WIPO Lex

Registered Designs (Amendment) Rules 2014

No. S 742

REGISTERED DESIGNS ACT

(CHAPTER 266)

REGISTERED DESIGNS

(AMENDMENT) RULES 2014

In exercise of the powers conferred by section 74 of the Registered Designs Act, the Minister for Law,

after consulting with the Intellectual Property Office of Singapore, hereby makes the following Rules:

Citation and commencement

1. These Rules may be cited as the Registered Designs (Amendment) Rules 2014 and shall come into

operation on 13 November 2014.

Amendment of rule 2

2. Rule 2(1) of the Registered Designs Rules (R 1) (referred to in these Rules as the principal Rules) is

amended by deleting the definitions of “account holder”, “authentication code” and “identification

name”.

Amendment of rule 3

3. Rule 3 of the principal Rules is amended by deleting paragraph (2) and substituting the following

paragraphs:

“(2) Unless otherwise provided for in these Rules, or the Registrar permits or directs otherwise —

(a) where a fee is specified in the First Schedule in respect of any matter, the fee shall be paid

at the same time as the filing of the form corresponding to the matter; and

(b) if the fee is not paid, the form shall not be treated as filed.

(3) Unless the Registrar permits or directs otherwise, the payment of a fee in connection with an act

referred to in rule 58A(2)(a) shall be made using any mode of payment designated by the electronic

online system, if the act is carried out using that system.”.

Amendment of rule 4

4. Rule 4 of the principal Rules is amended —

(a) by deleting paragraph (1) and substituting the following paragraph:

“(1) The Registrar shall publish on the Office’s Internet website at http://www.ipos.gov.sg

the forms to be used for any purpose relating to the registration of a design or any other

proceedings before the Registrar under the Act.”; and

(b) by deleting paragraph (3) and substituting the following paragraphs:

“(3) Any reference in these Rules to a numbered form shall be construed as a reference to

the current version of the form which bears the corresponding number and is described in the

Second Schedule.

(4) The matters referred to in the Act, including sections 11, 14(1), 15(1), 27(5), 28(1) and 35(2) of

the Act, shall be filed with, made to or given to, the Registrar, or done in an effective and efficient

manner by means which may be specified by the Registrar by the issuance of practice directions.”.

New rule 4AA

5. The principal Rules are amended by inserting, immediately after rule 4, the following rule:

“Practice directions

4AA. All practice directions issued by the Registrar under the Act or these Rules shall be published by

the Registrar on the Office’s Internet website at http://www.ipos.gov.sg.”.

Amendment of rule 6

6. Rule 6 of the principal Rules is amended —

(a) by deleting paragraph (1) and substituting the following paragraph:

“(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;

online system; or

(d) by hand.”;

(b) by deleting the words “Act authorises or requires” in paragraph (2) and substituting the words

“Act or these Rules authorise or require”;

“(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

using the electronic online system.”;

(d) by deleting the words “the document would” in paragraph (4) and substituting the words “the

notice or document would”;

(e) by inserting, immediately after the words “rule 7” in paragraph (5), the words “or 8”;

(f) by inserting the word “and” at the end of paragraph (6)(a);

(g) by deleting the semi-colon at the end of paragraph (6)(b) and substituting a full-stop;

(h) by deleting sub-paragraphs (c) and (d) of paragraph (6);

(i) by inserting, immediately after paragraph (6), the following paragraph:

“(6A) Notwithstanding the availability of an address for service filed in accordance with

rule 7, 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), that notice or document shall be taken to have been

duly given, sent to or served on the person.”; and

(j) by inserting, immediately after paragraph (7), the following paragraph:

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

court.”.

Deletion and substitution of rule 7

7. Rule 7 of the principal Rules is deleted and the following rule substituted therefor:

“Address for service

7.—(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 the registration of a design;

(b) every person applying to the Registrar under section 27 of the Act for the revocation of the

registration of a design;

(d) every owner of a registered design which is the subject of an application to the Registrar

for the revocation of the registration of the design; and

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

(2) Where the application for a matter requires an address for service in Singapore to be furnished,

the address for service in Singapore shall be furnished on the form filed for the matter.

(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 an applicant for the registration of a grant of a licence, the amendment of a licence or

the termination of a licence furnishes an address for service in Form CM6 in relation to that

licence, the address for service shall be effective for the purposes of all proceedings in respect of

that licence;

(b) where an applicant for the registration of a grant of any security interest, the amendment of

any security interest or the termination of any security interest furnishes an address for service

in Form CM7 in relation to that security interest, the address for service shall be effective for the

purposes of all proceedings in respect of that security interest;

furnishes an address for service in Form CM8, the address for service may, at the option of the

applicant, be effective —

(i) for the purposes of all proceedings in respect of the design, including the application

for the registration of the design; or

(ii) only for the purposes of the registration of the change in the ownership of the

registered design, in which case the applicant must furnish another address for service

for all other proceedings in respect of the design, including the application for the

registration of the design, on a separate Form CM8;

(d) where an applicant for the registration of a design furnishes an address for service in

Form D3, the address for service shall be effective for the purposes of all proceedings in respect

of the design in relation to which that form is filed;

(e) where a registered owner who files a counter-statement under rule 41 furnishes an address

for service in Form HC6, 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 VIIA;

(f) where an applicant for the revocation of the registration of a design furnishes an address for

service in Form D13, 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 VIIA;

(g) where an applicant for any of the following, furnishes an address for service in Form D8, the

address for service shall be effective for the purposes of the proceedings in relation to which

that form is filed:

(i) an application for an extension of the period of registration of a design under

section 21 of, or paragraph 3(6) of the Schedule to, the Act;

(ii) an application for the restoration of the registration of a design which was removed

from the Register;

