No. S 661
Trade Marks Act
(Chapter 332)
Trade Marks (Amendment) Rules 2001
In exercise of the powers conferred by section 108 of the Trade Marks Act, the Minister for Law, after consultation with the Intellectual Property Office of Singapore, hereby makes the following Rules:
Citation and commencement
1.—(1)  These Rules may be cited as the Trade Marks (Amendment) Rules 2001 and shall, with the exception of rule 13, come into operation on 15th January 2002.
(2)  Rule 13 shall come into operation on 1st January 2002.
Amendment of rule 2
2.  Rule 2(1) of the Trade Marks Rules (R 1) (referred to in these Rules as the principal Rules) is amended —
(a)by inserting, immediately before the definition of “folio”, the following definitions:
“ “account holder” means a person registered as an account holder by the Registrar under rule 78B;
“authentication code” means an identification or identifying code, password or any other authentication method or procedure that may be assigned to or approved for an account holder by the Registrar;
“electronic online system” means the electronic online system established under rule 78A;”; and
(b)by inserting, immediately after the definition of “folio”, the following definition:
“ “identification name” means an identification name assigned to an account holder by the Registrar under rule 78C;”.
Amendment of rule 3
3.  Rule 3 of the principal Rules is amended by deleting paragraph (2) and substituting the following paragraph:
(2)  Any fee in the First Schedule shall be paid at the same time as the filing of the matter in question.”.
Amendment of rule 4
4.  Rule 4 of the principal Rules is amended by deleting paragraph (2) and substituting the following paragraph:
(2)  Any form may be modified on the direction of the Registrar —
(a)for use in a case other than the case for which it is intended; or
(b)for carrying out any transaction by means of the electronic online system.”.
Amendment of rule 5
5.  Rule 5 of the principal Rules is amended by inserting, immediately after the words “served on the Registrar”, the words “, other than by means of the electronic online system,”.
Amendment of rule 18
6.  Rule 18 of the principal Rules is amended —
(a)by inserting, immediately after the words “section 11 of the Act” in the penultimate line of paragraph (1), the words “(referred to in this rule as the priority application)”; and
(b)by deleting paragraphs (2) and (3) and substituting the following paragraphs:
(2)  The applicant shall file with the Registrar a declaration in Form TM 5 that —
(a)the date of filing of the priority application is no earlier than 6 months before the date of filing of the application under rule 15 (1);
(b)the country or territory in which the priority application was filed is that named in the application form as such country or territory;
(c)the applicant is the same person as the applicant or his successor in title for the priority application;
(d)the mark in the application form is identical to the mark in the priority application; and
(e)the goods or services in respect of which application under rule 15 (1) is made are the same as all or any of the goods or services in respect of which the priority application was made.
(3)  The Registrar may at any time require the applicant to file a certificate by the registering or other competent authority of the country or territory concerned certifying or verifying to the satisfaction of the Registrar —
(a)the date of filing of the priority application;
(b)the country or territory, or the registering or competent authority;
(c)the representation of the mark; and
(d)the goods and services covered by the priority application.
(4)  Where the certificate referred to in paragraph (1) is not in the English language, there shall be annexed to the certificate a translation in English of the contents of the certificate, certified or verified to the satisfaction of the Registrar.”.
Amendment of rule 19
7.  Rule 19 (4) of the principal Rules is amended by inserting, immediately after the word “class” in the 2nd line, the words “in the Third Schedule”.
New Part XIA
8.  The principal Rules are amended by inserting, immediately after rule 78, the following Part:
PART XIA
ELECTRONIC ONLINE SYSTEM
Establishment of electronic online system
78A.—(1)  There shall be established an electronic online system for the purposes of these Rules.
(2)  The electronic online system may be used for carrying out any of the transactions referred to in rules 9 (5) and (7), 10 (3), 15 (1), 22 (2), 24 (2A), 44 (1), 49, 50A (3), 53 (3A), 55 (5A) and 62 (4).
Registration of agent as account holder
78B.—(1)  A person who has been appointed to act as an agent on behalf of another for any matter under the Act or these Rules and who desires to make use of the electronic online system to —
(a)file or send any application, request or other document for that matter; and
(b)make payment through Interbank GIRO for that matter,
shall, in accordance with the procedures set out in practice directions issued by the Registrar, apply to the Registrar to be registered as an account holder.
(2)  The Registrar may register a person as an account holder on such terms and with such restrictions pertaining to the use of the electronic online system as the Registrar thinks fit.
Identification name and authentication code
