PART VI
GENERAL
Exercise of discretionary power of Registrar
62.  Where any discretionary or other power is given to the Registrar by this Act or by any rules made thereunder, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of the trade mark in question without (if duly required to do so within the prescribed time) giving to the applicant or registered proprietor an opportunity of being heard.
Appeal from Registrar
63.  Except where expressly provided by this Act or any rules made thereunder, there shall be no appeal from a decision of the Registrar, but the court, in dealing with any question of the rectification of the register (including all applications under section 39), shall have power to review any decision of the Registrar relating to the entry in question or the correction sought to be made.
Recognition of agents
64.  Where by this Act any act has to be done by or to any person in connection with a trade mark or proposed trade mark or any proceeding relating thereto, the act may under and in accordance with any rules made under this Act or in particular cases by special leave of the Registrar be done by or to an agent of that person duly authorised in the prescribed manner.
Preliminary advice by Registrar as to distinctiveness
65.—(1)  The power to give to a person who proposes to apply for the registration of a trade mark in Part A or Part B of the register advice as to whether the trade mark appears to the Registrar prima facie to be inherently adapted to distinguish, or capable of distinguishing, as the case may be, shall be a function of the Registrar under this Act.
(2)  Any such person who is desirous of obtaining such advice shall make application to the Registrar therefor in the prescribed manner.
(3)  If on an application for the registration of a trade mark as to which the Registrar has given advice as aforesaid in the affirmative, made within 3 months after the advice is given, the Registrar, after further investigation or consideration, gives notice to the applicant of objection on the ground that the trade mark is not adapted to distinguish, or capable of distinguishing, as the case may be, the applicant shall be entitled, on giving notice of withdrawal of the application within the prescribed period, to have repaid to him any fee paid on the filing of the application.
Power to make rules
66.—(1)  Subject to the provisions of this Act, the Minister may make such rules, prescribe such forms, and generally do such things as he may consider expedient —
(a)for regulating the practice (other than that relating to proceedings before the court or connected therewith) under this Act including the service of documents;
(b)for classifying goods or services for the purposes of registration of trade marks;
(c)for making or requiring duplicates of trade marks and other documents;
(d)for securing and regulating the publishing and selling or distributing in such manner as the Minister may think fit, of copies of trade marks and other documents;
(e)generally, for regulating the business of the office in relation to trade marks and all things by this Act placed under the direction or control of the Registrar;
(f)generally, for adjusting any matter or practice which may be prescribed or governed by rules made under this section so that the period between 15th February 1942 and 1st October 1947 may be excluded or equitably accounted for, and any such adjustments may be made with retrospective effect.
(1A)  Rules made under subsection (1) may specify the hour at which the Registry shall be deemed to be closed on any day for the purposes of the transaction by the public of business under this Act or any rules made thereunder or of any class of such business, and may specify days as excluded days for any such purposes.
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(1B)  Any business done under this Act or any rules made thereunder on any day after the hour so specified in relation to business of that class, or on a day which is an excluded day in relation to business of that class, shall be deemed to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act or any rules made thereunder expires on an excluded day, that time shall be extended to the next following day not being an excluded day.
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(2)  All rules made under this section shall be presented to Parliament as soon as possible after publication in the Gazette and if a resolution is passed pursuant to a motion notice whereof has been given for a sitting day not later than the first available sitting day of Parliament next after the expiry of 3 months from the date when the rules are so presented annulling the rules or any part thereof as from a specified date, the rules or such part thereof, as the case may be, shall thereupon become void as from that date but without prejudice to the validity of anything previously done thereunder or to the making of new rules.
(3)  Subject to the provisions of this Act, the Rules Committee constituted under section 80 of the Supreme Court of Judicature Act [Cap. 322] may make Rules of Court regulating the practice and procedure in relation to proceedings before the court or connected therewith, and the costs of such proceedings.
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Fees
67.  There shall be paid in respect of applications and registration and other matters under this Act, such fees as the Minister may from time to time prescribe.
Certification trade marks
68.—(1)  A mark adapted in relation to any goods or services to distinguish in the course of trade goods or services, as the case may be, certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods or services, as the case may be, not so certified shall be registrable as a certification trade mark in Part A of the register in respect of those goods or services in the name, as proprietor thereof, of that person:
Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods, or the provision of services, of the kind certified.