(h) subject to sub-paragraph (e), the address for service of an applicant for the registration of a

design shall, upon the registration of the design, be the address for service of that party as the

owner of the design, unless —

(i) the Registrar is notified of a change in the address for service in accordance with

paragraph (7); or

(ii) the Registrar is notified of an assignment of a registered design or any right in it

referred to in rule 37(1)(b), in accordance with rule 37;

(i) where a person referred to in paragraph (1)(c) furnishes an address for service in Form CM1,

the address for service shall be effective for the purposes of an application under rule 49C for

leave to intervene in relation to which that form is filed and any related proceedings under

Part VIIA;

(j) where a party referred to in paragraph (1)(e) furnishes an address for service in Form CM1, the

address for service shall be effective for the purposes of any proceedings before the Registrar in

relation to which that form is filed and any related proceedings under Part VIIA; and

(k) the Registrar may treat the trade or business address in Singapore of a person as his address

for service, unless a different address for service is provided under paragraph (1) or (7).

(5) In a case where paragraphs (2) and (4) do not apply, the address for service shall be filed in

Form CM2.

(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 after the date of the notice,

and if that person fails to do so —

(a) in the case of an applicant or person referred to in paragraph (1)(a) or (b), the application

made by the applicant or person shall be treated as withdrawn;

(b) in the case of a person referred to in paragraph (1)(c), the person shall be treated as having

withdrawn the person’s intervention;

not be permitted to take part in any proceedings relating to the application for the revocation of

the registration of the design; and

(d) in the case of a party referred to in paragraph (1)(e), the party shall not be permitted to take

part in the proceedings in question.

(7) Where a person referred to in paragraph (1) has changed his address for service in Singapore, he

shall notify the Registrar of such change in Form CM2.

(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.”.

Amendment of rule 8

8. Rule 8 of the principal Rules is amended —

(a) by inserting, immediately after the words “the Act” in paragraph (1), the words “or these

Rules”; and

(b) by deleting paragraphs (3) and (4) and substituting the following paragraphs:

“(3) Where an agent has been appointed by a person for any application or

proceedings, the agent’s address for service in Singapore shall be treated as the address

for service of that person.

(4) The appointment of an agent for a matter shall be notified to the Registrar in the form for that

matter.

(5) The following shall be notified to the Registrar in Form CM1:

(a) any appointment of an agent for a matter for which no form is prescribed;

(b) any change of an agent for a matter.

(6) Where an agent who has changed his name desires to change his name appearing on the

with the Registrar.

(7) Where an agent for a party to any proceedings intends to cease to act on the party’s behalf —

(a) the agent shall file, and serve on the party and on the Registrar, a notice in Form CM1 of the

intention to cease to act on the party’s behalf; and

(b)upon complying with sub-paragraph (a), the agent shall cease to be the agent for the party.”.

Amendment of rule 12

9. Rule 12(1) of the principal Rules is amended by deleting sub-paragraph (ii) of sub-paragraph (c)

and substituting the following sub-paragraph:

“(ii) in 3 dimensions one or more articles manufactured in lengths for the purposes of sale or

hire.”.

Amendment of rule 23

10. Rule 23 of the principal Rules is amended by deleting the words “Form D4” and substituting the

words “Form CM9”.

Amendment of rule 24

11. Rule 24(2) of the principal Rules is amended by deleting the words “Form D1” and substituting

the words “Form CM2”.

Deletion and substitution of rule 25

12. Rule 25 of the principal Rules is deleted and the following rule substituted therefor:

“Reinstatement of application, right or thing

25.—(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 in Form CM13 and filed with the Registrar within 6 months after 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 —

(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

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 application for the registration of a design which has been withdrawn under section 14

of the Act; 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) a failure to comply with the time limit for —

(A) an application under rule 15(3) of the Registered Designs (International Registration) Rules 2005 (G.N. No. S 177/2005) for the registration of a design; (B) any act under — (BA) section 27 of the Act or Part VI of these Rules; or (BB) section 27 of the Act and Part VI of these Rules, read with rule 12 of the Registered Designs (International Registration) Rules 2005, in any proceedings for the revocation of the registration of a design;

(D) the filing of Form HC5 under rule 27(8)(a); or

(E) an application for a hearing to make representations in relation to a written notice

given by the Registrar that the formal requirements for registration under rule 27 are

not met; or

(ii) a failure to pay the fee for the extension of the period of registration of a design under

rule 35(2) or the restoration of the registration of a design under rule 35C.”.

Amendment of rule 27

13. Rule 27 of the principal Rules is amended —

(a) by deleting the words “3 months from” in paragraph (3) and substituting the words

“3 months after”;

(b) by inserting, immediately after the word “Registrar” in paragraph (3)(b), the words “in

Form HC4”;

(d) by deleting paragraph (5) and substituting the following paragraph:

“(5) Where the applicant has applied to the Registrar in Form HC4 for a hearing, the

Registrar shall give notice to the applicant of a date on which the Registrar will hear the

applicant’s arguments.”; and

(e) by deleting paragraph (8) and substituting the following paragraph:

“(8) Where the applicant wishes to have the Registrar’s grounds of decision —

(a) the applicant shall, within one month after the date of the Registrar’s decision, file a request in

Form HC5 for the Registrar to state the Registrar’s grounds of decision; and

(b)the Registrar shall, within 2 months after the date of the request, send the grounds of decision

to the applicant.”.

Amendment of rule 28

14. Rule 28 of the principal Rules is amended —

(a) by deleting the word “and” at the end of paragraph (e); and

(b) by deleting the full-stop at the end of paragraph (f) and substituting a semi-colon, and by

inserting immediately thereafter the following paragraphs: “(g) the statement of novelty relating to the design; (h) such other information as the Registrar thinks fit.”.

