Correction and rectification of register
Correction of register
37.—(1)  The Registrar may, on request made in the prescribed manner by the registered proprietor —
(a)correct any error in the name, address or description of the person who is registered as proprietor of a trade mark;
(b)enter any change in the name or address of the person who is registered as proprietor of a trade mark;
(c)cancel the entry of a trade mark on the register;
(d)strike out any goods or services or classes of goods or services from those for which a trade mark is registered; or
(e)enter a disclaimer or memorandum relating to a trade mark which does not in any way extend the rights given by the existing registration of the trade mark.
(2)  The Registrar may, on request made in the prescribed manner by a registered user of a trade mark, correct any error, or enter any change, in the name, address or description of the registered user.
(3)  Any decision of the Registrar under this section shall be subject to appeal to the court.
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Alteration of registered trade mark
38.—(1)  The registered proprietor of any trade mark may apply in the prescribed manner to the Registrar for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Registrar may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.
(2)  The Registrar may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient to do so and, where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar in the prescribed manner of opposition to the application, the Registrar shall, after hearing the parties if so required, decide the matter.
(3)  Any decision of the Registrar under this section shall be subject to appeal to the court.
(4)  Where leave as aforesaid is granted, the trade mark as altered shall be advertised in the prescribed manner, unless it has already been advertised, in the form to which it has been altered, in an advertisement under subsection (2).
Rectification of register
39.—(1)  Subject to the provisions of this Act —
(a)the court may on the application in the prescribed manner of any person aggrieved by the non-insertion in or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongfully remaining on the register, or by any error or defect in any entry in the register, make such order for making, expunging or varying the entry as it thinks fit;
(b)the court may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of the register;
(c)in case of fraud in the registration, assignment or transmission of a registered trade mark the Registrar may himself apply to the court under this section;
(d)any order of the court rectifying the register shall direct that notice of the rectification be served on the Registrar in the prescribed manner, and the Registrar shall, upon receipt of the notice, rectify the register accordingly.
(2)  The power to rectify the register conferred by this section includes power to remove a registration in Part A of the register to Part B of the register.
(3)  On application by any person aggrieved to the court, or, at the option of the applicant and subject to section 61, to the Registrar, or on application by the Registrar to the court, the court or the Registrar, as the case may be, may make such order as the court or the Registrar thinks fit for expunging or varying the registration of a trade mark on the ground of any contravention of, or failure to observe, a condition entered on the register in relation thereto.
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Provisions as to non-use of trade mark
40.—(1)  Subject to section 41, a registered trade mark may be taken off the register in respect of any of the goods or services in respect of which it is registered on application by any person aggrieved to the court, on the ground either —
(a)that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, if it was registered under section 12(8) by the corporation or registered user concerned, and that there has in fact been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to the date one month before the date of the application; or
(b)that up to the date one month before the date of the application a continuous period of 5 years or longer had elapsed during which the trade mark was a registered trade mark and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being:
Provided that (except where the applicant has been permitted under section 25 to register an identical or nearly resembling trade mark in respect of the goods or services in question or where the court is of opinion that he might properly be permitted so to register such a trade mark) the court may refuse an application made under paragraph (a) or (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any registered proprietor thereof for the time being in relation to goods or services in respect of which the trade mark is registered, being —
(i)where the application relates to goods, goods of the same description as those goods or services that are associated with those goods; or
(ii)where the application relates to services, services of the same description as those services or goods that are associated with those services.
(2)  Where in relation to any goods in respect of which a trade mark is registered —
(a)the matters referred to in subsection (1)(b) are shown so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in, in Singapore (otherwise than for export from Singapore), or in relation to goods to be exported to a particular market outside Singapore; and
(b)a person has been permitted under section 25 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be sold, or otherwise traded in, in Singapore (otherwise than for export from Singapore), or in relation to goods to be exported to that market, or the court is of opinion that he might properly be permitted so to register such a trade mark,
on application by that person to the court, the court may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that that registration shall cease to extend to such use as last aforesaid.
(2A)  Where in relation to any services in respect of which a trade mark is registered —
(a)the matters referred to in subsection (1)(b) are shown so far as regards non-use of the trade mark in relation to services for use or available for acceptance in Singapore, or for use in a country or territory outside Singapore; and
(b)a person has been permitted under section 25 to register an identical or nearly resembling trade mark in respect of those services under a registration extending to use in relation to services for use or available for acceptance in Singapore or for use in that country or territory, or the court is of the opinion that he might properly be permitted so to register such a trade mark,
on application by that person to the court, the court may impose on the registration of the first-mentioned trade mark such limitations as the court thinks proper for securing that the registration shall cease to extend to such use as last aforesaid.
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(3)  An applicant shall not be entitled to rely for the purposes of subsection (1)(b), (2) or (2A), on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention not to use or to abandon the trade mark in relation to the goods or services to which the application relates.
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Defensive trade marks
41.—(1)  Where a trade mark consisting of an invented word or invented words has become so well known as respects any goods in respect of which it is registered and in relation to which it has been used that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first-mentioned goods, then, notwithstanding that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in the last foregoing section, the trade mark may, on the application in the prescribed manner of the proprietor registered in respect of the first-mentioned goods, be registered in his name in respect of those other goods as a defensive trade mark and, while so registered, shall not be liable to be taken off the register in respect of those goods under section 40.