In determining whether a mark is adapted to distinguish as aforesaid, the Registrar may have regard to the extent to which —
(a)the mark is inherently adapted so to distinguish; and
(b)by reason of the use of the mark or of any other circumstances, the mark is in fact adapted so to distinguish.
(2)  Subject to subsections (3) to (5), and sections 48 and 52, the registration of a person as proprietor of a certification trade mark shall, if valid, give to that person the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the mark is registered and without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the registered proprietor of the trade mark or a person authorised by him under the regulations in that behalf using it in accordance therewith, uses in the course of trade a mark identical with it or nearly resembling it, in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either —
(a)as being use as a trade mark; or
(b)in a case in which the use is use upon the goods or in physical relation thereto or use upon the services at or near the place where the services are available for acceptance or in an advertising circular, or other advertisement, issued to the public, as importing a reference to some person having the right either as the registered proprietor or by his authorisation under the relevant regulations to use the trade mark or to goods or services certified by the registered proprietor.
(3)  The right to the use of a certification trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of the mark in any manner in relation to goods to be sold or otherwise traded in, in a place, in relation to goods to be exported to any market, in relation to services for use or available for acceptance in a place, or in any other circumstances to which, having regard to those conditions or limitations, the registration does not extend.
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(4)  The right to the use of a certification trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of the trade mark as aforesaid by any person —
(a)in relation to goods certified by the proprietor of the trade mark if, as to those goods or a bulk of which they form part, the registered proprietor or another in accordance with his authorisation under the relevant regulations has applied the trade mark and has not subsequently removed or obliterated it, or if the registered proprietor has at any time, expressly or impliedly, consented to the use of the trade mark;
(b)in relation to services to which the proprietor of the trade mark or another in accordance with his authorisation under the relevant regulations has applied the trade mark, where the purpose and effect of the use thereof is to indicate that those services have been certified by the proprietor or where the proprietor has at any time, expressly or impliedly, consented to the use of the trade mark; or
(c)in relation to goods or services adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the mark is to indicate, otherwise than in accordance with the fact, that the goods or services are certified by the proprietor:
Provided that paragraphs (a) and (b) shall not have effect in the case of use consisting of the application of any such mark as aforesaid to any goods or services, notwithstanding that they are such goods or services as are mentioned in those paragraphs, if the application is contrary to the relevant regulations.
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(5)  Where a certification trade mark is one of two or more registered trade marks which are identical or nearly resemble each other, the use of any of those trade marks in exercise of the right to the use of that trade mark given by registration shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks.
(6)  An application for the registration of a mark under this section shall be made to the Registrar in writing in the prescribed manner by the person proposed to be registered as the proprietor thereof.
(7)  Section 12(2) to (7) shall have effect in relation to an application under this section as it has effect in relation to an application under section 12(1).
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(8)  In dealing under section 12(2) to (7) with an application under this section, the Registrar shall have regard to the like considerations, so far as relevant, as if the application were an application under section 12 and to any other considerations relevant to applications under this section, including the desirability of securing that a certification trade mark shall comprise some indication that it is such a trade mark.
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(9)  An applicant for the registration of a mark under this section shall transmit to the Registrar draft regulations for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods or services and to authorise the use of the trade mark, and may contain any other provisions that the Registrar may require or permit to be inserted therein (including provisions conferring a right of appeal to the Registrar against any refusal of the proprietor to certify goods or services or to authorise the use of the trade mark in accordance with the regulations). Such regulations, if approved, shall be deposited with the Registrar and shall be open to inspection in like manner as the register.
(10)  The Registrar shall consider the application with regard to the following matters:
(a)whether the applicant is competent to certify the goods or services in respect of which the mark is to be registered;
(b)whether the draft regulations are satisfactory; and
(c)whether in all the circumstances the registration applied for would be to the public advantage;
and may either —
(i)refuse to accept the application; or
(ii)accept the application and approve the regulations, either without modification and unconditionally or subject to any conditions or limitations, or to any amendments or modifications of the application or of the regulations, which he may think requisite having regard to any of the matters aforesaid,
but, except in the case of acceptance and approval without modification and unconditionally, the Registrar shall not decide the matter without giving to the applicant an opportunity of being heard:
Provided that the Registrar may, at the request of the applicant, consider the application with regard to any of the matters aforesaid, except that the Registrar shall be at liberty to reconsider any matter on which he has given a decision under this proviso if any amendment or modification is thereafter made in the application or in the draft regulations.