New rule 28A

15. The principal Rules are amended by inserting, immediately after rule 28, the following rule:

“Deferment of publication

28A.—(1) An applicant may, when applying for the registration of a design in Form D3, request in

that form that any publication of the design be deferred for 18 months.

(2) A request made under paragraph (1) shall be accompanied by the applicable fee specified in the

First Schedule.”.

Amendment of rule 30

16. Rule 30(1) of the principal Rules is amended by inserting, immediately after the words “relating

to a registered design”, the words “which has been published under section 18 of the Act, shall be made

in Form CM10 and”.

Amendment of rule 31

17. Rule 31 of the principal Rules is amended by deleting paragraph (f) and substituting the following

paragraph:

“(f) the representations relating to the design;”.

Amendment of rule 32

18. Rule 32 of the principal Rules is amended by deleting the words “Form D7” and substituting the

words “Form CM12”.

New rule 32A

19. The principal Rules are amended by inserting, immediately after rule 32, the following rule:

“General certificates by Registrar

32A.—(1) Any person who desires to obtain a certificate referred to in section 72 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 make a request to the Registrar in writing.

(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.”.

Amendment of rule 33

20. Rule 33 of the principal Rules is amended —

(a) by deleting the words “Form D5” in paragraph (1) and substituting the words “Form CM4”; and

(b) by deleting the words “Form D1” in paragraph (2) and substituting the words “Form CM2”.

Amendment of rule 35

21. Rule 35(1) of the principal Rules is amended by deleting the words “Subject to rule 67, an” and

substituting the word “An”.

Amendment of rule 35A

22. Rule 35A of the principal Rules is amended by deleting paragraph (3).

Amendment of rule 35B

23. Rule 35B of the principal Rules is amended —

(a) by deleting the word “or” at the end of paragraph (a); and

(b) by deleting the full-stop at the end of paragraph (b) and substituting the word “; or”, and by

inserting immediately thereafter the following paragraph:

“(c) no application for the restoration of the design is filed in accordance with rule 35C.”.

New rule 35C

24. The principal Rules are amended by inserting, immediately after rule 35B, the following rule:

“Restoration of registration

35C.—(1) A person may apply to restore a design which has been removed, on or after 13 November

2014, from the Register under rule 35B by —

(a) filing an application with the Registrar in Form D8 within 6 months after the last day of the first

6-month period after the date on which the design is removed from the Register; and

(b) paying the fees for the restoration of the design and the extension of the period of registration

of the design after the design is restored.

(2) The Registrar may, in any case, require the applicant for restoration to furnish such additional

evidence or information, by statutory declaration or otherwise, as the Registrar thinks fit, within such

time as the Registrar may specify.

(3) The Registrar may restore the design to the Register and renew the registration of the design if

he is satisfied that it is just to do so, and upon such conditions as he may think fit to impose.”.

Amendment of rule 37

25. Rule 37 of the principal Rules is amended —

(a) by deleting paragraph (1) and substituting the following paragraph: “(1) An application —

(a) to register the particulars of a registrable transaction or to amend any particular of a

registrable transaction, under section 34 of the Act; or

(b) to give notice to the Registrar of the particulars of a transaction under section 35 of

the Act, shall be made —

(i) in the case of the grant, amendment or termination of a licence, in Form CM6;

(ii) in the case of the grant, amendment or termination of any security interest, in Form CM7;

(iii) in any other case, in Form CM8.”;

(b) by deleting the word “mortgagor” in paragraph (2)(c) and substituting the word “grantor”;

(d) by deleting sub-paragraph (cb) of paragraph (2);

(e) by inserting, immediately after paragraph (2), the following paragraph:

“(2AA) Where an application under paragraph (2) 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.”;

(f) by deleting the words “paragraph (2) is not complied with and, in such event,” in paragraph (2A)

and substituting the words “paragraph (2) or (2AA) is not complied with and, in such event, the

Registrar”; and

(g) by deleting paragraphs (2B), (3A), (3B) and (4).

Deletion of rule 38

26. Rule 38 of the principal Rules is deleted.

Amendment of rule 39

27. Rule 39 of the principal Rules is amended —

(a) by deleting the words “Form D12” in paragraph (1) and substituting the words “Form CM3”;

(b) by inserting the word “and” at the end of paragraph (2)(a);

(d) by deleting the words “every such person” in paragraph (2)(c) and substituting the words

“every person having an interest in the design”; and

(e) by deleting the word “consented” in paragraph (2)(c)(ii) and substituting the words “no

objection”.

Amendment of rule 40

28. Rule 40 of the principal Rules is amended by inserting, immediately after paragraph (3), the

following paragraph:

“(4) If the applicant does not comply with paragraph (3), his application shall be treated as not

having been filed.”.

Amendment of rule 41

29. Rule 41 of the principal Rules is amended —

(a) by deleting the words “2 months from the date he receives the copies of both” in

paragraph (1) and substituting the words “2 months after the date he receives the copies of”;

(b) by deleting the words “Form D14” in paragraph (1) and substituting the words “Form HC6”;

“(3) A request for an extension of time to file the counter-statement shall be made by the

registered owner to the Registrar in Form HC3 within 2 months after the date of receipt of the

copies of the application and the statement.”;

(d) by deleting the words “4 months from the date the registered owner receives the copies of

both” in paragraph (4) and substituting the words “4 months after the date of receipt by the

registered owner of the copies of”;

(e) by deleting the words “2 weeks from” in paragraph (8) and substituting the words “2 weeks

after”;

(f) by deleting the words “rule 52” in paragraph (8) and substituting the words “rule 52A”; and

(g) by inserting, immediately after paragraph (8), the following paragraph:

“(8A) The Registrar shall grant the application where no counter-statement has been filed or

served on the applicant within the time allowed.”.

