person appears on a trade mark which is the subject of an application for registration, the Registrar may, before proceeding to register the mark, require the applicant to furnish the Registrar with the consent of the person or, in the case of a person recently dead, of his legal representatives.

(2) Where the consent referred to in paragraph (1) is not furnished within the time specified by the Registrar and the applicant fails to satisfy the Registrar that it is impossible or impracticable in the circumstances of the case to obtain the consent, the Registrar shall refuse to register the mark.

Division 2 — Application for Registration

Application for registration

15.—(1) An application for the registration of a trade mark shall be made on Form TM 4 (referred to in this Part as the application form).

(2) An application for the registration of a 3-dimensional shape as a trade mark shall not be treated as such unless the application form contains a statement to that effect.

(3) Where colour is claimed as a trade mark, it shall not be treated as such unless the application form contains a statement to that effect.

Representation of trade marks

16.—(1) The applicant shall provide a clear and durable representation of the mark in the space provided for that purpose in the application form.

(2) Where the representation exceeds the space in size, the representation shall be provided on a separate sheet of paper to be annexed to the application form.

(3) Where an application is for the registration of a series of trade marks, a representation of each trade mark in the series shall be provided in the application form.

(4) Subject to paragraph (5), in the case of an application for the registration of a 3-dimensional mark, the representation of the mark may, at the option of the applicant, consist of a single view of the mark or of several different views of the mark.

(5) Where the applicant has provided a representation of a 3-dimensional mark consisting of a single view, or of several different views, of the mark, and the Registrar reasonably believes that the representation does not sufficiently show the particulars of the mark, or does not allow all features of the mark to be properly examined, the Registrar may, by notice in writing, require the applicant to provide, within such time as the Registrar may specify in the notice, either or both of the following:

(a) another representation of the mark consisting of up to 6 different views of the mark;

(b) a description of the mark expressed in words.

(6) The Registrar may at any time, if dissatisfied with any representation of a trade mark, require another representation satisfactory to him to be filed before proceeding with the application, and the applicant shall substitute the representation by filing with the Registrar Form TM 27B.

Division of application for registration

17.—(1) Subject to the provisions of this rule, an application for registration of a trade mark (referred to in this rule as the original application) made on or after 2nd July 2007 may, at the request of the applicant made on Form TM 8 at any time after the date of the original application but before the registration of the trade mark, be divided into 2 or more separate applications for registration of the trade mark.

(2) Where the original application is made in respect of 2 or more goods or services, a request under paragraph (1) may be made to divide the original application into 2 or more separate applications, each in respect of —

(a) one or more classes of those goods or services, being classes of goods or services to which the original application relates; or

(b) one or more of those goods or services included in one or more of the classes of goods or services to which the original application relates.

(3) Where the applicant makes a request under paragraph (1), the request shall contain, for each separate application and each class of goods or services in respect of which that separate application is made, a specification in accordance with rule 19 setting out the goods or services to which that separate application relates.

(4) Upon the division of the original application into 2 or more separate applications —

(a) each separate application shall have the same date as the original application;

(b) any notice of opposition to the registration of any trade mark which is a subject of the original application shall —

(i) if the notice relates only to some (but not all) of the goods or services in respect of which the original application is made, be treated as having been given in relation only to each separate application made in respect of any of the goods or services to which the notice relates; or

(ii) subject to sub-paragraph (i), be treated as having been given in relation to all of the separate applications,

and the opposition proceedings shall continue as if the notice had been so given; and

(c) any notice given to the Registrar under section 41 (3) of the Act shall —

(i) if the notice relates only to some (but not all) of the goods or services in respect of which the original application is made, be treated as having been given in relation only to each separate application made in respect of any of the goods or services to which the notice relates; or

(ii) subject to sub-paragraph (i), be treated as having been given in relation to all of the separate applications.

Claim to priority

18.—(1) Where a right of priority is claimed by reason of an application for the registration of a trade mark filed in a Convention country under section 10 of the Act or in another country or territory in respect of which provision corresponding to that set out in section 10 of the Act is made under section 11 of the Act (referred to in this rule as the priority application), particulars of that claim shall be included in the application form at the time of filing the application form.

(2) The particulars referred to in paragraph (1) are —

(a) the country or territory in which —

(i) the priority application; or

(ii) where there is more than one priority application, each priority application,

was filed;

(b) the date on which —

(i) the priority application; or

(ii) where there is more than one priority application, each priority application,

was filed;

(c) where the right of priority is claimed in respect of one or more, but not all, of the goods or services for which registration was sought in the priority application, the goods or services in respect of which the right of priority is claimed; and

(d) where the right of priority is claimed through more than one priority application, the goods or services in respect of which the right of priority is claimed through each priority application.

(3) The Registrar may at any time require the applicant to file a certificate by the registering or other competent authority of the country or territory concerned certifying or verifying to the satisfaction of the Registrar —

(a) the date of filing of the priority application;

(b) the country or territory, or the registering or competent authority;

(c) the representation of the mark; and

(d) the goods and services covered by the priority application.

(4) Where the certificate referred to in paragraph (3) is not in the English language, there shall be annexed to the certificate a translation in English of the contents of the certificate, certified or verified to the satisfaction of the Registrar.

Specification

19.—(1) Goods and services shall be classified for the purposes of the registration of trade marks in accordance with the Third Schedule.

(2) Every application shall contain, for each class of goods or services to which the application relates —

(a) the class number as set out in the Third Schedule; and

(b) a specification of those goods or services which —

(i) is appropriate to that class;

(ii) is described in such a manner as to —

(A) indicate clearly the nature of those goods or services; and

(B) allow those goods or services to be classified in accordance with the Third Schedule; and

(iii) complies with any other requirement of the Registrar.

(3) An application may be made in respect of more than one class of goods or services in the Third Schedule, and in such a case, the specification shall set out the classes in consecutive numerical order and list under each class the goods or services to which the application relates.

(4) In the case of an application for registration in respect of all the goods or services included in a particular class in the Third Schedule, or of a large variety of goods or services, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make if and when it is registered.

Translation and transliteration

20.—(1) Where a trade mark contains or consists of a word or words in characters other than Roman or in a language other than English, there shall, unless the Registrar otherwise directs, be endorsed on the application form —

(a) a translation and, if the case requires, a transliteration, in English, of each word and of the words taken together as a whole to the satisfaction of the Registrar; and

(b) the language to which each word belongs.

(2) The Registrar may at any time require a copy of the translation or transliteration, certified or verified to the satisfaction of the Registrar, to be filed with the Registrar.

Deficiencies in application

21.—(1) Where an application for registration of a trade mark does not satisfy any requirement under section 5 (2) or (3) of the Act, the Registrar shall send the applicant a notice requiring the applicant to remedy the deficiency.

(2) Where the Registrar has sent the applicant a notice under paragraph (1), the applicant shall remedy all deficiencies set out in the notice within 2 months from the date of the notice.

(3) In accordance with section 5 (4) of the Act, an application for registration of a trade mark shall not be treated as made unless —

(a) all the requirements under section 5 (2) of the Act have been satisfied; and

(b) all the fees payable under section 5 (3) of the Act —

(i) have been paid; or

(ii) are treated by the Registrar as paid.

(4) Subject to paragraph (1), where an application for registration does not comply with rule 15 (1) or 19 (2) (a), the Registrar shall send the applicant a notice requiring the applicant to remedy the deficiency.

(5) If the applicant fails to remedy all deficiencies set out in the notice under paragraph (4) within 2 months from the date of the notice, the application shall be treated as withdrawn.

Division 3 — Amendment of Application

Amendment of application

22.—(1) An application to amend an application for registration shall be made on —

(a) Form TM 26, if it is made to correct or change the name or other particulars of the applicant, and the change does not affect the representation of the trade mark;

(b) Form TM 27A, if sub-paragraph (a) does not apply and the amendment, or any of the amendments, pertains to —

(i) the class number or specification of any goods or services to which the application for registration relates; or

(ii) the particulars of any claim to a right of priority included in the application for registration; or

(c) Form TM 27B, if sub-paragraphs (a) and (b) do not apply.

(2) (Deleted by S 161/2007)

(3) (Deleted by S 370/2004)

(3A) (Deleted by S 852/2005)

(4) (Deleted by S 161/2007)

(5) Before acting on an application to amend an application for registration, the Registrar may require the applicant to furnish such proof as the Registrar thinks fit.

Amendment of application after publication

23.—(1) Where an application is made for an amendment of an application for registration which has been published, and the amendment affects the representation of the trade mark or the goods or services covered by the application for registration, the amendment or a statement of the effect of the amendment shall also be published.

(2) Any person who wishes to oppose the amendment shall, within 2 months from the date of publication of the amendment or statement referred to in paragraph (1), file with the Registrar a notice of opposition to the amendment in Form TM 11.

(3) The notice of opposition shall contain a statement of the grounds upon which the person opposes the amendment, including, where relevant, how the amendment would be contrary to section 14 (3) of the Act.

(4) Rules 29 (2) to (8) and 31 to 40 shall apply, with the necessary modifications, to any proceedings arising from the notice of opposition.

(5) For the purposes of the application of the rules referred to in paragraph (4) —

(a) any reference to the application for registration shall be read as a reference to the application for amendment referred to in paragraph (1);

(b) any reference to the date of publication of the application for registration shall be read as a reference to the date of publication of the amendment or statement referred to in paragraph (1);

(c) any reference to the notice of opposition shall be read as a reference to the notice of opposition referred to in paragraphs (2) and (3); and

(d) any reference to the opponent shall be read as a reference to the person referred to in paragraphs (2) and (3).

Division 4 — Examination of Application for Registration

Examination report and applicant’s response

24.—(1) If, in the course of an examination of an application for registration, it appears to the Registrar that the requirements for registration are not met or that additional information or evidence is required to meet those requirements, the Registrar shall give a written notice of this to the applicant.

(2) If, within 4 months from the date of the written notice of the Registrar, the applicant fails to —

(a) make representations in writing;

(b) apply to the Registrar for a hearing;

(c) apply to amend the application; or

(d) furnish the additional or any other information or evidence,

the application shall be treated as withdrawn.

(2A) If the applicant wishes to have an extension of time to do any act referred to in paragraph (2) (a), (b), (c) or (d), he shall file with the Registrar a request for extension in Form TM 49 before the expiry of —

(a) the period of 4 months; or

(b) any extended period previously allowed by the Registrar,

whichever is the later.

(3) If the applicant requests for a hearing to make representations, the Registrar shall give notice to the applicant of a date on which he will hear the applicant’s arguments.

(4) For the purposes of the hearing, the applicant shall file with the Registrar his written submissions and bundle of authorities at least 14 days before the date of the hearing.

(5) The decision of the Registrar, in respect of the representations of the applicant given either during the hearing or in writing, shall be communicated to the applicant in writing or in such other manner as the Registrar thinks fit.

(6) Where the applicant wishes to appeal against the decision of the Registrar —

(a) the applicant shall, within one month from the date of the decision, by filing Form TM 7 with the Registrar, request the Registrar to state the Registrar’s grounds of decision; and

(b) the Registrar shall, within 2 months from the date of the request, send the grounds of decision to the applicant.