78C.—(1)  Upon registration of a person as an account holder, the person shall be assigned such number of identification names and authentication codes as the Registrar may determine.
(2)  The Registrar may cancel the identification name and authentication code assigned to an account holder if, to the knowledge of the Registrar, the authority of the account holder as agent has been revoked or terminated.
Obligation to inform Registrar of change of particulars
78D.  An account holder shall, in accordance with such procedure as may be laid down in practice directions issued by the Registrar, inform the Registrar of any change in the particulars furnished in his application for registration as an account holder under rule 78B.
Security measures
78E.—(1)  An account holder shall ensure the confidentiality and security of each identification name and authentication code assigned to him and shall not —
(a)divulge the identification name and authentication code to any other person who has no authority to use the identification name and authentication code; or
(b)permit any other person who has not been so authorised to use the identification name and authentication code.
(2)  When using the electronic online system, an account holder shall not circumvent any security or authentication mechanism in the system.
Duty of person carrying out electronic filing
78F.  A person shall only use the electronic online system in accordance with these Rules and any practice directions issued by the Registrar.
Cancellation of registration as account holder
78G.  The Registrar may cancel —
(a)the registration of an account holder; and
(b)any identification name and authentication code issued to the account holder,
if the Registrar is satisfied that the account holder has contravened rule 78E or 78F or any term or restriction imposed by the Registrar.”.
Amendment of rule 79
9.  Rule 79 of the principal Rules is amended —
(a)by deleting “5.00 p.m.” in paragraphs (1)(a) and (2)(a) and substituting in each case “5.30 p.m.”; and
(b)by inserting, immediately after paragraph (2), the following paragraphs:
(3)  Notwithstanding paragraphs (1) and (2), the Registry shall be taken to be open every day (other than an excluded day) at all hours for the carrying out of any of the transactions referred to in rule 78A (2) by means of the electronic online system.
(4)  For the avoidance of doubt, where the time for the carrying out of any of the transactions referred to in rule 78A (2) expires on an excluded day, that time shall be extended to the next following day (not being an excluded day) notwithstanding the availability of the electronic online system for the carrying out of that transaction.
(5)  Notwithstanding paragraphs (1) and (2), any document transmitted by means of the electronic online system and received by the server of that system set up to receive such transmissions at any time before 12 a.m. on any day shall be considered as having been submitted to and received by the Registry at that time and on that day.
(6)  For the purposes of paragraph (5), the document is considered to have been submitted to and received by the Registry if the last byte of the transmission containing the document is received by the server referred to in that paragraph.
(7)  Any person who files or sends any document by means of the electronic online system may produce a record of transmission issued through the electronic online system as evidence of —
(a)the filing or sending of the document; and
(b)the date and time the filing or sending took place.”.
New rule 80A
10.  The principal Rules are amended by inserting, immediately after rule 80, the following rule:
Extension of period where interruption in postal service, etc.
80A.—(1)  Where, on any day, there is an interruption in —
(a)the postal service of Singapore;
(b)the operation of the Registry; or
(c)the operation of the electronic online system,
the Registrar may certify that day as one on which there has been an “interruption” and, where any period of time specified in the Act or these Rules for the giving, sending, filing or serving of any notice, application or other document expires on a day so certified, the period shall be extended to the first day next following (not being an excluded day) which is not so certified.
(2)  A certificate given under paragraph (1) shall be posted on the notice board of the Registry.
(3)  If in any case the Registrar is satisfied that the failure to give, send, file or serve any notice, application or other document within the period specified in the Act or these Rules was wholly or mainly attributable to a failure of or delay in the postal service of Singapore or the electronic online system, the Registrar may, if he thinks fit and upon such terms as he may direct, extend the period so that it ends on the day of the receipt by the addressee of the notice, application or other document or, if the day of such receipt is an excluded day, on the first following day which is not an excluded day.
(4)  The Registrar shall give notice of an extension referred to in paragraph (3) to all parties to the matter.”.
Amendment of First Schedule
11.  The First Schedule to the principal Rules is amended —
(a)by deleting items 1 and 2 and substituting the following items:
1. Filing of address for service or change of address for service, or request to alter agent’s name or address on record, other than by means of the electronic online system
 