Amendment of rule 42

30. Rule 42 of the principal Rules is amended —

(a) by deleting the words “2 months from” in paragraph (1) and substituting the words “3 months

after”;

(b) by deleting the words “send to” in paragraph (1) and substituting the words “serve on”; and

“(2) If the applicant does not file or serve any evidence in accordance with paragraph (1), the

application shall, unless the Registrar otherwise directs, be treated as withdrawn.”.

Amendment of rule 43

31. Rule 43 of the principal Rules is amended —

(a) by deleting the words “2 months from” in paragraph (1) and substituting the words “3 months

after”;

(b) by deleting the words “counter-statement and shall, at the same time, send to” in

paragraph (1) and substituting the words “registration and shall, at the same time, serve on”;

“(2) If the registered owner does not file or serve any evidence in accordance with

paragraph (1), he shall, unless the Registrar otherwise directs, be deemed to have admitted to the

facts alleged by the applicant in his application for revocation.”; and

(d) by deleting the rule heading and substituting the following rule heading:

“Evidence in support of registration”.

Amendment of rule 44

32. Rule 44(1) of the principal Rules is amended —

(a) by deleting the words “2 months from” and substituting the words “3 months after”; and

(b) by deleting the words “send to” and substituting the words “serve on”.

Amendment of rule 47

33. Rule 47(1) of the principal Rules is amended by deleting the words “, at the request of the other

party and at that other party’s expense,”.

Amendment of rule 47A

34. Rule 47A of the principal Rules is amended —

(a) by deleting paragraph (3) and substituting the following paragraph:

“(3) If any party fails to comply with any direction given or requirement imposed under

paragraph (1) or (2), the Registrar may —

(a) where that direction was given or requirement was imposed in relation to any

application or proceedings initiated by that party, dismiss the application or

proceedings, as the case may be; or

(b) make such other order as the Registrar thinks fit.”; and

(b) by deleting paragraphs (5) and (6) and substituting the following paragraphs:

“(5) If, during or pursuant to a pre-hearing review, the parties are agreeable to a settlement of

all or some of the matters in dispute in any application or proceedings, the Registrar may —

(a) give his decision in relation to the application or proceedings; or

(b) make such order as he thinks just to give effect to the settlement.

(6) If any party does not appear at a pre-hearing review, the Registrar may —

(a) where the pre-hearing review pertains to any application or proceedings initiated by

that party, dismiss the application or proceedings, as the case may be;

(b) make such other order as the Registrar thinks fit; or

Amendment of rule 48

35. Rule 48 of the principal Rules is amended —

(a) by deleting the words “Form D15” in paragraphs (3), (4) and (5) and substituting in each case

the words “Form HC1”; and

(b) by deleting paragraphs (6), (7) and (8) and substituting the following paragraphs:

“(6) Where the Registrar gives his decision under paragraph (4) or (5) in relation to the

proceedings, whether the hearing was proceeded with or not, rule 49 shall apply.

(7) If neither party appears at the hearing, the Registrar may dismiss the proceedings.

(8) Upon making any decision or order under paragraph (4) or (5) or dismissing any

proceedings under paragraph (4), (5) or (7), the Registrar shall notify every party of the

decision, order or dismissal, as the case may be, in writing.

(9) Any decision or order made by the Registrar under paragraph (4) or (5) in the absence

of any party may, on the application of that party, be set aside by the Registrar on such

terms as the Registrar thinks fit.

(10) Any proceedings dismissed under paragraph (4), (5) or (7) may, on the application of

any party, be restored on the direction of the Registrar.

(11) An application under paragraph (9) or (10) shall be made within 14 days after the

date of the Registrar’s notification under paragraph (8).”.

Deletion and substitution of rule 49

36. Rule 49 of the principal Rules is deleted and the following rule substituted therefor:

“Notice of decision

49.—(1) Subject to paragraph (2), the Registrar shall inform the parties of his decision and the

grounds of the decision —

(a) in any case where the duration of the hearing is one day or less, within 3 months after the

date of the hearing; or

(b) in any other case, within 3 months after the last day of the hearing.

(2) Where the Registrar grants leave to one or more parties to file closing submissions on a date

which is after the last day of the hearing, he shall inform all parties of his decision and the grounds of

the decision within 3 months after the date of filing of those submissions.”.

Deletion and substitution of rule 52 and new rule 52A

37. Rule 52 of the principal Rules is deleted and the following rules substituted therefor:

“Registrar’s discretionary powers

52. 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 discretionary power vested in him by or under the Act

or these Rules adversely to any party to a proceeding before him, give that party an opportunity to be

heard.

Request for hearing

52A.—(1) A request for the exercise of the discretionary power of the Registrar under rule 52 in ex

parte proceedings, whether interlocutory or otherwise —

(a) shall be made in Form HC4; and

(b) shall be filed within one month after —

(i) the date of notification by the Registrar of any objection to an application; or

(ii) the date of any other indication that the Registrar proposes to exercise a

discretionary power,

and the Registrar may refuse to hear any party who has not filed the request within the time allowed.

(2) Upon receipt of a request under paragraph (1), the Registrar shall send to the person making the

request a notice of a time when the person may be heard, which shall be not less than 14 days after the

date of the notice.

(3) A request for the exercise of the discretionary powers of the Registrar under rule 52 in inter

partes interlocutory proceedings shall be made to the Registrar in writing.

(4) A person shall, at the time he makes a request under paragraph (3), serve on every other party to

the proceedings a copy of the request.

(5) Except as provided in paragraph (1) or (3), no request shall be made for the exercise of the

discretionary powers of the Registrar under rule 52.