(7) (Deleted by S 370/2004)

(8) The date on which the Registrar’s grounds of decision are sent to the applicant shall be deemed to be the date of the Registrar’s decision for the purpose of an appeal.

Acceptance of application

25.—(Deleted by S491/2000)

Division 5 — Publication

Publication of application

26.—(1) An application which has been accepted for registration shall be published in the Trade Marks Journal during such times and in such manner as the Registrar may direct.

(2) In the case of an application with which the Registrar proceeds only after the applicant has lodged the written consent to the proposed registration of the proprietor of, or the applicant for the registration of, another trade mark, the words “By Consent” and the number of that other mark shall appear in the publication.

(3) In the case of an application for the registration of a series of trade marks, the Registrar may, if he thinks fit, publish, together with the publication of the application, a statement of the manner in which the several trade marks differ from one another.

Photographs and artworks, etc.

27.—(Deleted by S 491/2000)

Publication of series of trade marks

28.—(Deleted by S 491/2000)

Division 6 — Opposition to Registration

Notice of opposition

29.—(1) A person (referred to in this Division as the opponent) may, within 2 months from the date of publication of the application for registration, file with the Registrar a notice opposing the registration in Form TM 11 (referred to in this Division as a notice of opposition).

(2) The opponent shall serve on the applicant a copy of the notice of opposition at the same time as the notice is filed with the Registrar.

(3) A request for an extension of time to file the notice of opposition shall be made by filing with the Registrar Form TM 48 within 2 months from the date of the publication of the application for registration.

(4) The total extension of time for which the Registrar may allow to file the notice of opposition shall not exceed 4 months from the date of the publication of the application for registration.

(5) Before making a request for an extension of time, the person seeking the extension shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —

(a) a statement of the person’s intention to request for the extension, the extension requested for, and the reason for the extension; and

(b) a request for the consent of the applicant or other person to the extension.

(6) The request for the extension shall be supported by a copy of the notice referred to in paragraph (5) and the consent in writing, if this is given.

(7) The Registrar may refuse to grant the extension —

(a) if the person requesting for it fails to show a good and sufficient reason for the extension; or

(b) if that person fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (5) has been served on the applicant and every person likely to be affected by the extension.

(8) Where a person on whom a notice referred to in paragraph (5) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —

(a) the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and

(b) the Registrar may do so without having to conduct a hearing in accordance with rule 67.

Contents of notice of opposition

30.—(1) The notice of opposition shall contain a statement of the grounds upon which the opponent opposes the registration.

(2) If registration is opposed on the ground that the mark is identical or similar to an earlier trade mark —

(a) a representation of the earlier trade mark;

(b) the registration number of the earlier trade mark, if registered, or the number accorded by the Registrar to the application for registration of the earlier trade mark, if pending registration; and

(c) the class number and specification of the goods or services in respect of which the mark is registered or for which registration is sought or, if the mark is neither registered nor pending registration, in respect of which the mark is used,

shall be included in the notice for the purpose of determining if the mark is identical or similar to the earlier trade mark.

(3) If registration is opposed on the ground that the mark is identical or similar to an earlier trade mark which is well known in Singapore, the notice shall, in addition to the information referred to in paragraph (2), include the following information for the purpose of determining if the trade mark is well known in Singapore:

(a) information on the use of the earlier trade mark; and

(b) information on any promotion undertaken for the earlier trade mark.

Counter-statement

31.—(1) Within 2 months from the date of receipt of the copy of the notice of opposition from the opponent, the applicant shall file with the Registrar a counter-statement in Form TM 12 (referred to in this Division as the counter-statement) setting out —

(a) the grounds on which he relies as supporting his application; and

(b) the facts alleged in the notice of opposition which he admits, if any.

(2) The applicant shall serve a copy of the counter-statement on the opponent at the same time as the counter-statement is filed with the Registrar.

(3) If the applicant does not comply with paragraph (1) or (2), he shall be deemed to have withdrawn his application.

(4) A request for an extension of time to file the counter-statement shall be made by the applicant to the Registrar in writing within 2 months from the date of receipt of the notice of opposition from the opponent.

(5) The total extension of time which the Registrar may allow to file the counter-statement shall not exceed 4 months from the date of receipt by the applicant of the notice of opposition.

(6) Before making a request for an extension of time, the applicant shall serve a notice on the opponent and every other person likely to be affected by the extension, which shall contain —

(a) a statement of the applicant’s intention to request for the extension, the extension requested for, and the reason for the extension; and

(b) a request for the consent of the opponent or other person to the extension.

(7) The request for the extension shall be supported by a copy of the notice referred to in paragraph (6) and the consent in writing, if this is given.

(8) The Registrar may refuse to grant the extension —

(a) if the applicant fails to show a good and sufficient reason for the extension; or

(b) if the applicant fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (6) has been served on the opponent and every person likely to be affected by the extension.

(9) Where a person on whom a notice referred to in paragraph (6) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —

(a) the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and

(b) the Registrar may do so without having to conduct a hearing in accordance with rule 67.

Evidence in support of opposition

32.—(1) Within 2 months from the date of receipt of the counter-statement from the applicant, the opponent shall file with the Registrar a statutory declaration setting out the evidence he wishes to adduce in support of his opposition.

(2) When the opponent files his statutory declaration with the Registrar, the opponent shall, at the same time, send to the applicant a copy of the statutory declaration.

(3) If the opponent fails to comply with paragraph (1) or (2), he shall be treated as having withdrawn his opposition.

(4) Subject to paragraph (6), a request by the opponent for an extension of time to file his statutory declaration shall be made to the Registrar in writing within 2 months from the date of receipt of the counter-statement from the applicant.

(5) The extension of time which the Registrar may allow to file the opponent’s statutory declaration pursuant to a request under paragraph (4) shall not exceed 6 months from the date of receipt by the opponent of the counter-statement from the applicant.

(6) A request by the opponent for a further extension of time to file the statutory declaration shall be made to the Registrar by filing Form TM 50 before the expiry of the last extended period allowed by the Registrar under this rule.

(7) Before making any request for an extension of time under paragraph (4) or (6), the opponent shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —

(a) a statement of the opponent’s intention to request for the extension, the extension requested for, and the reason for the extension; and

(b) a request for the consent of the applicant or other person to the extension.

(8) A request for an extension of time under paragraph (4) or (6) shall be supported by a copy of the notice referred to in paragraph (7) and the consent in writing, if this is given.

(9) The Registrar may refuse to grant the extension —

(a) if the opponent fails to show a good and sufficient reason for the extension; or

(b) if the opponent fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (7) has been served on the applicant and every person likely to be affected by the extension.

(10) Where a person on whom a notice referred to in paragraph (7) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —

(a) the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and

(b) the Registrar may do so without having to conduct a hearing in accordance with rule 67.

Evidence in support of application

33.—(1) Within 2 months from the date of receipt by the applicant of the copy of the opponent’s statutory declaration referred to in rule 32, the applicant shall file with the Registrar a statutory declaration setting out the evidence he wishes to adduce in support of his application.

(2) When the applicant files his statutory declaration with the Registrar, the applicant shall, at the same time, send to the opponent a copy of the statutory declaration.

(3) If the applicant fails to comply with paragraph (1) or (2), he shall be treated as having withdrawn his application.

(4) Subject to paragraph (6), a request by the applicant for an extension of time to file his statutory declaration shall be made to the Registrar in writing within 2 months from the date of receipt by the applicant of the copy of the opponent’s statutory declaration referred to in rule 32.

(5) The extension of time which the Registrar may allow to file the applicant’s statutory declaration pursuant to a request under paragraph (4) shall not exceed 6 months from the date of receipt by the applicant of the copy of the opponent’s statutory declaration.

(6) A request by the applicant for a further extension of time to file his statutory declaration shall be made to the Registrar by filing Form TM 50 before the expiry of the last extended period allowed by the Registrar under this rule.

(7) Before making any request for an extension of time under paragraph (4) or (6), the applicant shall serve a notice on the opponent and every other person likely to be affected by the extension, which shall contain —

(a) a statement of the applicant’s intention to request for the extension, the extension requested for, and the reason for the extension; and

(b) a request for the consent of the opponent or other person to the extension.

(8) A request for an extension of time under paragraph (4) or (6) shall be supported by a copy of the notice referred to in paragraph (7) and the consent in writing, if this is given.

(9) The Registrar may refuse to grant the extension —

(a) if the applicant fails to show a good and sufficient reason for the extension; or

(b) if the applicant fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (7) has been served on the opponent and every person likely to be affected by the extension.

(10) Where a person on whom a notice referred to in paragraph (7) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —

(a) the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and

(b) the Registrar may do so without having to conduct a hearing in accordance with rule 67.

Evidence in reply by opponent

34.—(1) Within 2 months from the date of receipt by the opponent of the copy of the applicant's statutory declaration referred to in rule 33, the opponent shall file with the Registrar a statutory declaration setting out his evidence in reply.

(2) If the opponent files a statutory declaration setting out his evidence in reply with the Registrar, the opponent shall, at the same time, send to the applicant a copy of the statutory declaration.

(3) The opponent’s statutory declaration under paragraph (1) shall be confined to matters strictly in reply to the applicant’s statutory declaration referred to in rule 33.

(4) Subject to paragraph (6), a request by the opponent for an extension of time to file his statutory declaration setting out his evidence in reply shall be made to the Registrar in writing within 2 months from the date of receipt by the opponent of the copy of the applicant’s statutory declaration referred to in rule 33.

(5) The extension of time which the Registrar may allow to file the opponent’s statutory declaration pursuant to a request under paragraph (4) shall not exceed 6 months from the date of receipt by the opponent of the copy of the applicant’s statutory declaration.

(6) A request by the opponent for a further extension of time to file his statutory declaration setting out his evidence in reply shall be made to the Registrar by filing Form TM 50 before the expiry of the last extended period allowed by the Registrar under this rule.

(7) Before making any request for an extension of time under paragraph (4) or (6), the opponent shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —

(a) a statement of the opponent’s intention to request for the extension, the extension requested for, and the reason for the extension; and

(b) a request for the consent of the applicant or other person to the extension.

(8) A request for an extension of time under paragraph (4) or (6) shall be supported by a copy of the notice referred to in paragraph (7) and the consent in writing, if this is given.

(9) The Registrar may refuse to grant the extension —

(a) if the opponent fails to show a good and sufficient reason for the extension; or

(b) if the opponent fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (7) has been served on the applicant and every person likely to be affected by the extension.

(10) Where a person on whom a notice referred to in paragraph (7) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —

(a) the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and

(b) the Registrar may do so without having to conduct a hearing in accordance with rule 67.

Further evidence

35.—No further evidence may be filed by either party except that, in any proceedings before the Registrar, the Registrar may at any time, if he thinks fit, give leave to either party to file further evidence upon such terms as to costs or otherwise as the Registrar may think fit.

