No. S 161
Trade Marks Act
(Chapter 332)
Trade Marks (Amendment) Rules 2007
In exercise of the powers conferred by section 108 of the Trade Marks 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 Trade Marks (Amendment) Rules 2007 and shall come into operation on 2nd July 2007.
Amendment of rule 16
2.  Rule 16 of the Trade Marks Rules (R 1) (referred to in these Rules as the principal Rules) is amended —
(a)by deleting paragraph (5) and substituting the following paragraphs:
“(4)  Subject to paragraph (5), in the case of an application for the registration of a 3-dimensional mark, the representation of the mark may, at the option of the applicant, consist of a single view of the mark or of several different views of the mark.
(5)  Where the applicant has provided a representation of a 3-dimensional mark consisting of a single view, or of several different views, of the mark, and the Registrar reasonably believes that the representation does not sufficiently show the particulars of the mark, or does not allow all features of the mark to be properly examined, the Registrar may, by notice in writing, require the applicant to provide, within such time as the Registrar may specify in the notice, either or both of the following:
(a)another representation of the mark consisting of up to 6 different views of the mark;
(b)a description of the mark expressed in words.”; and
(b)by deleting the words “Form TM 27” in paragraph (6) and substituting the words “Form TM 27B”.
New rule 17
3.  The principal Rules are amended by inserting, immediately after rule 16, the following rule:
“Division of application for registration
17.—(1)  Subject to the provisions of this rule, an application for registration of a trade mark (referred to in this rule as the original application) made on or after 2nd July 2007 may, at the request of the applicant made on Form TM 8 at any time after the date of the original application but before the registration of the trade mark, be divided into 2 or more separate applications for registration of the trade mark.
(2)  Where the original application is made in respect of 2 or more goods or services, a request under paragraph (1) may be made to divide the original application into 2 or more separate applications, each in respect of —
(a)one or more classes of those goods or services, being classes of goods or services to which the original application relates; or
(b)one or more of those goods or services included in one or more of the classes of goods or services to which the original application relates.
(3)  Where the applicant makes a request under paragraph (1), the request shall contain, for each separate application and each class of goods or services in respect of which that separate application is made, a specification in accordance with rule 19 setting out the goods or services to which that separate application relates.
(4)  Upon the division of the original application into 2 or more separate applications —
(a)each separate application shall have the same date as the original application;
(b)any notice of opposition to the registration of any trade mark which is a subject of the original application shall —
(i)if the notice relates only to some (but not all) of the goods or services in respect of which the original application is made, be treated as having been given in relation only to each separate application made in respect of any of the goods or services to which the notice relates; or
(ii)subject to sub-paragraph (i), be treated as having been given in relation to all of the separate applications,
and the opposition proceedings shall continue as if the notice had been so given; and
(c)any notice given to the Registrar under section 41(3) of the Act shall —
(i)if the notice relates only to some (but not all) of the goods or services in respect of which the original application is made, be treated as having been given in relation only to each separate application made in respect of any of the goods or services to which the notice relates; or
(ii)subject to sub-paragraph (i), be treated as having been given in relation to all of the separate applications.”.
Amendment of rule 21
4.  Rule 21 (1) of the principal Rules is amended by deleting the word “may” and substituting the word “shall”.
Amendment of rule 22
5.  Rule 22 of the principal Rules is amended —
(a)by deleting paragraphs (1) and (2) and substituting the following paragraph:
“(1)  An application to amend an application for registration shall be made on —
(a)Form TM 26, if it is made to correct or change the name or other particulars of the applicant, and the change does not affect the representation of the trade mark;
(b)Form TM 27A, if sub-paragraph (a) does not apply and the amendment, or any of the amendments, pertains to —
(i)the class number or specification of any goods or services to which the application for registration relates; or
(ii)the particulars of any claim to a right of priority included in the application for registration; or
(c)Form TM 27B, if sub-paragraphs (a) and (b) do not apply.”; and
(b)by deleting paragraph (4).