(11)  When an application has been accepted, the Registrar shall, as soon as possible after such acceptance, cause the application as accepted to be advertised in the prescribed manner, and section 19 shall have effect in relation to the registration of the mark as if the application had been an application under section 12:
Provided that, in deciding under those provisions, the Registrar shall have regard only to the considerations referred to in subsection (8), and a decision under those provisions in favour of the applicant shall be conditional on the determination in his favour by the Registrar under subsection (12) of any opposition relating to any of the matters referred to in subsection (10).
(12)  When notice of opposition is given relating to any of the matters referred to in subsection (10), the Registrar shall, after hearing the parties, if so required, and considering any evidence, decide whether, and subject to what conditions or limitations, or amendments or modifications of the application or of the regulations, if any, registration is, having regard to those matters, to be permitted.
(13)  (a)  The regulations deposited in respect of a certification trade mark may, on the application of the registered proprietor, be altered by the Registrar.
(b)  The Registrar may cause an application for his consent to be advertised in any case where it appears to him that it is expedient to do so, and, where the Registrar causes an application to be advertised, if within the prescribed time from the date of the advertisement any person gives notice to the Registrar of opposition to the application, the Registrar shall not decide the matter without giving the parties an opportunity of being heard.
(14)  (a)  The court may, on the application in the prescribed manner of any person aggrieved, or on the application of the Registrar, make such order as it thinks fit for expunging or varying any entry in the register relating to a certification trade mark, or for varying the deposited regulations, on the ground —
(i)that the proprietor is no longer competent, in the case of any of the goods or services in respect of which the trade mark is registered, to certify those goods or services;
(ii)that the proprietor has failed to observe a provision of the deposited regulations to be observed on his part;
(iii)that it is no longer to the public advantage that the trade mark should be registered; or
(iv)that it is requisite for the public advantage that if the trade mark remains registered, the regulations should be varied,
and the court shall not have any jurisdiction to make an order under section 39 on any of those grounds.
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(b)  The Registrar shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under paragraph (a).
(15)  Notwithstanding anything in section 56(2), the Registrar shall not have any jurisdiction to award costs to or against any party on an appeal to him against a refusal of the proprietor of a certification trade mark to certify goods or services or to authorise the use of the trade mark.
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(16)  The following provisions of this Act shall not have effect in relation to a certification trade mark:
(a)sections 10, 12, 18 and 19 (except as expressly applied by this section), 30, 40, 41, 42(4) to (8), 45, 51 and 76(3); and
(b)any provisions the operation of which is limited by the terms thereof to registration in Part B of the register.
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(17)  A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Registrar who before giving his decision shall consider —
(a)whether the person to whom it is proposed to assign or transmit the mark is competent to certify the goods or services in respect of which the mark is registered;
(b)whether in all the circumstances the proposed assignment or transmission would be to the advantage of the public.
[Act 7/91]
(18)  A certification trade mark shall not be assignable or transmissible to a person who carries on a trade in goods, or the provision of services, of the kind certified.
[Act 7/91]
(19)  Any decision of the Registrar under this section shall be subject to appeal to the court.
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Offences
69.—(1)  If any person makes or causes to be made a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $50,000 or to imprisonment for a term not exceeding 5 years or to both.
Penalty for falsely representing a trade mark as registered
(2)  Any person who makes a representation —
(a)with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark;
(b)with respect to a part of a registered trade mark not being a part separately registered as a trade mark, to the effect that it is so registered;
(c)to the effect that a registered trade mark is registered in respect of any goods or services in respect of which it is not registered; or
(d)to the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitations entered on the register, the registration does not give that right,
shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000.
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(3)  For the purposes of this section, the use in Singapore in relation to a trade mark of the word “registered”, or of any other word referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register, except —
(a)where that word is used in physical association with other words delineated in characters at least as large as those in which that word is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside Singapore, being a country under the law of which the registration referred to is in fact in force;
(b)where that word (being a word other than the word “registered”) is of itself such as to indicate that the reference is to such registration as last aforesaid; or
(c)where that word is used in relation to a mark registered as a trade mark under the law of a country outside Singapore and in relation to goods to be exported to that country or to services for use in that country.