Exhibits

36.—(1) Where there are exhibits to any evidence filed in an opposition, the party who is relying on the exhibits in support of his case shall, at the request of the other party and at that other party’s expense, send a copy of each exhibit to that other party.

(2) If such copy cannot conveniently be furnished, the originals shall be filed with the Registrar in order that they may be open to inspection.

(3) The original exhibits shall be produced at the opposition hearing unless the Registrar otherwise directs.

Pre-hearing review

36A.—(1) At any time after the completion of the filing of evidence by the parties, the Registrar may direct the parties to attend a pre-hearing review at which he may give such directions as he considers necessary or desirable for securing the just, expeditious and economical disposal of the proceedings.

(2) At the pre-hearing review, the Registrar may consider any matter including the possibility of settlement of any or all of the issues in the proceedings and may require the parties to furnish him with such information as he may require.

(3) If any party fails to comply with any direction given under paragraph (1) or (2), the Registrar may dismiss the proceedings or make such other order as he thinks fit.

(4) Any direction or order by the Registrar may be set aside or varied by him on such terms as he thinks fit.

(5) If, at any time during the pre-hearing review, the parties are agreeable to a settlement of all or some of the matters in dispute in the proceedings, the Registrar may give his decision in relation to the proceedings or make such order as he thinks just to give effect to the settlement.

(6) If a party does not appear at the pre-hearing review, the Registrar may dismiss the proceedings or make such other order as the Registrar thinks fit, or he may adjourn the review.

(7) An order made by the Registrar in the absence of a party may be set aside by the Registrar, on the application of that party, on such terms as the Registrar thinks fit.

Opposition hearing

37.—(1) Upon completion of the filing of evidence by the parties, the Registrar shall give notice to the parties of a date on which he will hear arguments on the case.

(2) The parties shall file with the Registrar their written submissions and bundles of authorities at least one month before the date of hearing, and shall at the same time exchange with one another their respective written submissions and bundles of authorities.

(3) Any party who intends to appear at the hearing shall file with the Registrar Form TM 13 before the hearing.

(4) Any party who does not file with the Registrar Form TM 13 before the hearing may be treated as not desiring to be heard, and the Registrar may proceed with the hearing in the absence of that party or may, without proceeding with the hearing, give his decision or dismiss the proceedings, or make such other order as he thinks fit.

(5) If, after filing with the Registrar Form TM 13, a party does not appear at the hearing, the Registrar may proceed with the hearing in the absence of that party, or may, without proceeding with the hearing, give his decision or dismiss the proceedings, or make such other order as he thinks fit.

(6) If neither party appears at the hearing, the proceedings may be struck out of the list except that it may thereafter be restored on the direction of the Registrar.

(7) Any decision made by the Registrar pursuant to a hearing in which any party does not appear may, on the application of that party, be set aside by the Registrar on such terms as he thinks fit.

(8) An application under this rule to restore any proceedings or to set aside any decision under paragraph (6) or (7) shall be made within 7 days after the proceedings have been struck out of the list or after the hearing, as the case may be.

Registrar’s decision in opposition proceedings

38.—The Registrar shall, within 3 months from the date of the hearing, inform the parties of his decision and the grounds thereof.

Extension of time in opposition proceedings

39.—Where any extension of time is granted to any party, the Registrar may, if he thinks fit, without giving the party a hearing, grant a reasonable extension of time to the other party in which to take any subsequent step.

Costs in uncontested oppositions

40.—Where an opposition is uncontested by the applicant, the Registrar, in deciding whether costs should be awarded to the opponent, shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was filed.

Division 7 — Registration

Certificate of registration

41.—Upon the registration of a trade mark, the Registrar shall issue to the applicant a certificate of registration.

PART III

REGISTER

Entry in register of particulars of registered trade mark

42.—(1) There shall be entered in the register in respect of each registered trade mark the following particulars:

(a) the date of the filing of the application for registration;

(b) the actual date of registration, that is, the date of the entry in the register;

(c) the priority date, if any, accorded pursuant to a claim to a right to priority under section 10 or 11 of the Act;

(d) the name and address of the proprietor;

(e) the address for service;

(f) any disclaimer or limitation of rights notified to the Registrar under rule 43;

(g) any memorandum or statement of the effect of any memorandum relating to a trade mark of which the Registrar has been notified on Form TM 46;

(h) the goods or services in respect of which the trade mark is registered;

(i) where the trade mark is a collective mark or certification mark, that fact;

(j) where the trade mark is registered with the consent of the proprietor of an earlier trade mark or other earlier right, that fact; and

(k) where the trade mark is registered pursuant to a transformation application, the number of the corresponding international registration and —

(i) the date of that international registration in accordance with Article 3 (4) of the Madrid Protocol; or

(ii) where the request for extension of protection to Singapore was made subsequent to that international registration, the date of recordal of that request in accordance with Article 3ter (2) of the Madrid Protocol.

(2) In this rule —

"corresponding international registration", in relation to a transformation application, means the international registration referred to in rule 24 (1) of the Trade Marks (International Registration) Rules (R 3);

"international registration" has the same meaning as in the Trade Marks (International Registration) Rules;

"Madrid Protocol" has the same meaning as in section 54 (4) of the Act;

"transformation application" means an application referred to in rule 24 (1) (b) of the Trade Marks (International Registration) Rules.

Registration subject to disclaimer or limitation

43.—Where the applicant for registration of a trade mark by notice in writing sent to the Registrar, or the proprietor of a registered trade mark by Form TM 33 filed with the Registrar —

(a) disclaims any right to the exclusive use of any specified element of the trade mark; or

(b) agrees that the rights conferred by the registration shall be subject to a specified territorial or other limitation,

the Registrar shall make the appropriate entry in the register and publish such disclaimer or limitation.

Application to change name or address in register

44.—(1) An application by —

(a) the proprietor of a registered trade mark;

(b) a licensee of a registered trade mark; or

(c) any person having an interest in or charge on a registered trade mark registered under rule 55,

to change his name or address appearing in the register shall be filed with the Registrar on Form TM 26.

(2) (Deleted by S 370/2004)

(3) (Deleted by S 370/2004)

(4) The Registrar may at any time, on a request filed on Form TM 1 by any person who has filed an address for service under rule 9 or 10, change that address in the register.

Death of applicant before registration

45.—If an applicant for the registration of a trade mark dies after the date of his application and before the date the trade mark is entered in the register, the Registrar —

(a) after the expiration of the time referred to in rule 29 to file a notice of opposition (including any extension of such time); or

(b) after the determination of any opposition to the registration,

may, on being satisfied that the applicant is dead, enter in the register, in place of the name of the deceased applicant, the name, address and other particulars of the person owning the trade mark, on such ownership being proved to the satisfaction of the Registrar.

Removal of matter from register

46.—(1) Before removing from the register any matter which appears to the Registrar to have ceased to have effect, the Registrar —

(a) may, if he considers it appropriate, publish his intention to remove that matter; and

(b) shall send notice of such intention to any person who appears to him to be likely to be affected by the removal.

(2) Within 2 months from the date on which his intention to remove the matter is published under paragraph (1) (a), any person may file with the Registrar a notice of opposition to the removal in Form TM 11.

(3) Within 2 months from the date on which notice of his intention to remove the matter is sent to any person under paragraph (1) (b), that person may file with the Registrar a notice of opposition to the removal in Form TM 11.

(4) If the Registrar is satisfied after considering any opposition to the removal that the matter has not ceased to have effect, he shall not remove it.

(5) Where there has been no response to the Registrar’s publication or notice, he may remove the matter.

(6) If the Registrar is satisfied after considering any opposition to the removal that the entry or any part thereof has ceased to have effect, he shall remove the entry or that part of the entry, as the case may be.

Certificate of validity

47.—(1) Where the Court has certified, in accordance with section 102 of the Act, that a registered trade mark has been validly registered, the proprietor of the registered trade mark may request the Registrar on Form TM 34 to add to the entry in the register a note that a certificate of validity has been granted in the course of the proceedings named in the form.

(2) A copy of the certificate shall be sent with the request, and the Registrar shall so note in the register and publish the note in the Trade Marks Journal.

Extract from register

48.—Any person may request from the Registrar a certified copy of or an extract from, or an uncertified copy of or an extract from, any entry in the register.

PART IV

RENEWAL OF REGISTRATION OF TRADE MARK

Renewal of registration

49.—(1) Subject to paragraph (2), an application for the renewal of registration of a trade mark shall be made not later than 6 months after the date of expiry of the registration.

(2) Where a trade mark is registered after the date on which it becomes due for renewal by reference to the date of the application for its registration, an application for the renewal of its registration shall be made not later than 6 months after the actual date of its registration.

(3) An application for the renewal of registration of a trade mark shall —

(a) if made on or before the date of expiry of the registration, be in Form TM 19; or

(b) if made within 6 months after the date of expiry of the registration, be in Form TM 24.

(4) Notwithstanding paragraph (3) (b), where —

(a) a trade mark is registered —

(i) within 6 months before; or

(ii) after,

the date on which it becomes due for renewal by reference to the date of the application for its registration; and

(b) an application for the renewal of its registration is made not later than 6 months after the actual date of its registration,

the application for the renewal of its registration shall be in Form TM 19.

Notice of renewal

50.—(1) Subject to paragraphs (2) and (3), the Registrar shall, not less than one month nor more than 6 months before the date of expiry of the registration of a trade mark, send a notice in writing to the proprietor, at the proprietor’s address for service, notifying him of the date of expiry of the registration.

(2) Subject to paragraph (3), where a trade mark is registered —

(a) within 6 months before; or

(b) after,

the date on which it becomes due for renewal by reference to the date of the application for its registration, the Registrar shall, within one month after the actual date of its registration, send a notice in writing to the proprietor —

(i) where an application for the renewal of registration of the trade mark has previously been made in accordance with rule 49, at the address for service as indicated in the application; or

(ii) in any other case, at the proprietor’s address for service,

notifying him of the date of expiry of its registration.

(3) The Registrar need not send any notice referred to in paragraph (1) or (2) if an application for the renewal of registration of the trade mark has been made in accordance with rule 49.

Notice of non-compliance

50A.—(1) If, in the course of an examination of an application for renewal of registration, it appears to the Registrar that the application is not in order, the Registrar shall give written notice of this to the applicant.

(2) If the applicant fails to —

(a) respond in writing to the Registrar on the notice; or

(b) comply with any requisition of the Registrar set out in the notice,

within the time specified in the notice, the Registrar may treat the application as having been withdrawn.

(3) If the applicant wishes to have an extension of time to do any act referred to in paragraph (2) (a) or (b), he shall file with the Registrar a request for an extension of time in Form TM 49 before the expiry of the time specified in the notice or any extended period previously allowed by the Registrar.

Removal of trade mark from register

51.—The Registrar may remove a trade mark from the register if —

(a) no application for the renewal of registration of the trade mark is filed in accordance with rule 49; or

(b) where an application for the renewal of registration of the trade mark is filed in accordance with rule 49, the applicant for the renewal of registration —

(i) fails to comply with any direction of the Registrar relating to the renewal; or

(ii) notifies the Registrar that he wishes to withdraw or abandon the application.