(6) The Registrar may give such directions as he may think fit with regard to any aspect of the

procedure for a hearing under this rule.

(7) After hearing each party, the Registrar shall notify every party of the Registrar’s decision in

relation to the exercise of the discretionary power.

(8) Where any party wishes to have the Registrar’s grounds of decision in respect of a request under

paragraph (1) —

(a) the party shall, within one month after the date of the Registrar’s decision, by filing Form HC5,

request the Registrar to state the Registrar’s grounds of decision; and

(b) the Registrar shall, within 2 months after the date of the request, send the grounds of decision

to the party.

(9) The date on which the Registrar’s grounds of decision are sent to the party making the request

under paragraph (8)(a) shall be deemed to be the date of the Registrar’s decision for the purpose of an

appeal.

(10) In paragraph (9), “Registrar’s decision” means any decision referred to in section 62(1) of the

Act.”.

Amendment of rule 56A

38. Rule 56A(1) of the principal Rules is amended by deleting the words “one month from” in

sub-paragraph (b) and substituting the words “one month after”.

Amendment of rule 56B

39. Rule 56B of the principal Rules is amended —

(a) by deleting the words “from the date of the award of costs” in paragraph (1) and substituting

the words “after the relevant date referred to in paragraph (1A)”;

(b) by inserting, immediately after paragraph (1), the following paragraph: “(1A) For the purposes of paragraph (1), the relevant date is —

(a) subject to sub-paragraph (b), the date of the order for costs made by the Registrar;

(b)where any appeal is brought in respect of that order for costs, the date on which

that appeal is finally disposed of.”;

(c) by deleting paragraph (2) and substituting the following paragraphs: “(2) Every bill of costs shall set out in 3 separate sections the following:

(a) work done in the cause or matter (other than for or in the taxation of costs);

(b) work done for or in the taxation of costs;

(2A) The costs claimed under paragraph (2)(a), (b) and (c) shall set out the sum

claimed for each item.

(2B) The bill of costs shall set out in chronological order, with dates, all relevant

events in the cause or matter, all relevant events in the taxation of costs, and all relevant

events relating to the making of disbursements.”; and

(d) by deleting the words “one month from” in paragraph (4) and substituting the words “one

month after”.

Amendment of rule 56D

40. Rule 56D of the principal Rules is amended by deleting paragraph (1) and substituting the

following paragraph:

“(1) The provisions in the Fourth Schedule shall apply to the sections of the bill of costs relating to —

(a) work done in the cause or matter (other than for or in the taxation of costs); and

(b) work done for or in the taxation of costs.”.

Deletion and substitution of rule 56E

41. Rule 56E of the principal Rules is deleted and the following rule substituted therefor:

“Certificate

56E. When a bill of costs has been taxed, the party who applied for the costs to be taxed shall file

Form HC2, and the Registrar shall proceed to make his certificate for the amount of the taxed costs.”.

Amendment of rule 57

42. Rule 57 of the principal Rules is amended —

(a) by deleting the words “made in Form D16” in paragraph (1);

(b) by deleting paragraph (3) and substituting the following paragraph:

“(3) A request under paragraph (1) shall be made in Form CM5 or Form HC3, as

appropriate, before the expiry of the period of time in question, and shall be accompanied

by —

(a) a copy of the notice referred to in paragraph (2);

(b) each written consent, if any, that has been given pursuant to a request under

paragraph (2)(b); and

after”;

(d) by deleting the words “rule 52” in paragraph (5) and substituting the words “rule 52A”;

(e) by deleting sub-paragraphs (a) to (e) of paragraph (6) and substituting the following

sub-paragraphs:

“(a) the doing of the act referred to in rule 27(3)(b);

(b) the making of an application to extend the period of the registration of a design under

rule 35;

the Register under rule 35C(1);

(d) the filing of a counter-statement to an application for revocation under rule 41;

(e) the filing of a request for the Registrar’s grounds of decision under rule 27(8)(a) or

52A(8)(a).”; and

(f) by inserting, immediately after paragraph (6), the following paragraphs:

“(7) This rule as in force immediately before 13 November 2014 shall continue to apply on or

after that date to any request made before that date under this rule for an extension of time.

(8) Notwithstanding paragraph (7), any request made by a person or party concerned before 13

November 2014 under this rule as in force immediately before that date, for the extension of a

particular period of time (whether prescribed by these Rules or specified by the Registrar) for doing

any act or taking any proceedings, shall be taken into account for the purpose of determining the fee

payable under paragraph (3)(c) for any request for a further extension of that period made by that

person or party on or after that date under this rule.”.

Amendment of rule 58A

43. Rule 58A of the principal Rules is amended by deleting paragraph (2) and substituting the

following paragraphs:

“(2) The electronic online system may be used —

(a) by any person for giving, sending to, filing with or serving on the Registrar or Registry any

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

(b) 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).

(3) The Registrar may issue practice directions specifying —

(a) the manner in which any document is to be given or sent to, filed with or served on the

Registrar or Registry under paragraph (2)(a);

(b) the manner in which the Registrar or Registry may give, send or serve any notice or document

under paragraph (2)(b);

system; and

(d) the manner in which the fee for filing any document through the electronic online system is to

be paid.”.

Deletion of rules 58B to 58E

44. Rules 58B to 58E of the principal Rules are deleted.

Deletion and substitution of rule 58G and new rule 58H

45. The principal Rules are amended by deleting rule 58G and substituting the following rules:

“Documents to be signed, made on oath, etc.

58G. —(1) Where any document to be given, sent, filed or served using the electronic online system

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.

(2) Where any document to be given, sent, filed or served using the electronic online system is to be

attested, it shall be attested in the usual way in which the original paper document is attested.