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Counterfeiting a trade mark used by another
70.  Any person who counterfeits any trade mark used by any other person shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $100,000 or to imprisonment for a term not exceeding 5 years or to both.
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What constitutes counterfeiting a trade mark
71.—(1)  A person shall be deemed to counterfeit a trade mark who either —
(a)without the consent of the proprietor of the trade mark makes that trade mark or a mark so nearly resembling that trade mark as to be calculated to deceive; or
(b)falsifies any genuine trade mark whether by alteration, addition, effacement or otherwise.
(2)  In any prosecution for counterfeiting a trade mark the burden of proving the consent of the proprietor shall lie on the defendant.
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Making or possession of any instrument for counterfeiting a trade mark
72.  Any person who makes or has in his possession any die, plate or other instrument for the purpose of counterfeiting a trade mark, or has in his possession a trade mark for the purpose of denoting that any goods are the manufacture or merchandise of a person whose manufacture or merchandise they are not, or that they belong to a person to whom they do not belong, shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $100,000 or to imprisonment for a term not exceeding 5 years or to both.
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Importing or selling, etc., goods marked with a counterfeit trade mark
73.  Any person who imports, sells or exposes or has in his possession for sale or for any purpose of trade or manufacture, any goods or thing to which a counterfeit trade mark is applied or to which a registered trade mark is falsely applied, shall, unless he proves that —
(a)having taken all reasonable precautions against committing an offence under this section, he had, at the time of the commission of the alleged offence, no reason to suspect the genuineness of the mark and on demand made by or on behalf of the prosecution, he gave all the information in his power with respect to the persons from whom he obtained the goods or things; or
(b)he had acted innocently,
be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000 for each goods or thing to which the counterfeit trade mark is applied or the registered trade mark is falsely applied (but not to exceed in the aggregate $100,000) or to imprisonment for a term not exceeding 5 years or to both.
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Falsely applying a registered trade mark to services
73A.  Any person who falsely applies a registered trade mark to services shall, unless he proves that he had acted innocently, be guilty of an offence and shall be liable on conviction to a fine not exceeding $100,000 or to imprisonment for a term not exceeding 5 years or to both.
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When trade mark deemed applied
73B.—(1)  A trade mark shall be deemed to be applied to goods if it is woven in, impressed on, worked into, or annexed or affixed to, the goods.
(2)  A trade mark shall be deemed to be applied to goods if —
(a)it is applied to the goods themselves; or
(b)it is applied to a covering, label, reel or thing in or with which the goods are sold or exposed or had in possession for a purpose of trade or manufacture.
(3)  A trade mark shall be deemed to be applied to goods or services if it is used in —
(a)a manner likely to lead to the belief that it refers to, describes or designates the goods or services;
(b)a sign or advertisement, including a televised advertisement; or
(c)an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document,
and goods are delivered, or services provided, as the case may be, to a person in pursuance of a request or order made by reference to the trade mark as so used.
(4)  For the purposes of this section, “covering” includes a stopper, glass, bottle, vessel, box, capsule, case, frame or wrapper, and “label” includes a band or ticket.
(5)  A registered trade mark shall be deemed to be falsely applied to goods or services if, without the assent of the registered proprietor of the trade mark or of a registered user of the trade mark, the trade mark or a mark substantially identical with it is applied to the goods or services.
(6)  In a prosecution for falsely applying a registered trade mark to goods or services, the burden of proving the assent of the registered proprietor or a registered user lies on the defendant.
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Forfeiture of articles, etc., on conviction
73C.  A person convicted of an offence under any provision of this Act shall be liable, in addition to the punishment provided in that provision, to forfeit to the Government all articles or goods by means of which, or in relation to which, the offence was committed.
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Jurisdiction of courts
73D.  A District Court or a Magistrate’s Court shall have jurisdiction to hear and determine all offences under this Act and, notwithstanding anything to the contrary in the Criminal Procedure Code, shall have power to impose the full penalty or punishment in respect of any offence under this Act.
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Representation on trade marks of Arms or Flag prohibited, etc.