Delayed renewal

52.—(Deleted by S 370/2004)

Restoration of registration

53.—(1) An application for restoration of a trade mark which has been removed from the register under rule 51 shall be filed with the Registrar on Form TM 21 within 6 months from the date of the removal of the trade mark from the register.

(2) The application for restoration filed on Form TM 21 shall contain a statement of the reasons for the failure to renew the registration.

(2A) Where Form TM 19 has not been filed previously, it shall be filed together with Form TM 21.

(3) The Registrar may, in any case, require the applicant for restoration to furnish such additional evidence or information, by statutory declaration or otherwise, as he thinks fit, within such time as the Registrar may specify.

(3A) If the applicant wishes to have an extension of time to comply with the requirement referred to in paragraph (3), he shall file with the Registrar a request for an extension of time in Form TM 49 before the expiry of the time specified by the Registrar or any extended period previously allowed by the Registrar.

(4) The Registrar may restore the trade mark to the register and renew its registration if he is satisfied that it is just to do so, and upon such conditions as he may think fit to impose.

PART V

REGISTRABLE TRANSACTIONS

Entry in register of particulars of registrable transactions

54.—(1) The prescribed particulars of a transaction to which section 39 of the Act applies to be entered in the register are —

(a) in the case of an assignment of a registered trade mark or any right in it —

(i) the name and address of the subsequent proprietor;

(ii) the date of the assignment; and

(iii) where the assignment is in respect of any right in the trade mark, a description of the right assigned;

(b) in the case of the grant of a licence under a registered trade mark —

(i) the name and address of the licensee;

(ii) where the licence is an exclusive licence, that fact;

(iii) where the licence is limited, a description of the limitation; and

(iv) the duration of the licence if the same is, or is ascertainable as, a definite period;

(c) in the case of the grant of any security interest over a registered trade mark or any right in or under it —

(i) the name and address of the grantee;

(ii) the nature of the interest (whether fixed or floating); and

(iii) the extent of the security and the right in or under the trade mark secured;

(d) in the case of the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it —

(i) the name and address of the person in whom the trade mark or any right in or under it vests by virtue of an assent; and

(ii) the date of the assent; and

(e) in the case of an order of the Court or other competent authority transferring a registered trade mark or any right in or under it —

(i) the name and address of the transferee;

(ii) the date of the order; and

(iii) where the transfer is in respect of a right in the trade mark, a description of the right transferred.

(2) In each of the cases mentioned in paragraph (1), there shall be entered in the register the date on which the entry is made.

Application to register or give notice of transaction

55.—(1) An application to register particulars of a transaction to which section 39 of the Act applies shall be made, and a notice to be given to the Registrar of particulars of a transaction to which section 41 of the Act applies shall be —

(a) in the case of any assignment or transaction other than a transaction referred to in sub-paragraphs (b) to (e), on Form TM 22;

(b) in the case of the grant of a licence, on Form TM 37;

(c) in the case of an amendment to a licence, on Form TM 38;

(d) in the case of a termination of a licence, on Form TM 39;

(e) in the case of the grant, amendment or termination of any security interest, on Form TM 46; and

(f) in the case of the making by personal representatives of an assent in relation to, or of an order of the Court or other competent authority transferring, a registered trade mark, an application for registration of a trade mark, or any right in or under a registered trade mark or an application for registration of a trade mark, on Form TM 20.

(2) Where an application under paragraph (1) is filed other than by means of the electronic online system, the application shall be —

(a) signed by or on behalf of all the parties to the assignment or transaction, in the case of an assignment or transaction referred to in paragraph (1) (a);

(b) signed by or on behalf of both the personal representative and the beneficiary, in the case of the making by a personal representative of an assent referred to in paragraph (1) (f);

(c) accompanied by any documentary evidence which in the Registrar’s view is sufficient to establish the transaction, in the case of an order of the Court or other competent authority referred to in paragraph (1) (f); and

(d) signed by or on behalf of the grantor of the licence or security interest, in any other case.

(3) Where an application under paragraph (1) is filed by means of the electronic online system, the application shall be authorised by all relevant parties and be validated by such means as the Registrar considers fit.

(3A) Where an application under paragraph (1) is not signed in accordance with paragraph (2) (a), (b) or (d), or not authorised and validated in accordance with paragraph (3), the application shall be accompanied —

(a) in the case of an assignment (of a registered trade mark or an application for registration of a trade mark) referred to in paragraph (1) (a), at the option of the applicant, by —

(i) a certified copy of the contract of assignment;

(ii) a certified extract of the contract of assignment, being an extract which shows the change in the ownership of the registered trade mark or application for registration;

(iii) a certificate of transfer of the registered trade mark or application for registration in such form as the Registrar may require, being a certificate signed by all parties to the assignment;

(iv) a transfer document relating to the registered trade mark or application for registration in such form as the Registrar may require, being a document signed by all parties to the assignment; or

(v) a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the assignment;

(b) in the case of a grant of a licence (under a registered trade mark or an application for registration of a trade mark) referred to in paragraph (1) (b), at the option of the applicant, by —

(i) a certified extract of the licence contract, being an extract which shows the parties to the contract and the rights which are licensed under the contract;

(ii) a statement of the licence containing such information as the Registrar may require, being a statement signed by both the person granting the licence and the licensee; or

(iii) a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the grant of the licence;

(c) in the case of an amendment to, or a termination of, a licence (under a registered trade mark or an application for registration of a trade mark) referred to in paragraph (1) (c) or (d), at the option of the applicant, by —

(i) a statement of the amendment or termination of the licence, as the case may be, containing such information as the Registrar may require, being a statement signed by both the person granting the licence and the licensee; or

(ii) a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the amendment or termination of the licence, as the case may be; or

(d) in any other case, by a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the transaction.

(3B) Where an application under paragraph (1) is filed by means of the electronic online system, the document referred to in paragraph (3A) (a) (i), (ii), (iii), (iv) or (v) shall be filed within such time as the Registrar may specify.

(3C) The Registrar shall refuse to accept an application under paragraph (1) if paragraph (2), (3), (3A) or (3B) is not complied with and in such event, the Registrar may require a fresh application to be made.

(4) For the purposes of this rule, where a party required to sign the application is a corporation, it is sufficient for that party to seal the application with its corporate seal.

(5) The Registrar may require the applicant to furnish such other document, instrument and information in support of the application as the Registrar thinks fit, within such time as the Registrar may specify.

(5A) If the applicant wishes to have an extension of time to comply with the requirement referred to in paragraph (5), he shall file with the Registrar a request for an extension of time in Form TM 49 before the expiry of the time specified by the Registrar or any extended period previously allowed by the Registrar.

(6) Where the transaction is effected by an instrument chargeable with duty, the application shall be subject to the Registrar being satisfied that the instrument has been duly stamped.

PART VI

ALTERATION OF REGISTERED TRADE MARK

Application to alter registered trade mark

56.—(1) The proprietor of a registered trade mark may apply to the Registrar on Form TM 27B for such alteration of his mark as is permitted under section 20 of the Act.

(2) The proprietor shall provide to the Registrar such evidence in respect of the application as the Registrar may require.

(3) Where the Registrar proposes to allow such alteration, he shall publish the mark as altered in the Trade Marks Journal.

(4) Any person claiming to be affected by the alteration may, within 2 months from the date of the publication of the alteration, file with the Registrar a notice of opposition to the alteration in Form TM 11.

(4A) (Deleted by S 370/2004)

(5) The notice of opposition shall contain a statement of the grounds upon which the person opposes the alteration, including, where relevant, how the alteration would be contrary to section 20 (2) of the Act.

(6) Rules 29 (2) to (8) and 31 to 40 shall apply, with the necessary modifications, to any proceedings arising from the notice of opposition.

(6A) For the purposes of the application of the rules referred to in paragraph (6) —

(a) any reference to the applicant shall be read as a reference to the proprietor;

(b) any reference to the application for registration shall be read as a reference to the application for alteration referred to in paragraph (1);

(c) any reference to the date of publication of the application for registration shall be read as a reference to the date of publication of the alteration;

(d) any reference to the notice of opposition shall be read as a reference to the notice of opposition referred to in paragraph (4); and

(e) any reference to the opponent shall be read as a reference to the person referred to in paragraph (4).

(7) (Deleted by S 491/2000)

PART VII

REVOCATION, INVALIDATION, RECTIFICATION AND CANCELLATION

Application for revocation, declaration of invalidity and rectification

57.—(1) An application to the Registrar for —

(a) the revocation of the registration of a trade mark under section 22 of the Act; or

(b) a declaration of invalidity of the registration of a trade mark under section 23 of the Act,

shall be made on Form TM 28.

(1A) An application to the Registrar for the rectification of an error or omission in the register under section 67 of the Act shall be made —

(a) in the case of an application by the proprietor of a registered trade mark to amend any information in the register relating to that trade mark, on —

(i) Form TM 26, if the amendment pertains to the name or other particulars of the proprietor;

(ii) Form TM 27A, if sub-paragraph (i) does not apply and the amendment, or any of the amendments, pertains to —

(A) the class number or specification of any goods or services; or

(B) the particulars of any claim to a right of priority; or

(iii) Form TM 27B, if sub-paragraphs (i) and (ii) do not apply; or

(b) in the case of an application by any other person to amend any information in the register relating to that trade mark, on Form TM 28.

(2) The application shall be accompanied by a statement of the grounds on which the application is made.

(3) The applicant shall, if he is not the proprietor of the registered trade mark, serve a copy of the application and statement on the proprietor at the same time as he files these documents with the Registrar.

Counter-statement

58.—(1) Within 2 months from the date of receipt of the copies of the application and statement from the applicant, the proprietor may file with the Registrar a counter-statement in Form TM 12 setting out —

(a) the grounds on which he relies as supporting his registration; and

(b) the facts alleged in the application which he admits, if any.

(2) The proprietor shall serve on the applicant a copy of the counter-statement at the same time as he files the counter-statement with the Registrar.

(3) In the case of an application for revocation of the registration of a trade mark on the ground referred to in section 22 (1) (a) or (b) of the Act, the proprietor shall file, together with the counter-statement, evidence of the use by him of the trade mark, and shall also serve this on the applicant at the same time.

(4) A request for an extension of time to file the counter-statement shall be made by the proprietor to the Registrar in writing within 2 months from the date of receipt of the copies of the application and statement.

(5) The total extension of time which the Registrar may allow to file the counter-statement shall not exceed 4 months from the date of receipt by the proprietor of the copies of the application and statement.

(6) Before making a request for an extension of time, the proprietor shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —

(a) a statement of the proprietor’s intention to request for the extension, the extension requested for, and the reason for the extension; and

(b) a request for the consent of the applicant or other person to the extension.

(7) The request for the extension shall be supported by a copy of the notice referred to in paragraph (6) and the consent in writing, if this is given.

(8) The Registrar may refuse to grant the extension —

(a) if the proprietor fails to show a good and sufficient reason for the extension; or

(b) if the proprietor fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (6) has been served on the applicant and every other person likely to be affected by the extension.