9 (5) or (7), 10 (3), 44 (4)
 
$8.50
 
1
1A. Filing of address for service or change of address for service, or request to alter agent’s name or address on record, by means of the electronic online system
 
9 (5) or (7), 10 (3), 44 (4)
 
$8.00
 
1
2. Application to register a trade mark filed other than by means of the electronic online system —
 
15 (1)
 
 
 
4
(a) where the specification consists of goods or services included in one class in the Third Schedule
 
 
 
$336
 
 
(b) where the specification consists of goods or services included in more than one class in the Third Schedule
 
 
 
$336 x number of classes
 
 
2A. Application to register a trade mark filed by means of the electronic online system —
 
15 (1)
 
 
 
4
(a) where the specification consists of goods or services included in one class in the Third Schedule
 
 
 
$306
 
 
(b) where the specification consists of goods or services included in more than one class in the Third Schedule
 
 
 
$306 x number of classes
 
 
2B. Filing declaration in support of priority claim
 
18 (2)
 
 
5
”;
(b)by deleting item 4 and substituting the following items:
4. Application to change name or address, filed other than by means of the electronic online system
 
22 (2), 44 (1)
 
$21
 
26
4A. Application to change name or address, filed by means of the electronic online system
 
22 (2), 44 (1)
 
$20
 
26
”;
(c)by deleting item 15 and substituting the following items:
15. Application for renewal of registration of a trade mark, filed other than by means of the electronic online system
 
49
 
$270
 
19
15A. Application for renewal of registration of a trade mark, filed by means of the electronic online system
 
49
 
$250
 
19
”;
(d)by deleting item 28 and substituting the following items:
28. Application to register a collective mark or certification mark, filed other than by means of the electronic online system —
 
62
 
 
 
9
(a) where the specification consists of goods or services included in one class in the Third Schedule
 
 
 
$336
 
 
(b) where the specification consists of goods or services included in more than one class in the Third Schedule
 
 
 
$336 x number of classes
 
 
28A. Application to register a collective mark or certification mark, filed by means of the electronic online system —
 
62
 
 
 
9
(a) where the specification consists of goods or services included in one class in the Third Schedule
 
 
 
$306
 
 
(b) where the specification consists of goods or services included in more than one class in the Third Schedule
 
 
 
$306 x number of classes
 
 
28B. Filing declaration in support of priority claim for registration of a collective mark or certification mark
 
62
 
 
5
”; and
(e)by inserting, immediately below item 42, the following item:
42A. Scanning of mark for search purposes
 
 
$1 for each page scanned
 
”.
Amendment of Second Schedule
12.  The Second Schedule to the principal Rules is amended —
(a)by deleting “5,” in the 3rd line;
(b)by deleting Form TM1 and substituting the following form:
UNKNOWN
UNKNOWN
UNKNOWN
(c)by inserting, immediately after Form TM 4, the following form:
UNKNOWN
UNKNOWN
(d)by deleting Form TM 23 and substituting the following form:
UNKNOWN
UNKNOWN
UNKNOWN
Amendment of Third Schedule
13.  Part II of the Third Schedule to the principal Rules is amended by deleting the item relating to Class 42 and substituting the following items:
Class 42
Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.
Class 43
Services for providing food and drink; temporary accommodation.
Class 44
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Class 45
Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
”.
[G.N. No. S 491/2000]

Made this 18th day of December 2001.

LIEW HENG SAN
Permanent Secretary,
Ministry of Law,
Singapore.
[LAW 18/001/003 Vol. 5; TM/031/90 Vol. 3; AG/LEG/SL/332/96/2 Vol. 3]