74.—(1)  Any person who causes or permits to appear on a trade mark used by him for the purposes of his trade or business any representation of the Arms or the Flag of Singapore, or of any arms or devices so nearly resembling them as to be likely to deceive, shall, unless such trade mark is authorised to be used by order of the President, be guilty of an offence.
(2)  Any person who imports, sells or exposes or has in his possession for sale or any purpose of trade or manufacture any goods or things to which a trade mark bearing any representation prohibited by subsection (1) is applied, shall be guilty of an offence.
(3)  Any person guilty of an offence under subsection (1) or (2) shall be liable on conviction to a fine not exceeding $50,000 or to imprisonment for a term not exceeding 5 years or to both and shall forfeit any goods to which the trade mark bearing the prohibited representation is applied.
[Act 7/91 wef 01/03/1991 vide S 96/91]
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International arrangements
75.—(1)  Where any person has registered or has applied for protection for any trade mark in any foreign state to which this section applies, that person or his legal representative or assignee shall be entitled to registration of his trade mark in priority to other applicants; and the registration shall have the same date as the date of application for protection in the foreign state, as the case may be:
Provided that —
(a)the application for registration is made within 6 months from the date of commencement of Part II or of the application for protection in the foreign state; and
(b)nothing in this section shall entitle the proprietor of a trade mark to recover damages or infringements happening prior to the actual date on which his trade mark is registered in Singapore.
(1A)  Where an application for protection for a trade mark in respect of services was made in a foreign state before 1st March 1991, a trade mark in respect of services registered on an application under this section made within 6 months from the date of application for protection in the foreign state shall be registered as of that date.
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(2)  The registration of a trade mark shall not be invalidated by reason only of the use of the trade mark by some other person in Singapore during the aforesaid period of 6 months.
(3)  The application for the registration of a trade mark under this section shall, subject to such further requirements as may be prescribed —
(a)be made in the same manner as an ordinary application under Part II; and
(b)specify —
(i)the foreign state in which the application for protection was made;
(ii)the date on which such application for protection was made.
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(4)  This section shall apply only in the case of those foreign states with respect to which the Minister may by notification to be published in the Gazette1 declare this section to be applicable and so long only in the case of each of such foreign states as the notification continues in force with respect to that state.
1  See G.N. No. S (N.S.) 226/59.
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[Act 7 of 1997 wef 01/10/1997]
(5)  (Deleted by Act 7/91).
(6)  For the purposes of this section, “foreign state” shall be deemed to include any colony, protectorate, territory subject to the authority or under the suzerainty of a foreign state and any territory administered by a foreign state in accordance with a mandate from the League of Nations or under the trusteeship system of the United Nations.
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Use of trade mark for export trade, and use where form of trade connection changes
76.—(1)  The application in Singapore of a trade mark to goods to be exported from Singapore and any other act done in Singapore in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in within Singapore, would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or at common law.
(2)  Any act done in Singapore in relation to services for use outside Singapore which, if done in relation to services provided within Singapore for use there, would constitute use of a trade mark in Singapore, shall be deemed to constitue use of the trade mark in relation to those services for any purpose for which such use is material under this Act or at common law.
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(3)  The use of a registered trade mark in relation to goods or services between which and the person using it any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the trade mark has been, or is, used in relation to goods or services between which and that person or a predecessor in title of his a different form of connection in the course of trade subsisted or subsists.
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Power of amendment
77.  The Registrar may, on such terms as to costs or otherwise as he thinks just —
(a)whether for the purpose of correcting a clerical error or an obvious mistake or otherwise, permit the amendment of a notice of opposition or other document lodged at the Registry; or
(b)for the purpose of correcting a clerical error or an obvious mistake, amend the register or a certificate of registration of a trade mark.
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Extension of time
78.  Where, by this Act or any rules made thereunder, a time is specified within which an act or thing is to be done, the Registrar may, unless otherwise expressly provided, extend the time either before or after its expiration.
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Power to extend times by reason of errors in Registry, etc.
79.—(1)  Where by reason of an error or action on the part of an officer or person employed in the Registry an act or step in relation to an application for the registration of a trade mark or in proceedings under this Act (not being proceedings in a court), required to be done or taken within a certain time has not been so done or taken, the Registrar may extend the time for doing the act or taking the step and permit the act to be done or the step to be taken.
(2)  The time required for doing an act or taking a step may be extended under this section although the time has expired.
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