(9) Where a person on whom a notice referred to in paragraph (6) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —

(a) the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and

(b) the Registrar may do so without having to conduct a hearing in accordance with rule 67.

(10) In the case of an application for revocation on the ground referred to in section 22 (1) (a) or (b) of the Act, the application shall be granted where no counter-statement has been filed within the time allowed.

Further procedure

59.—(1) Upon an application being made under rule 57 and a counter-statement being filed under rule 58, rules 32 to 40 shall apply, with the necessary modifications, to further proceedings thereon except that, in the case of an application for revocation on the ground of non-use under section 22 (1) (a) or (b) of the Act, the application shall be granted where no evidence of use has been filed under rule 58 (3).

(2) For the purposes of the application of rules 32 to 40 —

(a) references in those rules to the applicant shall be treated as references to the proprietor;

(b) references in those rules to the application shall be treated as references to the proprietor’s registration;

(c) references in those rules to the opponent shall be treated as references to the applicant for revocation or a declaration of invalidity of the registration; and

(d) the reference in rule 33 (3) to the withdrawal of the application shall be treated as a reference to the admission by the proprietor to the facts alleged by the applicant in his application for revocation or a declaration of invalidity of the registration.

Intervention by third parties

60.—(1) Any person, other than the registered proprietor, claiming to have an interest in a registered trade mark which is the subject of an application under rule 57 may apply to the Registrar on Form TM 29 for leave to intervene.

(2) The Registrar may, after hearing the parties concerned if he so required, refuse leave to intervene, or grant leave to intervene upon such terms (including any undertaking as to costs) as he thinks fit.

(3) Any person granted leave to intervene shall, subject to the terms and conditions imposed in respect of the intervention, be treated as a party to the proceedings in question.

Application to cancel registered trade mark

61.—(1) The proprietor may cancel his registered trade mark by filing with the Registrar —

(a) a notice in Form TM 31 if the cancellation relates to all the goods or services in respect of which the trade mark is registered; or

(b) a notice in Form TM 32 if the cancellation does not relate to all the goods or services in respect of which the trade mark is registered.

(2) A notice under paragraph (1) shall have no effect unless the proprietor in that notice —

(a) gives the name and address of every other person having a right in the mark (if any); and

(b) certifies that each such person —

(i) has been given not less than 3 months’ notice of the proprietor’s intention to cancel the mark; or

(ii) is not affected by the cancellation or if affected consents to the cancellation.

(3) The Registrar, if satisfied that the notice complies with paragraph (2) and is otherwise regular, shall make the appropriate entry in the register.

PART VIII

COLLECTIVE MARKS AND CERTIFICATION MARKS

Application of Rules to collective marks and certification marks

62.—(1) Except as provided in this Part, the provisions of these Rules shall apply in relation to collective marks and certification marks as they apply in relation to ordinary trade marks.

(2) In case of doubt in applying the provisions of these Rules, any party may apply to the Registrar for directions.

(3) The address of the applicant for the registration of a collective mark or certification mark shall be deemed to be the trade or business address of the applicant for the purposes of rule 9 (9) (b).

(4) (Deleted by S 852/2005)

Filing of regulations

63.—Within 9 months from the date of the application for the registration of a collective mark or certification mark, the applicant shall file with the Registrar in duplicate —

(a) Form TM 10; and

(b) a copy of the regulations governing the use of the mark.

Filing of amended regulations

64.—(1) The filing of amended regulations pursuant to paragraph 7 (2) of the First Schedule to the Act in relation to a collective mark or paragraph 8 (2) of the Second Schedule to the Act in relation to a certification mark shall be made on Form TM 30.

(2) Form TM 30 shall be accompanied by a copy of the amended regulations with the amendments shown in red, and both shall be filed in duplicate.

Opposition to registration

65.—(1) Any person may, within 2 months from the date of the publication of an application for registration of a collective mark or certification mark, give written notice to the Registrar in Form TM 11 opposing the registration; and rules 29 to 40 shall apply, with the necessary modifications, to the proceedings thereon.

(2) (Deleted by S 852/2005)

(3) In case of doubt, any party may apply to the Registrar for directions.

Amendment of regulations

66.—(1) An application for the amendment of the regulations governing the use of a registered collective mark or certification mark shall be filed with the Registrar on Form TM 30.

(2) The application shall be accompanied by a copy of the amended regulations with the amendments shown in red, and both shall be filed in duplicate.

(3) Where it appears expedient to the Registrar that the amended regulations should be made available to the public, the Registrar may publish a notice indicating where copies of the amended regulations may be inspected.

(4) (Deleted by S 491/2000)

(5) (Deleted by S 491/2000)

(6) (Deleted by S 491/2000)

(7) (Deleted by S 491/2000)

(8) (Deleted by S 491/2000)

Opposition to amendment of regulations

66A.—(1) Any person may, within 2 months from the date of the publication of the notice referred to in rule 66 (3), file with the Registrar —

(a) a notice of opposition to the amendment to the regulations in Form TM 11; and

(b) a statement indicating why the amended regulations do not comply with the requirements of paragraph 6 (1) of the First Schedule to the Act, or paragraph 7 (1) of the Second Schedule to the Act, as the case may be.

(2) The person filing the notice and statement under paragraph (1) shall, at the same time, serve copies of the notice and statement on the proprietor.

(3) Rules 29 (3) to (8) and 31 to 40 shall, with the necessary modifications, apply to the proceedings thereon as they apply to an opposition to an application for registration of a trade mark.

(4) For the purposes of the application of the rules referred to in paragraph (3) —

(a) references in those rules to the applicant shall be treated as references to the applicant for the amendment of the regulations;

(b) references in those rules to the application shall be treated as references to the application for the amendment of the regulations;

(c) references in those rules to the date of the publication of the application for registration shall be treated as references to the date of the publication of the notice referred to in rule 66 (3);

(d) references in those rules to the notice of opposition shall be treated as references to the notice and statement referred to in paragraph (1); and

(e) references in those rules to the opponent shall be treated as references to the person who filed the notice and statement referred to in paragraph (1).

PART IX

EVIDENCE AND PROCEDURE

Right of affected party to be heard

67.—(1) Without prejudice to any of the provisions of the Act or these Rules requiring the Registrar to hear any party to proceedings under the Act or these Rules, or to give such party an opportunity to be heard, the Registrar shall, before exercising any power given to the Registrar by the Act or these Rules adversely to any party, give that party an opportunity to be heard.

(2) The Registrar shall give that party at least 10 days’ notice of the date on which he may be heard.

(3) The Registrar shall notify that party of his decision made in the exercise of his power.

Hearing before Registrar to be in public

68.—The hearing before the Registrar of any dispute between 2 or more parties relating to any matter under the Act or these Rules shall be in public unless the Registrar, after consultation with those parties who appear in person or are represented at the hearing, otherwise directs.

Evidence in proceedings before Registrar

69.—(1) In any proceedings before the Registrar under the Act or these Rules, evidence shall be given by way of a statutory declaration, unless otherwise provided by the Act or these Rules or directed by the Registrar.

(1A) Subject to the provisions of the Oaths and Declarations Act (Cap. 211) and these Rules, Order 41 of the Rules of Court (Cap. 322, R 5) shall, with the necessary modifications, apply in relation to a statutory declaration filed or used in any proceedings before the Registrar as it applies to an affidavit filed or used in any proceedings before the Court.

(2) Any such statutory declaration may, in the case of an appeal to the Court, be used before the Court in lieu of evidence by affidavit, and if so used, shall have all the incidents and consequences of evidence by affidavit.

(3) The Registrar may, in any particular case, take oral evidence in lieu of or in addition to a statutory declaration and shall, unless the Registrar otherwise directs, allow any witness to be cross-examined on his statutory declaration or oral evidence.

(4) (Deleted by S 370/2004)

Statutory declarations

70.—Any statutory declaration filed under the Act or these Rules, or used in any proceedings under the Act or these Rules, shall be made and subscribed as follows:

(a) in Singapore, before any justice of the peace, or any commissioner for oaths or other officer authorised by law to administer an oath for the purpose of any legal proceedings;

(b) in any other part of the Commonwealth, before any court, judge, justice of the peace, notary public or any officer authorised by law to administer an oath there for the purpose of any legal proceedings; and

(c) elsewhere, before a Consul, Vice-Consul, or other person exercising the functions of a Singapore Consul, or before a notary public, judge or magistrate.

Notice of seal of officer taking declaration

71.—Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised by rule 70 to take a declaration may be admitted by the Registrar without proof of the genuineness of the seal or signature or of the official character of the person or his authority to take the declaration.

PART X

COSTS

Application for costs

72.—(1) For the purposes of section 69 of the Act, a party to proceedings before the Registrar who desires to obtain costs shall apply to the Registrar for an award of costs in relation to the proceedings —

(a) during the proceedings; or

(b) within one month from —

(i) the day on which the Registrar makes a decision in the proceedings that ends those proceedings; or

(ii) the date of the Registrar’s notice to the party that the proceedings have been withdrawn, discontinued or dismissed,

as the case may be.

(2) Before awarding costs in respect of the proceedings, the Registrar shall give each party to the proceedings an opportunity to be heard in relation to the award of costs.

Taxation of costs

73.—(1) Where the Registrar has awarded party and party costs to a party to proceedings before the Registrar and the party wishes to have the costs taxed by the Registrar, the party shall, within one month from the date of the award of costs —

(a) apply for the costs to be taxed by filing a copy of the bill of costs with the Registrar; and

(b) send at the same time a copy of the bill of costs to every other person having an interest in the taxation proceedings.

(2) Every bill of costs shall set out the following:

(a) the work done in the cause or matter;

(b) all disbursements made in the cause or matter;

(c) the sum claimed for each item; and

(d) in chronological order and with dates, all events in the cause or matter which are relevant to the taxation proceedings.

(3) Where costs have already been awarded for any of the items set out in the bill of costs, this fact and the amount awarded shall be indicated.

(4) Any party on whom a copy of the bill of costs has been served in accordance with paragraph (1) shall, if he wishes to dispute the bill or any part thereof, within one month from the receipt of the copy of the bill, mark the copy in accordance with paragraph (5) and send copies of the marked copy to the Registrar and the party requesting for taxation.

(5) The marking of a copy of a bill of costs shall be effected by writing on the right hand margin against each item the word “Agree” if the party concerned agrees with the cost claimed for that item, or the word “Disagree” if the party concerned disagrees with the cost claimed for that item.

(6) Upon expiry of the period referred to in paragraph (4), the Registrar shall give to the parties having an interest in the taxation proceedings notice of the date and time appointed for taxation.

Taxation proceedings

74.—(1) If any party entitled to be heard in any taxation proceedings does not attend at the time appointed for taxation, the Registrar may proceed with the taxation.

(2) The Registrar may, if he thinks it necessary to do so, adjourn the proceedings.

Scale of costs

75.—(1) The provisions in the Fourth Schedule shall apply in relation to taxation proceedings.

(2) Costs awarded in these proceedings are not intended to compensate the parties for the expense to which they may have been put.