(3) 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.

Service bureau

58H. The Registrar may establish or appoint agents to establish one or more service bureaus to

assist a person in the use of the electronic online system for giving, sending to, filing with or serving on

the Registrar or Registry any document referred to in rule 58A(2)(a).”.

Amendment of rule 60A

46. The principal Rules are amended by renumbering rule 60A as paragraph (1) of that rule, and by

inserting immediately thereafter the following paragraphs:

“(2) At a case management conference, the Registrar may —

(a) consider any matter, including the possibility of settlement of any or all of the issues in the

application or proceedings; and

(b) direct the parties to furnish the Registrar with such information as the Registrar may require.

(3) If any party fails to comply with any direction or order given under paragraph (1) or (2), the

Registrar may —

(a) where that direction or order was given in relation to any application or proceedings initiated

by that party, dismiss the application or proceedings, as the case may be; or

(b) make such other order as the Registrar thinks fit.

(4) Any direction given or order made by the Registrar under paragraph (1), (2) or (3) may be set

aside or varied by the Registrar on such terms as the Registrar thinks fit.

(5) If, during or pursuant to a case management conference, the parties are agreeable to a

settlement of all or some of the matters in dispute in any application or proceedings, the Registrar

may —

(a) give the Registrar’s decision in relation to the application or proceedings; or

(b) make such order as the Registrar thinks just to give effect to the settlement.

(6) If any party does not appear at a case management conference, the Registrar may —

(a)where the case management conference pertains to any application or proceedings initiated by

that party, dismiss the application or proceedings, as the case may be;

(b) make such other order as the Registrar thinks fit; or

(7) An order made by the Registrar in the absence of a party under paragraph (6) may be set aside by

the Registrar, on the application of that party, on such terms as the Registrar thinks fit.

(8) Any application or proceedings dismissed under paragraph (3) or (6) may, on application of any

party, be restored on the direction of the Registrar.”.

Deletion of rule 60C

47. Rule 60C of the principal Rules is deleted.

Deletion and substitution of rule 62

48. Rule 62 of the principal Rules is deleted and the following rule substituted therefor:

“Order of Court and certificate of validity

62.—(1) Where an order is made by the Court or any other competent authority in any matter under

the Act, the person, or one of the persons, in whose favour the order is made shall, as soon as

practicable, file with the Registrar a copy of the order by way of a written request.

(2) If the order is to rectify or alter the Register, the Registrar shall rectify or alter the Register in

accordance with such order.

(3) Where the Court has certified, in accordance with section 43 of the Act, that a design has been

validly registered, the owner of the registered design may request the Registrar to include a notation in

the Register that such certificate has been given for the registered design by sending the following to

the Registrar:

(a) a written request;

(b) a copy of the certificate.”.

Deletion and substitution of rule 65

49. Rule 65 of the principal Rules is deleted and the following rule substituted therefor:

“Correction of errors

65.—(1) A request by a person who has made an application (other than an application for

registration of a design) for the correction of a clerical error or mistake referred to in section 72A of the

Act must be made in Form CM4.

(2) For the purposes of paragraph (1), the correction must be clearly identified on a document filed

together with the form or on the form itself.

(3) The Registrar may call for such written explanation of the reasons for the request or evidence in

support of the request as the Registrar may require in order to be satisfied that there is an error or

mistake.

(4) Paragraph (1) shall not apply to the correction of an error of translation or transcription or of a

clerical error or mistake in —

(a) any document filed in inter partes proceedings under —

(i) any of rules 40 to 48; or

(ii) rule 49C, 52A(3) or (4), 56A, 56B, 56E or 57(1); (b)any form filed under rule 52A(1) or (8); or (c) any form filed for an application under rule 27(3)(b) or for a request under rule 27(8)(a).

(5) A request for the correction of an error in respect of any proceedings referred to in

paragraph (4)(a) shall be made to the Registrar in writing.”.

New rule 65A

50. The principal Rules are amended by inserting, immediately after rule 65, the following rule:

“Irregularities

65A. 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.”.

Amendment of rule 66

51. Rule 66 of the principal Rules is amended —

(a) by deleting the words “Form D1” in paragraphs (1) and (2) and substituting in each case the

words “Form CM2”;

(b) by deleting paragraph (3); and

the words “If the Registrar is satisfied that any request to change any name or address may be

allowed”.

Amendment of rule 66A

52. Rule 66A(1) of the principal Rules is amended —

(a) by deleting the words “rules 4(1), 28 and 67(3);” in sub-paragraph (a) and substituting the words

“rule 28; and”; and

(b) by deleting sub-paragraph (b).

Deletion of rule 67

53. Rule 67 of the principal Rules is deleted.

Deletion and substitution of First and Second Schedules

54. The First and Second Schedules to the principal Rules are deleted and the following Schedules

substituted therefor:

First column

Matter

1. Application for

registration of a design

under section 11 of the Act

2. Request for deferment of

publication

3. Application to amend an

application for registration

of a design under

section 15 of the Act

4. Application for extension

of period of registration of

a design under section 21

of, or paragraph 3(6) of the

Schedule to, the Act —

(a) �for the first period of 5 years

(b) �for the second period of 5 years

(c) � for the third period of 5 years

(d) �for the fourth period of 5 years

5. Application for

restoration of registration

of a design removed from

the Register under

section 21(6) of the Act

6. Late application to

extend period of

registration of a design

under section 21(5) of, or

paragraph 3(6) of the

Schedule to, the Act

7. Request to appoint,

change or remove agent

Second column

Corresponding

Rule(s)

28A

24(1)

35C(1)

—

8(5)

“FIRST SCHEDULE

Rules 3(1), 28A(2), 30(1), 57(3)(c) and 68(1)