(2)  The registered proprietor of a trade mark may apply for the registration thereof in respect of any goods as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply for the registration thereof in respect of any goods otherwise than as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods as a defensive trade mark, in lieu in each case of the existing registration.
(3)  A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods, be deemed to be, and shall be registered as, associated trade marks.
(4)  On application by any person aggrieved to the court, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements of subsection (1) are no longer satisfied in respect of any goods in respect of which the trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark, or may be cancelled as respects any goods in respect of which it is registered as a defensive trade mark on the ground that there is no longer any likelihood that the use of the trade mark in relation to those goods would be taken as giving the indication mentioned in subsection (1).
(5)  The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark.
(6)  Except as otherwise expressly provided in this section, the provisions of this Act apply in respect of the registration of trade marks as defensive trade marks and of trade marks so registered as they apply in other cases.
Assignment and transmission of trade marks
42.—(1)  Notwithstanding any rule of law or equity to the contrary, a registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible either in connection with the goodwill of a business or not.
(2)  A registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible in respect either of all the goods or services in respect of which it is registered, or was registered, as the case may be, or of some (but not all) of those goods or services.
(3)  Subsections (1) and (2) shall have effect in the case of an unregistered trade mark used in relation to any goods or services as they have effect in the case of a registered trade mark registered in respect of any goods or services, if at the time of the assignment or transmission of the unregistered trade mark it is or was used in the same business as a registered trade mark, and if it is or was assigned or transmitted at the same time and to the same person as that registered trade mark and in respect of goods or services all of which are goods or services in relation to which the unregistered trade mark is or was used in that business and in respect of which that registered trade mark is or was assigned or transmitted.
(4)  Notwithstanding anything in subsections (1) , (2) and (3), a trade mark shall not be, or be deemed to have been, assignable or transmissible in a case in which, as a result of an assignment or transmission, there would in the circumstances subsist, or have subsisted, whether under the common law or by registration, exclusive rights in more than one of the persons concerned to the use, in relation to —
(a)the same goods or services;
(b)the same description of goods or services; or
(c)goods and services or descriptions of goods and services which are associated with each other,
of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods or services, or the same description of goods or services, or the association of the goods and services or descriptions of goods and services, and to the similarity of the trade marks, the use of the trade marks in exercise of those rights would be or have been likely to deceive or cause confusion:
Provided that, where a trade mark is or has been assigned or transmitted in such a case as aforesaid, the assignment or transmission shall not be deemed to be or to have been invalid under this subsection if the exclusive rights subsisting as a result thereof in the persons concerned respectively are or were, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to —
(i)goods to be sold or otherwise traded in within Singapore (otherwise than for export);
(ii)goods to be exported to the same market outside Singapore;
(iii)services for use in Singapore;
(iv)services for use in the same country or territory outside Singapore; or
(v)services available for acceptance in Singapore (wherever they are to be used).
(5)  The proprietor of a registered trade mark who proposes to assign it in respect of any goods or services in respect of which it is registered may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances, and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods or services or the association of the goods and services or descriptions of goods and services and to the similarity of the trade marks referred to in the case, the proposed assignment of the first-mentioned trade mark would or would not be invalid under subsection (4), and a certificate so issued shall, subject to this section as to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under subsection (4) of the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 43 of the title of the person becoming entitled is made within 6 months from the date on which the certificate is issued.
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(6)  Notwithstanding anything in subsections (1), (2) and (3), a trade mark shall not be assignable or transmissible in a case in which as a result of an assignment or transmission thereof there would in the circumstances subsist, whether under the common law or by registration —
(a)an exclusive right in one of the persons concerned to the use of the mark limited to use in relation to goods to be sold or otherwise traded in, or to services for use or available for acceptance in a place or places in Singapore; and
(b)an exclusive right in another of the persons concerned to the use of a mark identical with or nearly resembling the mark referred to in paragraph (a) in relation to —
(i)the same goods or services;
(ii)the same description of goods or services; or
(iii)goods and services or descriptions of goods or services which are associated with each other,
limited to use in relation to goods to be sold, or otherwise traded in, or services for use, or available for acceptance, in another place or places in Singapore:
Provided that, on application in the prescribed manner by the proprietor or a trade mark who proposes to assign it, or of a person who claims that such a mark has been transmitted to him or to a predecessor in title of his, in any such case, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest, may approve the assignment or transmission and an assignment or transmission so approved shall not be deemed to be, or to have been, invalid under this subsection or subsection (4) so, however, that in the case of a registered trade mark this provision shall not have effect unless application for the registration under section 43 of the title of the person becoming entitled is made within 6 months from the date on which the approval is given or, in the case of a transmission, was made before that date.
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(7)  (Deleted by Act 7/91).
(8)  Any decision of the Registrar under this section shall be subject to appeal to the court.
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Registration of assignments
43.—(1)  Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall make application to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register. Any decision of the Registrar under this section shall be subject to appeal to the court.
(2)  Except in cases of appeals under this section and applications made under section 39, a document or instrument in respect of which no entry has been made in the register in accordance with subsection (1) shall not be admitted in evidence in any court in proof of the title to a trade mark unless the court otherwise directs.
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