Certificate

76.—When a bill of costs has been taxed, the party who requested the taxation may file with the Registrar Form TM 45, and the Registrar shall proceed to issue to him a certificate for the amount of the taxed costs.

PART XI

EXTENSION OF TIME AND REINSTATEMENT

OF APPLICATIONS, RIGHTS AND THINGS

Request for extension of time

77.—(1) Any period of time —

(a) prescribed by these Rules; or

(b) specified by the Registrar for doing any act or taking any proceedings,

may, at the request of the person or party concerned, be extended by the Registrar by such period and upon such terms as the Registrar considers fit.

(2) Before making a request for an extension of time, the person seeking the extension shall serve a notice on every person or party likely to be affected by the extension, which shall contain —

(a) a statement of his intention to request for the extension, the extension requested for, and the reason for the extension; and

(b) a request for the consent in writing of the person or party to the extension.

(3) The request for extension shall be made before the expiry of the period of time in question and shall be supported by a copy of the notice referred to in paragraph (2) and the consent in writing, if this is given.

(4) The Registrar may refuse to grant the extension —

(a) if the person requesting the extension fails to show a good and sufficient reason for the extension; or

(b) if he fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (2) has been served on every person or party likely to be affected by the extension.

(5) Where a person or party on whom a notice referred to in paragraph (2) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —

(a) the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and

(b) the Registrar may do so without having to conduct a hearing in accordance with rule 67.

(6) Paragraphs (1) to (5) shall not apply to the following matters:

(a) the remedying of a deficiency under rule 21;

(aa) the filing of a notice of opposition to an amendment of an application which has been published under rule 23 (2);

(ab) the doing of any act referred to in rule 24 (2) (a), (b), (c) or (d);

(b) the filing of a notice of opposition under rule 29;

(c) the filing of a counter-statement under rule 31;

(ca) the filing of any statutory declaration under rule 32, 33 or 34;

(d) the filing of a notice of opposition to the removal of any matter from the register under rule 46 (2);

(e) the doing of any act referred to in rule 50A (2) (a) or (b);

(f) the filing of an application for the restoration of a registration under rule 53 (1);

(g) the compliance with a requirement referred to in rule 53 (3);

(h) the compliance with a requirement referred to in rule 55 (5);

(i) the filing of a notice opposing the alteration of a registered trade mark under rule 56 (4);

(j) the filing of a counter-statement to a notice referred to in sub-paragraph (i);

(k) the filing of a counter-statement to an application for revocation or declaration of invalidity of the registration of a trade mark, or rectification of the register under rule 58;

(l) the filing of a notice opposing the registration of a collective mark or certification mark under rule 65;

(m) the filing of a counter-statement to a notice referred to in sub-paragraph (l);

(n) the filing of a notice of opposition to an amendment to regulations governing the use of a registered collective or certification mark under rule 66A (1);

(o) the filing of a counter-statement to a notice referred to in sub-paragraph (n);

(oa) the filing of an application under rule 77B (2) for the reinstatement of an application treated as withdrawn;

(p) the filing of a notice of opposition in respect of a pending application for registration referred to in rule 87; and

(q) the filing of a counter-statement to a notice referred to in sub-paragraph (p).

(7) (Deleted by S 491/2000)

Where non-compliance with time caused by act of person employed in Registry

77A.—(1) Where, by reason of an act or omission of any person employed in the Registry, an act or step in relation to an application for the registration of a trade mark or any other proceedings before the Registrar, required to be done or taken within a period of time, has not been so done or taken, the Registrar may, notwithstanding the provisions of these Rules, extend the period for doing the act or taking the step by such period as the Registrar considers fit.

(2) Notwithstanding the provisions of these Rules, the period of time for doing an act or taking a step under paragraph (1) may be extended although the period has expired.

Reinstatement of application, right or thing

77B.—(1) Any person whose —

(a) application is treated as withdrawn; or

(b) right has been abrogated, or thing has ceased to be in force or to exist, by reason that he has failed to comply with any procedural requirement in any proceedings or other matter before the Registrar within the time limit under the Act or specified by the Registrar for complying with that requirement,

may request for the reinstatement of the application, right or thing, as the case may be, in accordance with paragraphs (2), (3) and (4).

(2) A request for the reinstatement of any application, right or thing referred to in paragraph (1) —

(a) shall be made on Form TM 40 and filed with the Registrar within 6 months from the date the application was treated as withdrawn, the right was abrogated or the thing ceased to be in force or to exist, as the case may be;

(b) shall not be made unless, and shall state that —

(i) the omission which led to the application being treated as withdrawn was unintentional; or

(ii) the failure to comply with a time limit which led to —

(A) the right being abrogated; or

(B) the thing ceasing to be in force or to exist,

was unintentional; and

(c) where the omission, or the failure to comply with a time limit, relates to the filing of any document or thing, shall be accompanied by that document or thing not filed or not filed on time, as the case may be.

(3) Subject to paragraph (4), where a request is filed under paragraph (2), the Registrar shall allow the reinstatement unless there is a good and sufficient reason to refuse the request.

(4) The Registrar shall not allow the reinstatement unless paragraph (2) is complied with.

(5) Paragraphs (1) to (4) do not allow the reinstatement of —

(a) any claim to a right of priority under section 10 of the Act or rule 18 (1); or

(b) any application which is treated as withdrawn, any right which has been abrogated or any thing which has ceased to be in force or to exist by reason of —

(i) any acquiescence by a proprietor of an earlier trade mark or other earlier right under section 24 of the Act, or under section 24 of the Act read with rule 19 of the Trade Marks (International Registration) Rules (R 3);

(ii) a failure to comply with the time limit for —

(A) any act under section 13 of the Act or Division 6 of Part II of these Rules, or under rule 13 or 14 of the Trade Marks (International Registration) Rules or rules 32 to 40 of these Rules read with rule 15 of the Trade Marks (International Registration) Rules, in any opposition proceedings;

(B) any act under section 22 of the Act or Part VII of these Rules, or under section 22 of the Act and rules 57 to 60 of these Rules read with rule 18 of the Trade Marks (International Registration) Rules, in any proceedings for the revocation of the registration of a trade mark;

(C) any act under section 23 of the Act or Part VII of these Rules, or under section 23 of the Act and rules 57 to 60 of these Rules read with rule 18 of the Trade Marks (International Registration) Rules, in any proceedings for a declaration of invalidity of the registration of a trade mark;

(D) any act under section 67 of the Act or Part VII of these Rules in any proceedings for the rectification of an error or omission in the register, being proceedings commenced by any person other than the proprietor of a registered trade mark in respect of any information in the register relating to that trade mark;

(E) the filing of a request under paragraph (2); or

(F) the filing of Form TM 7 under rule 24 (6) (a); or

(iii) a failure to pay the fee for the renewal of registration of a trade mark under rule 49 (3) or 53.

Change of commencement date of period for filing evidence

78.—Where the period within which any party to any proceedings before the Registrar may file evidence under these Rules is to begin upon the expiry of any period in which any other party may file evidence and that other party notifies the Registrar that he does not wish to file any, or any further, evidence, the Registrar may direct that the period within which the first-mentioned party may file evidence shall begin on such date as may be specified in the direction, and the Registrar shall notify all parties to the dispute of that date.

PART XIA

ELECTRONIC ONLINE SYSTEM

Establishment of electronic online system

78A.—(1) There shall be established an electronic online system for the purposes of these Rules.

(2) The electronic online system may be used —

(a) for carrying out any of the transactions referred to in rules 9(5) and (7), 10(3), 15(1), 22(1), 24(2A), 44(1), 49, 50A(3), 53(3A) and 55(1)(a) and (5A);

(b) by any person for giving, sending to, filing with or serving on the Registrar or Registry any document, other than —

(i) a form that is not used for carrying out any of the transactions referred to in sub-paragraph (a); or

(ii) a notice or document to be served in proceedings in court; and

(c) by the Registrar or Registry for giving, sending to or serving on any person any notice or other document, other than a notice or document to be served in proceedings in court.

Registration as account holder

78B.—(1) Any person who desires to make use of the electronic online system —

(a) to carry out any transaction referred to in rule 78A(2)(a) and make payment through Interbank GIRO for that transaction; or

(b) for giving, sending to, filing with or serving on the Registrar or Registry any document referred to in rule 78A(2)( b),

shall, in accordance with the procedures set out in practice directions issued by the Registrar, apply to the Registrar to be registered as an account holder.

(2) The Registrar may register a person as an account holder on such terms and with such restrictions pertaining to the use of the electronic online system as the Registrar thinks fit.

Identification name and authentication code

78C.—(1) Upon registration of a person as an account holder, the person shall be assigned such number of identification names and authentication codes as the Registrar may determine.

(2) The Registrar may cancel the identification name and authentication code assigned to an account holder if, to the knowledge of the Registrar, the authority of the account holder as agent has been revoked or terminated.

Obligation to inform Registrar of change of particulars

78D.—An account holder shall, in accordance with such procedure as may be laid down in practice directions issued by the Registrar, inform the Registrar of any change in the particulars furnished in his application for registration as an account holder under rule 78B.

Security measures

78E.—(1) An account holder shall ensure the confidentiality and security of each identification name and authentication code assigned to him and shall not —

(a) divulge the identification name and authentication code to any other person who has no authority to use the identification name and authentication code; or

(b) permit any other person who has not been so authorised to use the identification name and authentication code.

(2) When using the electronic online system, an account holder shall not circumvent any security or authentication mechanism in the system.

Duty of person using electronic online system

78F.—A person shall only use the electronic online system in accordance with these Rules and any practice directions issued by the Registrar.

Cancellation of registration as account holder

78G.—The Registrar may cancel —

(a) the registration of an account holder; and

(b) any identification name and authentication code issued to the account holder,

if the Registrar is satisfied that the account holder has contravened rule 78E or 78F or any term or restriction imposed by the Registrar.

Documents to be signed, made on oath, etc.

78H.—(1) Where any document to be given, sent, filed or served using the electronic online system —

(a) is to be signed or made on oath or by affirmation, it shall be signed, made on oath or affirmed in the usual way on the original paper document; or

(b) is to be attested, it shall be attested in the usual way in which the original paper document is attested.

(2) The giving, sending, filing or service of such document using the electronic online system shall be effected by sending a true and complete electronic image of the original paper document.

PART XII

HOURS OF BUSINESS AND EXCLUDED DAYS

Hours of business and excluded days

79.—(1) Subject to paragraph (4), any business done under the Act or these Rules —

(a) on any day after the hours of business of the Registry for that class of business; or

(b) on any day which is an excluded day for that class of business,

shall be taken to have been done on the next following day which is not an excluded day for that class of business.

(2) Where the time for doing any business under the Act or these Rules expires on an excluded day for the doing of that class of business, that time shall be extended to the next following day which is not an excluded day for the doing of that class of business.

(3) For the avoidance of doubt, where the time for —

(a) carrying out any transaction referred to in rule 78A(2)( a);

(b) giving, sending to, filing with or serving on the Registrar or Registry any document referred to in rule 78A(2)( b); or

(c) giving, sending to or serving on any person by the Registrar or Registry any notice or other document referred to in rule 78A(2)(c),

expires on an excluded day, that time shall be extended to the next following day which is not an excluded day, notwithstanding the availability of the electronic online system.