Amendment of rule 41
6.  Rule 41 of the principal Rules is amended by deleting the words “in Form TM 18”.
Amendment of rule 55
7.  Rule 55 of the principal Rules is amended —
(a)by deleting the words “, or to give notice to the Registrar of particulars of a transaction to which section 41 of the Act applies, shall be made” in paragraph (1) and substituting the words “shall be made, and a notice to be given to the Registrar of particulars of a transaction to which section 41 of the Act applies shall be”;
(b)by deleting sub-paragraph (f) of paragraph (1) and substituting the following sub-paragraph:
“(f)in the case of the making by personal representatives of an assent in relation to, or of an order of the Court or other competent authority transferring, a registered trade mark, an application for registration of a trade mark, or any right in or under a registered trade mark or an application for registration of a trade mark, on Form TM 20.”; and
(c)by deleting paragraphs (3A) and (3B) and substituting the following paragraphs:
“(3A)  Where an application under paragraph (1) is not signed in accordance with paragraph (2)(a), (b) or (d), or not authorised and validated in accordance with paragraph (3), the application shall be accompanied —
(a)in the case of an assignment (of a registered trade mark or an application for registration of a trade mark) referred to in paragraph (1)(a), at the option of the applicant, by —
(i)a certified copy of the contract of assignment;
(ii)a certified extract of the contract of assignment, being an extract which shows the change in the ownership of the registered trade mark or application for registration;
(iii)a certificate of transfer of the registered trade mark or application for registration in such form as the Registrar may require, being a certificate signed by all parties to the assignment;
(iv)a transfer document relating to the registered trade mark or application for registration in such form as the Registrar may require, being a document signed by all parties to the assignment; or
(v)a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the assignment;
(b)in the case of a grant of a licence (under a registered trade mark or an application for registration of a trade mark) referred to in paragraph (1)(b), at the option of the applicant, by —
(i)a certified extract of the licence contract, being an extract which shows the parties to the contract and the rights which are licensed under the contract;
(ii)a statement of the licence containing such information as the Registrar may require, being a statement signed by both the person granting the licence and the licensee; or
(iii)a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the grant of the licence;
(c)in the case of an amendment to, or a termination of, a licence (under a registered trade mark or an application for registration of a trade mark) referred to in paragraph (1)(c) or (d), at the option of the applicant, by —
(i)a statement of the amendment or termination of the licence, as the case may be, containing such information as the Registrar may require, being a statement signed by both the person granting the licence and the licensee; or
(ii)a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the amendment or termination of the licence, as the case may be; or
(d)in any other case, by a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the transaction.
(3B)  Where an application under paragraph (1) is filed by means of the electronic online system, the document referred to in paragraph (3A)(a)(i), (ii), (iii), (iv) or (v) shall be filed within such time as the Registrar may specify.”.
Amendment of rule 56
8.  Rule 56 (1) of the principal Rules is amended by deleting the words “Form TM 35” and substituting the words “Form TM 27B”.
Amendment of rule 57
9.  Rule 57 of the principal Rules is amended by deleting paragraph (1) and substituting the following paragraphs:
“(1)  An application to the Registrar for —
(a)the revocation of the registration of a trade mark under section 22 of the Act; or
(b)a declaration of invalidity of the registration of a trade mark under section 23 of the Act,
shall be made on Form TM 28.
(1A)  An application to the Registrar for the rectification of an error or omission in the register under section 67 of the Act shall be made —
(a)in the case of an application by the proprietor of a registered trade mark to amend any information in the register relating to that trade mark, on —
(i)Form TM 26, if the amendment pertains to the name or other particulars of the proprietor;
(ii)Form TM 27A, if sub-paragraph (i) does not apply and the amendment, or any of the amendments, pertains to —
(A)the class number or specification of any goods or services; or
(B)the particulars of any claim to a right of priority; or
(iii)Form TM 27B, if sub-paragraphs (i) and (ii) do not apply; or
(b)in the case of an application by any other person to amend any information in the register relating to that trade mark, on Form TM 28.”.