FEES

Third column Fourth column � Fee Corresponding Form(s) �

$250 in respect of each Form D3

design

$40 in respect of each Form D3

request

$45 in respect of each Form D5

design number

Form D8

$220

$330

$440

$550

$135 in respect of each Form D8

registration

$50 in respect of each registration in addition — to fee under item 4

$8.50 in respect of Form CM1

each design number

Second column First column Third column Fourth column

Matter Corresponding

Rule(s) Fee Corresponding Form(s)

8. Request to change name,

address or address for

service or entry of address 7(7), 8(6), 66 $13 Form CM2

for service

9. Request to surrender

registration of a design 39(1)

$30 in respect of each

design number Form CM3

10. Request for correction

of error 33(1), 65(1) $50 Form CM4

11. Request for extension

of time by a person or party

regarding a particular

period prescribed by the

Rules or specified by the

Registrar for doing any act 57(3) Form CM5

or taking any proceedings

in relation to

non-contentious

proceedings —

(a) for first or second

extension of that —

period

(b) for third or any

subsequent $50 in respect of each

extension of that design number

period

12. Notice for withdrawal of

an application for 23 — Form CM9

registration

13. Request for extension

of time by a person or party

regarding a particular

period prescribed by the

Rules or specified by the 57(3) Form HC3

Registrar for doing any act

or taking any proceedings

in relation to contentious

proceedings —

(a) for first extension —

of that period

(b) for second or any $100

First column

Matter

subsequent

extension of that

period

14. Application to register

the grant, amendment or

termination of a licence

15. Application to register

the grant, amendment or

termination of any security

interest

16. Application for an

assignment of a registered

design or any right in it

17. Request for online file

inspection

18. Request for certified

copy of an entry in the

from the Register —

(a) �where the certified copy or extract or

document is in soft

copy

(b) �where the certified copy or extract or

document is in hard

copy

19. Request for

reinstatement of

application, right or thing

20. Application for

revocation of the

registration of a design

21. Notice of attendance at

hearing

22. Request to extract the

Registrar’s certificate of

taxation

23. Request for extension

Second column

Corresponding

Rule(s)

37(1)(i)

37(1)(ii)

37(1)(iii)

30, 68

25(2)

40(1)

48(3)

56E

41(3)

Third column

Fee

$60 in respect of each

design number

$50 in respect of each

design number

$70 in respect of each

design number

$30 in respect of each

design number

$28 in respect of each

design number

$35 in respect of each

design number

$100 in respect of each

design number

$400

$715

$80

—

Fourth column

Corresponding Form(s)

Form CM6

Form CM7

Form CM8

Form CM10

Form CM12

Form CM13

Form D13

Form HC1

Form HC2

Form HC3

Second column First column Third column Fourth column

Matter Corresponding

Rule(s) Fee Corresponding Form(s)

of time to file

counter-statement

24. Request for ex parte 27(5), 52A(1) $100 Form HC4

hearing

25. Request to the Registrar

to state grounds of decision 27(8), 52A(8)(a) $700 Form HC5

for hearing

26. Filing of 41(1) $360 Form HC6

counter-statement

27. Purchase of a copy of — $10 —

the Designs Journal

28. For using the services of

a service bureau to file any

of the following by means 58H —

of the electronic online

system:

(a) �any form, and any $40 per form plus document $0.50 for each page of

— accompanying the the document form accompanying the form

(b) �any statutory declaration filed as evidence in inter partes proceedings or

$0.50 for each page of any written —

the document submission or bundle of authorities, not accompanying any form when filed

SECOND SCHEDULE

Rule 4(3)

DESCRIPTION OF FORMS

First column Second column

Form Description of Form

Application for registration of a design under 1. Form D3

section 11 of the Act

First column

Form

2. Form D5

3. Form D8

4. Form D13

5. Form CM1

6. Form CM2

7. Form CM3

8. Form CM4

9. Form CM5

10. Form CM6

11. Form CM7

12. Form CM8

13. Form CM9

14. Form CM10

15. Form CM12

16. Form CM13

17. Form HC1

18. Form HC2

19. Form HC3

20. Form HC4

21. Form HC5

22. Form HC6

”.

Second column

Description of Form

Application to amend an application for registration

of a design under section 15 of the Act

Application for extension of period of registration of a

design under section 21 of, or paragraph 3(6) of the

Schedule to, the Act, for restoration of registration

removed from the Register, or for extension of period

of registration

Application for revocation of the registration of a

design under section 27 of the Act

Request to appoint, change or remove agent

Request to change name, address and Singapore

address for service of agent, applicant, proprietor or

other interested person

Request to surrender a registered design

Request for correction of error

Request for extension of time

Application to register, amend or terminate licence

Application to register, amend or terminate security

interest

Application to register transfer of ownership

Request for withdrawal of application

Request for online file inspection

Request for certified copy of an entry in the Register

or certified extract from the Register

Request for reinstatement of rights

Notice of attendance at hearing

Request to extract the Registrar’s certificate of

taxation

Request for extension of time

Request for an ex parte hearing

Request for grounds of decision for ex parte hearing

Counter-statement

Amendment of Fourth Schedule

55. The Fourth Schedule to the principal Rules is amended —

(a) by deleting the sub-heading immediately before item 5 and substituting the following

sub-heading:

“INTERLOCUTORY PROCEEDINGS, ETC.”;

(b) by deleting items 5 and 6 and substituting the following items:

“

5. Preparing for all interlocutory proceedings,

pre-hearing reviews and case management

conferences

$50–$500

6. Attending all interlocutory proceedings,

pre-hearing reviews and case management

conferences

$50–$500

”; and

Savings and transitional provisions

56.—(1) Rule 8 of the principal Rules as in force immediately before 13 November 2014 shall

continue to apply on or after that date to every form which was filed under that rule before that date.