(4) Where a document —

(a) is transmitted to the Registry by means of the electronic online system; and

(b) is received, by the server of that system set up to receive such transmissions, at any time before midnight on any day which is not an excluded day for the business of sending to or filing with the Registry any document by means of that system,

that document shall be treated as sent to or filed with, and received by, the Registry at that time and on that day.

(5) For the purposes of paragraph (4), the document shall be treated as sent to or filed with, and received by, the Registry if and only if the last byte of the transmission containing the document is received by the server referred to in that paragraph.

(6) Any person who sends or files a document by means of the electronic online system may produce a record of transmission issued through that system as evidence of —

(a) the sending or filing of that document; and

(b) the date and time when the sending or filing took place.

(6A) Subject to paragraph (6) of rule 7, where a document referred to in that paragraph —

(a) is transmitted to the Registrar or Registry by means of facsimile transmission; and

(b) is received —

(i) by any facsimile machine designated by the Registry for the receipt of such transmissions; and

(ii) at any time before midnight on any day which is not an excluded day for the business of sending to or filing with the Registry that document by means of facsimile transmission,

that document shall be treated as sent to or filed with, and received by, the Registry at that time and on that day.

(6B) For the purposes of paragraph (6A) —

(a) a document shall be treated as sent to or filed with, and received by, the Registry if and only if all sheets comprising the complete document are received by the facsimile machine referred to in that paragraph; and

(b) the date and time of receipt of the document, as recorded by the facsimile machine referred to in that paragraph, shall, until the contrary is proved, be treated as the date and time when the document was sent to or filed with, and received by, the Registry.

(7) In the Act and these Rules, “excluded day”, in relation to any specific class of business, means any day on which the Registry shall be taken to be closed for the purposes of the transaction by the public of that class of business.

Excluded days

80.—(Deleted by S 370/2004)

Extension of period where interruption in postal service, etc.

80A.—(1) Where, on any day, there is an interruption in —

(a) the postal service of Singapore;

(b) the operation of the Registry; or

(c) the operation of the electronic online system,

the Registrar may issue practice directions to declare that day as one on which there has been an “interruption” and, where any period of time specified in the Act or these Rules for the giving, sending, filing or serving of any notice, application or other document expires on a day so declared, the period shall be extended to the first day next following (not being an excluded day) which is not so declared.

(2) (Deleted by S 852/2005)

(3) If in any case the Registrar is satisfied that the failure to give, send, file or serve any notice, application or other document within the period specified in the Act or these Rules was wholly or mainly attributable to a failure of or delay in the postal service of Singapore or the electronic online system, the Registrar may, if he thinks fit and upon such terms as he may direct, extend the period so that it ends on the day of the receipt by the addressee of the notice, application or other document or, if the day of such receipt is an excluded day, on the first following day which is not an excluded day.

(4) The Registrar shall give notice of an extension referred to in paragraph (3) to all parties to the matter.

PART XIII

MISCELLANEOUS

General certificates by Registrar

81.—(1) Any person who desires to obtain a certificate referred to in section 103 of the Act in relation to any entry, matter or thing which the Registrar is authorised to make or do under the Act or these Rules may file with the Registrar Form TM 42.

(2) Before giving the certificate, the Registrar may require the person to furnish evidence to show that he has an interest in the entry, matter or thing.

Case management conference

81A.—Notwithstanding anything in these Rules, at any stage of any application to or proceedings before the Registrar, the Registrar may direct the applicant or parties to attend a case management conference in order that the Registrar may make such order or give such direction as he thinks fit for the just, expeditious and economical disposal of the matter.

Production of documents, information or evidence

81B.—Notwithstanding anything in these Rules, at any stage of any application to or proceedings before the Registrar, the Registrar may direct the applicant or any party to produce or file, within such period as the Registrar may specify, any document, information or evidence which the Registrar may reasonably require.

Appeal

82.—The following decisions of the Registrar are subject to appeal to the Court:

(a) a decision referred to in rule 38; and

(b) a decision in opposition proceedings under rule 46, 56, 65 or 66A.

Irregularities

83.—Any irregularity in procedure which, in the opinion of the Registrar, is not detrimental to the interests of any person or party may be corrected on such terms as the Registrar may direct.

Address altered by public authority

84.—(Deleted by S 161/2007)

Application to Court

85.—A person who makes an application to the Court under the Act shall as soon as practicable file a copy of the application with the Registrar.

Order of Court

86.—(1) Where an order is made by the Court in any matter under the Act, the person or persons in whose favour the order is made shall as soon as practicable file a copy of the order with the Registrar.

(2) If the order is to rectify or alter the register, the person in whose favour the order is made or, if there is more than one, such one of them, as the Registrar may direct, shall file with the Registrar Form TM 44.

(3) The Registrar shall rectify or alter the register in accordance with such order.

Trade Marks Journal

86A.—(1) The Registrar shall publish a journal, to be called the Trade Marks Journal, which shall contain —

(a) all matters that are required to be published in that Journal under rules 4 (1), 23 (1), 26 (1), 47 (2) and 56 (3);

(b) the practice directions issued by the Registrar under the Act or these Rules; and

(c) such other information as the Registrar thinks fit.

(2) The Trade Marks Journal shall be published weekly, unless the Registrar otherwise directs.

PART XIV

TRANSITIONAL PROVISIONS

Pending applications for registration

87.—(1) Where an application for registration of a trade mark made under the repealed Trade Marks Act (Cap. 332, 1992 Ed.) is advertised on or after 15th January 1999, the period within which a notice of opposition to the registration may be filed shall not exceed 4 months from the date of advertisement, and such period shall not be extended.

(2) The period within which a counter-statement to the notice of opposition referred to in paragraph (1) may be filed shall not exceed 4 months from the date of the Registrar’s letter forwarding the copy of the notice of opposition, and such period shall not be extended.

Notice under paragraph 11 of Third Schedule to Act

88.—(Deleted by S 370/2004)

Savings

89.—Except as provided by rule 87, where —

(a) immediately before 15th January 1999, any time or period prescribed by the revoked Trade Marks Rules (R 1, 1990 Ed.) has effect in relation to any act or proceeding and has not expired; and

(b) the corresponding time or period prescribed by these Rules would have expired or would expire earlier,

the time or period prescribed by the revoked Rules, and not by these Rules, shall apply to that act or proceeding, and such time or period may be extended by the Registrar by such period and upon such terms as the Registrar considers fit.

FIRST SCHEDULE

Rule 3

FEES

Matter

Corresponding Rule(s)

Fee

Corresponding Form(s)

1. Filing of address for service, agent’s name and address for service or request to alter address for service on record —

9 (5) or (7), 10 (3), 44 (4)

1

(a) by means of the electronic online system

$8.00 in respect of each trade mark number

(b) other than by means of the electronic online system

$8.50 in respect of each trade mark number

1A. Filing of request to alter agent’s name or address for service on record or both by means of the electronic online system —

10 (3) or (4A), 44 (4)

1

(a) where the agent has not been substituted by another legal entity

$8.00

(b) where the agent has been substituted by another legal entity

$8.00 in respect of each trade mark number

1B. Filing of request to alter agent’s name or address for service on record or both other than by means of the electronic online system —

10 (3) or (4A), 44 (4)

1

(a) where the agent has not been substituted by another legal entity

$8.50

(b) where the agent has been substituted by another legal entity

$8.50 in respect of each trade mark number

2. Application to register a trade mark, collective mark or certification mark filed other than by means of the electronic online system —

15 (1), 62

4

(a) where the specification consists of goods or services included in one class in the Third Schedule

$340

(b) where the specification consists of goods or services included in more than one class in the Third Schedule

$340 x number of classes

2A. Application to register a trade mark, collective mark or certification mark filed by means of the electronic online system —

15 (1), 62

4

(a) where the specification consists of goods or services included in one class in the Third Schedule

$310

(b) where the specification consists of goods or services included in more than one class in the Third Schedule

$310 x number of classes

2B. (Deleted by S 370/2004)

3. Application to amend an application for registration of a trade mark, or by a proprietor of a registered trade mark to rectify an error or omission in the register relating to that trade mark, filed other than by means of the electronic online system —

(a) where the application is made in relation only to any matter other than the name or other particulars of the applicant or proprietor, the class number or specification of any goods or services, or the particulars of any claim to a right of priority

22 (1), 56 (1), 57 (1A) (a)

$44 in respect of each trade mark number

27B

(b) where the application is made —

22 (1), 56 (1), 57 (1A) (a)

$44 x number of classes

27A

(i) in relation only to the class number or specification of any goods or services, or the particulars of any claim to a right of priority; or

(ii) in relation to the class number or specification of any goods or services, or the particulars of any claim to a right of priority, and in relation to any matter other than the name or other particulars of the applicant or proprietor

3A. Application to amend an application for registration of a trade mark, or by a proprietor of a registered trade mark to rectify an error or omission in the register relating to that trade mark, filed by means of the electronic online system —

(a) where the application is made in relation only to any matter other than the name or other particulars of the applicant or proprietor, the class number or specification of any goods or services, or the particulars of any claim to a right of priority

22 (1), 56 (1), 57 (1A) (a)

$40 in respect of each trade mark number

27B

(b) where the application is made —

22 (1), 56 (1), 57 (1A) (a)

$40 x number of classes

27A

(i) in relation only to the class number or specification of any goods or services, or the particulars of any claim to a right of priority; or

(ii) in relation to the class number or specification of any goods or services, or the particulars of any claim to a right of priority, and in relation to any matter other than the name or other particulars of the applicant or proprietor

4. Application to change name or other particulars (except trading nature) of person in an application for registration or in register, filed other than by means of the electronic online system

44 (1), 57 (1A) (a)

$21

26

4A. Application to change name or other particulars (except trading nature) of person in an application for registration or in register, filed by means of the electronic online system

44 (1), 57 (1A) (a)

$20

26

5. Request to the Registrar to state grounds of decision relating to an application to register a trade mark

24 (6)

$600 in respect of each trade mark number

7

6. (Deleted by S 491/2000)

7. Filing of notice of opposition to —

23 (2), 29 (1), 46 (2) and (3), 56 (4), 65, 66A

$340 x number of classes

11

(a) an amendment of an application for registration of a trade mark which has been published, where the amendment affects the representation of the trade mark or the goods or services covered by the application for registration

(b) the registration of a trade mark, collective mark or certification mark

(c) the removal of any matter from the register

(d) the alteration of a registered trade mark

(e) an application to amend the regulations governing the use of a registered collective mark or certification mark

8. Request for an extension of time to file notice of opposition to the registration of a trade mark, collective mark or certification mark

29 (3), 65 (1)

48

9. Filing of a counter-statement to —

31, 56 (5), 58 (1), 65, 66A (3)

$325 x number of classes

12

(a) a notice of opposition to the registration of a trade mark, collective mark or certification mark