(2) Any notice of withdrawal of an application for registration of a design given before 13 November

2014 under rule 23 of the principal Rules as in force immediately before that date shall on or after that

date be treated as given under rule 23 of the principal Rules as in force on or after that date.

(3) Any request to amend the particulars relating to the name or address of an applicant in an

application for registration of a design, made before 13 November 2014 under rule 24 of the principal

Rules as in force immediately before that date shall on or after that date be treated as made under

rule 24 of the principal Rules as in force on or after that date.

(4) Rule 25 of the principal Rules as in force immediately before 13 November 2014 shall continue to

apply on or after that date to every notice referred to in section 16(3)(a) of the Act requesting

reinstatement of an application for registration of a design, which was given under that rule before that

date.

(5) Any application to the Registrar for a hearing made before 13 November 2014 under rule 27(3)(b)

of the principal Rules as in force immediately before that date shall on or after that date be treated as

made under rule 27(3)(b) of the principal Rules as in force on or after that date.

(6) Any request for an extension of time made before 13 November 2014 under rule 27(4) of the

principal Rules as in force immediately before that date shall on or after that date be treated as made

under rule 27(4) of the principal Rules as in force on or after that date.

(7) Rule 27(8) of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date to every request for the Registrar to state the Registrar’s grounds of

decision, which was made under that provision as in force before that date.

(8) Rule 30(1) of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date to every request under section 28 of the Act for information, or for

permission to inspect any document, relating to a registered design, which was made under rule 30(1) of

the principal Rules as in force before that date.

(9) Any application under section 55(3) of the Act, made before 13 November 2014 under rule 32 of

the principal Rules as in force immediately before that date shall, on or after that date be treated as

made under rule 32 of the principal Rules as in force on or after that date.

(10) Any request for the correction of any clerical error made before 13 November 2014 under

rule 33(1) of the principal Rules as in force immediately before that date shall on or after that date be

treated as made under rule 33(1) of the principal Rules as in force on or after that date.

(11) Any request to correct the particulars in the Register relating to the name or address of an

applicant, made before 13 November 2014 under rule 33(2) of the principal Rules as in force

immediately before that date, shall on or after that date be treated as made under rule 33(2) of the

principal Rules as in force on or after that date.

(12) Rule 37 of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date to the following, which was made or given under that rule before that

date:

(a) every application to register particulars of a registrable transaction under section 34 of the

Act;

(b) every notice to the Registrar of particulars of a transaction under section 35 of the Act.

(13) Rule 38 of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date to every application which was made, by a person to have a note entered

in the Register that he no longer claims to be mortgagee or licensee, under that rule before that date.

(14) Any surrender of the registration of a design made before 13 November 2014 under rule 39(1)

of the principal Rules as in force immediately before that date shall on or after that date be treated as

made under rule 39(1) of the principal Rules as in force on or after that date.

(15) Any counter-statement filed before 13 November 2014 under rule 41(1) of the principal Rules as

in force immediately before that date shall on or after that date be treated as filed under rule 41(1) of

the principal Rules as in force on or after that date.

(16) Any request for an extension of time to file a counter-statement made before 13 November

2014 under rule 41(3) of the principal Rules as in force immediately before that date shall on or after

that date be treated as made under rule 41(3) of the principal Rules as in force on or after that date.

(17) Rule 42 of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date to any evidence which was filed and sent under that rule before that date.

(18) Rule 43 of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date to any evidence which was filed and sent under that rule before that date.

(19) Rule 44 of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date to any evidence in reply which was filed and sent under that rule before

that date.

(20) Any form filed by a party who intends to appear at a hearing, before 13 November 2014 under

rule 48(3) of the principal Rules as in force immediately before that date shall on or after that date be

treated as filed under rule 48(3) of the principal Rules as in force on or after that date.

(21) Rule 48(8) of the principal Rules as in force immediately before 13 November 2014 shall

continue to apply on or after that date to the following:

(a) every application which was made before that date to restore any proceedings struck out

under rule 48(6) of the principal Rules as in force immediately before that date;

(b) every application which was made before that date to set aside any decision made under

rule 48(7) of the principal Rules as in force immediately before that date.

(22) Rules 56B and 56D of, and the Fourth Schedule to, the principal Rules as in force immediately

before 13 November 2014 shall continue to apply on or after that date to any order for costs made by

the Registrar before that date, to any appeal brought before that date in respect of any such order for

costs, or to any bill of costs filed before that date in respect of any such order for costs.

(23) Any form filed before 13 November 2014 in relation to the issue of a certificate by the Registrar

under rule 56E of the principal Rules as in force immediately before that date shall on or after that date

be treated as filed under rule 56E of the principal Rules as in force on or after that date.

(24) Rule 60C of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date to a request, which was made before that date under rule 7(4) or 66(2) of

the principal Rules as in force immediately before that date.

(25) Rule 65 of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date with respect to any direction given, or term imposed, by the Registrar

under that rule before that date.

(26) Any request made before 13 November 2014 under rule 66(1) of the principal Rules as in force

immediately before that date, by any person to change his name appearing in the Register or any

document given or sent to or filed with the Registrar, shall on or after that date be treated as made

under rule 66(1) of the principal Rules as in force on or after that date.

(27) Rule 67 of the principal Rules as in force immediately before 13 November 2014 shall continue

to apply on or after that date to every application to extend the period of registration of a relevant

design from the expiry of its initial period of registration, which was made under that rule before that

date.

[G.N. Nos. S 778/2004; S 556/2005; S 587/2011]

Made on 10 November 2014.

Singapur

SG065

Registered Designs (Amendment) Rules 2014