(b) an application to alter a registered trade mark

(c) an application for revocation or a declaration of invalidity of a registration, or for rectification of register

(d) an application to amend the regulations governing the use of a registered collective mark or certification mark

10. (Deleted by S 852/2005)

11. (Deleted by S 852/2005)

12. Filing of notice of attendance at hearing

37 (3), 56 (6), 59, 65 (1), 66A (3)

$650 x number of classes

13

13. (Deleted by S 161/2007)

14. Request to enter in the register and to publish a note of a certificate of validity made under section 102 of the Act

47

$80 in respect of each trade mark number

34

15. Application for renewal of registration of a trade mark filed —

49 (3) (a) or (4)

19

(a) by means of the electronic online system

$250 x number of classes

(b) other than by means of the electronic online system

$270 x number of classes

15A. Late application for renewal of registration of a trade mark

49 (3) (b)

$370 (comprising $270 for renewal fee and $100 for late renewal fee) x number of classes

24

16. Application to restore a trade mark to the register

53

$150 x number of classes

21

17. Application to register a change of ownership filed other than by means of the electronic online system

55 (1) (a)

$88 in respect of each trade mark number

22

17A. Application to register a change of ownership filed by means of the electronic online system

55 (1) (a)

$80 in respect of each trade mark number

22

18. Application to register the grant of a licence

55 (1) (b)

$60 in respect of each trade mark number

37

19. Application to register an amendment of a licence

55 (1) (c)

$60 in respect of each trade mark number

38

20. Application to register the termination of a licence

55 (1) (d)

$60 in respect of each trade mark number

39

21. Application to register the grant, amendment or termination of any security interest

55 (1) (e)

$50 in respect of each trade mark number

46

21A. Application to register the making of an assent, or an order of the Court or other competent authority

55 (1) (f)

$50 in respect of each trade mark number

20

22. Filing of statutory declaration

23

23. (Deleted by S 161/2007)

24. (Deleted by S 370/2004)

25. Application for the revocation, or a declaration of invalidity, of the registration of a trade mark, or by any person other than the proprietor of a registered trade mark for the rectification of an error or omission in the register relating to that trade mark

57 (1) or (1A) (b)

$325 x number of classes

28

26. Application for leave to intervene in proceedings

60

$75 in respect of each trade mark number

29

27. Application for cancellation of a trade mark —

61 (1)

(a) where the cancellation relates to all the goods or services in respect of which the trade mark is registered

$30 in respect of each trade mark number

31

(b) where the cancellation relates to some of the goods or services in respect of which the trade mark is registered

$40 x number of classes

32

28. (Deleted by S 852/2005)

28A. (Deleted by S 852/2005)

28B. (Deleted by S 370/2004)

29. Filing of regulations relating to a collective mark or certification mark

63

$340 in respect of each trade mark number

10

30. Filing of amended regulations relating to a collective mark or certification mark

64, 66

$70 in respect of each trade mark number

30

31. (Deleted by S 852/2005)

32. (Deleted by S 852/2005)

33. (Deleted by S 852/2005)

34. Issue by Registrar of a certificate as to amount of taxed costs

76

$80 x number of classes

45

35. Issue of a certificate under section 103 of the Act

81

$32 in respect of each trade mark number

42

36. Filing of a copy of an order of the Court for alteration or rectification of the register

86

$50 x number of classes

44

37. (Deleted by S 370/2004)

38. Publication of an amendment to an application for registration or a statement of the effect of the amendment, or publication of a registered trade mark that is proposed to be altered

23, 56

$75

39. Request to make any entry in the register, or to rectify any entry therein, for which no fee is expressly provided

$25

40. Inspection of —

$2 in respect of each trade mark for every half hour or less

(a) any notice of opposition;

(b) any application for revocation or for a declaration of invalidity of a registration or for rectification of the register;

(c) any counter-statement, or any decision, given in relation to any opposition proceedings; or

(d) any counter-statement, or any decision, given in relation to any application for revocation or for a declaration of invalidity of a registration or for the rectification of the register

41. Inspection of —

$2 for every half hour or less

(a) register; or

(b) any notice of classified representations of trade marks

42. Searching and obtaining copies of documents and computer print-outs —

(a) for each search per file

$6

(b) for any document placed in the public search room —

(i) self-service photocopying of each page or part thereof using a stored-value card

$0.15

(ii) photocopying of each page or part thereof by the staff of the Registry

$0.30

(c) for photocopying of each page or part thereof of any other document by the staff of the Registry

$0.30

(d) for each page of computer print-out from an electronic database of the Registry

$0.30

42A. Scanning of mark for search purposes

$1 for each page scanned

43. For certifying office copies, manuscripts or printed matter

$12

44. Request to enter a disclaimer or limitation in the register

43

$35 in respect of each trade mark number

33

45. Purchase of a copy of the Trade Marks Journal

86A

$12

46. Request for extension of time under rules 24 (2A), 50A (3), 53 (3A) and 55 (5A)

24 (2A), 50A (3), 53 (3A), 55 (5A)

49

47. Request for an extension of time to file statutory declaration under rule 32 (6), 33 (6) or 34 (6)

32 (6), 33 (6), 34 (6)

$100 x number of classes

50

48. Request for reinstatement of application, right or thing

77B (2)

$130 in respect of each trade mark number

40

49. Request to divide an application for registration of a trade mark made in respect of 2 or more goods or services (referred to in this item as the original application) into 2 or more separate applications, each in respect of one or more of those goods or services

17 (2)

$280 for each additional application that the original application is divided into

8

SECOND SCHEDULE

Rule 4 (4)

DESCRIPTIONS OF FORMS

Form

Description of Form

TM 1

Request to Appoint or Change an Agent or to Enter or Change an Address for Service

TM 4

Application to Register a Trade Mark, Collective Mark or Certification Mark

TM 7

Request for Grounds of Decision

TM 8

Request to Divide an Application for Registration

TM 10

Filing of Regulations Governing the Use of a Collective Mark or Certification Mark

TM 11

Notice of Opposition

TM 12

Counter-Statement

TM 13

Notice to the Registrar of Attendance at Hearing

TM 19

Application for Renewal of Registration

TM 20

Assent by Personal Representatives or Order of the Court or Other Competent Authority

TM 21

Application for Restoration and Renewal of Registration Removed from the Register

TM 22

Application to Register a Change of Ownership

TM 23

Statutory Declaration

TM 24

Late Application for Renewal of Registration

TM 26

Request to Change the Name or Other Particulars (Except Trading Nature) of Applicant for Registration, Proprietor or Other Interested Person

TM 27A

Application to Amend an Application for Registration or by Proprietor to Rectify the Register (for Class Number, Specification or Claim to Priority)

TM 27B

Application to Amend an Application for Registration or by Proprietor to Rectify the Register (Except for Amendment to Name or Other Particulars of Applicant or Proprietor, Class Number, Specification or Claim to Priority)

TM 28

Application for Revocation or Declaration of Invalidity of Registration of Trade Mark or Protection of a Protected International Trade Mark (Singapore) or by Person other than Proprietor for Rectification of the Register

TM 29

Application to Intervene in Proceedings

TM 30

Application to Amend the Regulations Governing the Use of a Collective Mark or Certification Mark

TM 31

Notice to Cancel a Registration

TM 32

Notice of Partial Cancellation of the Specification of Goods or Services for which the Mark is Registered

TM 33

Request by Registered Proprietor of a Trade Mark for Entry of Disclaimer or Limitation in the Register

TM 34

Request by Registered Proprietor for Entry on the Register of a Note of a Certificate of Validity by the Court under Section 102 of the Act

TM 37

Application to Register a Licensee

TM 38

Application to Amend a Licence

TM 39

Application to Remove a Licence

TM 40

Request for Reinstatement

TM 42

Request for Registrar’s General Certificate

TM 44

Notice of Order of Court for Alteration or Rectification of Register

TM 45

Request to Extract the Registrar’s Certificate of Taxation

TM 46

Application to Register the Grant, Amendment or Termination of Security Interest or Memorandum Relating to a Trade Mark

TM 48

Request For Extension of Time to File Notice of Opposition

TM 49

Request For Extension of Time Under Rule 24 (2A), 50A (3), 53 (3A) or 55 (5A)

TM 50

Request for Extension of Time to File Statutory Declaration under Rule 32 (6), 33 (6) or 34 (6)

THIRD SCHEDULE

Rule 19

CLASSIFICATION OF GOODS AND SERVICES

PART I

CLASSES OF GOODS

Class 1

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colourants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4

Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 5

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railways tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

Class 8

Hand tools and implements (hand operated); cutlery; side arms; razors.

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 10

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials.

Class 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12

Vehicles; apparatus for locomotion by land, air or water.

Class 13

Firearms; ammunition and projectiles; explosives; fireworks.

Class 14

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones, horological and chronometric instruments.

Class 15

Musical instruments.

Class 16

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 17

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 19

Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21

Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22

Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23

Yarns and threads, for textile use.

Class 24

Textiles and textile goods, not included in other classes; bed and table covers.

Class 25

Clothing, footwear, headgear.

Class 26

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28

Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams; compotes; eggs, milk and milk products; edible oils and fats.

Class 30

Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31

Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32

Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33

Alcoholic beverages (except beers).

Class 34

Tobacco; smokers’ articles; matches.

PART II

CLASSES OF SERVICES

Class 35

Advertising; business management; business administration; office functions.

Class 36

Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37

Building construction; repair, installation services.

Class 38

Telecommunications.

Class 39

Transport; packaging and storage of goods; travel arrangement.

Class 40

Treatment of materials.

Class 41

Education; providing of training; entertainment; sporting and cultural activities.

Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43

Services for providing food and drink; temporary accommodation.

Class 44

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45

Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

FOURTH SCHEDULE

Rule 75

SCALE OF COSTS

Item

Matter

Amount

INSTITUTION OF PROCEEDINGS

1.

Drawing and filing notice of opposition, application for revocation of registration of a trade mark, application for declaration of invalidity of registration of a trade mark, or application for rectification of an entry in the register, all including a statement of grounds

$300

2.

Drawing and filing counter-statement

$300

3.

Preparing and filing evidence for opposition and revocation, invalidation or rectification proceedings

$300-$1,600 per statutory declaration

4.

Reviewing any document referred to in items 1, 2 and 3

$150-$800 per document

INTERLOCUTORY PROCEEDINGS

5.

Preparing for all interlocutory proceedings

$50-$500

6.

Attending all interlocutory proceedings

$50-$500

FULL HEARINGS

7.

Preparing for hearing

$500-$2,000

8.

Attendance at hearing

$200-$800

9.

General and travelling expenses of witness required to attend the hearing —

(a) where the witness is an expert witness

$100-$200 per day

(b) where the witness is not an expert witness

$50-$100 per day

TAXATION

10.

Drawing bill of costs

$5 per folio

11.

Attending taxation and obtaining the Registrar’s certificate or order

$100-$300

[G.N. Nos. S 635/98; S228/99;S 491/2000; S 507/2000; S 661/2001;S 474/2003;S 370/2004; S 852/2005; S642/2006; S161/2007]

 

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