Amendment of rule 58
10.  Rule 58 (5) of the principal Rules is amended by deleting the word “for”.
Amendment of rule 59
11.  Rule 59 (2) of the principal Rules is amended by deleting the words “rule 33 (2)” in sub-paragraph (d) and substituting the words “rule 33 (3)”.
Amendment of rule 69
12.  Rule 69 (1A) of the principal Rules is amended by deleting the words “Statutory Declarations Act (Cap. 320)” and substituting the words “Oaths and Declarations Act (Cap. 211)”.
Deletion and substitution of heading to Part XI
13.  Part XI of the principal Rules is amended by deleting the Part heading and substituting the following Part heading:
“EXTENSION OF TIME AND REINSTATEMENT OF APPLICATIONS, RIGHTS AND THINGS”.
Deletion and substitution of rule 77B
14.  Rule 77B of the principal Rules is deleted and the following rule substituted therefor:
“Reinstatement of application, right or thing
77B.—(1)  Any person whose —
(a)application is treated as withdrawn; or
(b)right has been abrogated, or thing has ceased to be in force or to exist, by reason that he has failed to comply with any procedural requirement in any proceedings or other matter before the Registrar within the time limit under the Act or specified by the Registrar for complying with that requirement,
may request for the reinstatement of the application, right or thing, as the case may be, in accordance with paragraphs (2), (3) and (4).
(2)  A request for the reinstatement of any application, right or thing referred to in paragraph (1) —
(a)shall be made on Form TM 40 and filed with the Registrar within 6 months from the date the application was treated as withdrawn, the right was abrogated or the thing ceased to be in force or to exist, as the case may be;
(b)shall not be made unless, and shall state that —
(i)the omission which led to the application being treated as withdrawn was unintentional; or
(ii)the failure to comply with a time limit which led to —
(A)the right being abrogated; or
(B)the thing ceasing to be in force or to exist,
was unintentional; and
(c)where the omission, or the failure to comply with a time limit, relates to the filing of any document or thing, shall be accompanied by that document or thing not filed or not filed on time, as the case may be.
(3)  Subject to paragraph (4), where a request is filed under paragraph (2), the Registrar shall allow the reinstatement unless there is a good and sufficient reason to refuse the request.
(4)  The Registrar shall not allow the reinstatement unless paragraph (2) is complied with.
(5)  Paragraphs (1) to (4) do not allow the reinstatement of —
(a)any claim to a right of priority under section 10 of the Act or rule 18(1); or
(b)any application which is treated as withdrawn, any right which has been abrogated or any thing which has ceased to be in force or to exist by reason of —
(i)any acquiescence by a proprietor of an earlier trade mark or other earlier right under section 24 of the Act, or under section 24 of the Act read with rule 19 of the Trade Marks (International Registration) Rules (R 3);
(ii)a failure to comply with the time limit for —
(A)any act under section 13 of the Act or Division 6 of Part II of these Rules, or under rule 13 or 14 of the Trade Marks (International Registration) Rules or rules 32 to 40 of these Rules read with rule 15 of the Trade Marks (International Registration) Rules, in any opposition proceedings;
(B)any act under section 22 of the Act or Part VII of these Rules, or under section 22 of the Act and rules 57 to 60 of these Rules read with rule 18 of the Trade Marks (International Registration) Rules, in any proceedings for the revocation of the registration of a trade mark;
(C)any act under section 23 of the Act or Part VII of these Rules, or under section 23 of the Act and rules 57 to 60 of these Rules read with rule 18 of the Trade Marks (International Registration) Rules, in any proceedings for a declaration of invalidity of the registration of a trade mark;
(D)any act under section 67 of the Act or Part VII of these Rules in any proceedings for the rectification of an error or omission in the register, being proceedings commenced by any person other than the proprietor of a registered trade mark in respect of any information in the register relating to that trade mark;
(E)the filing of a request under paragraph (2); or
(F)the filing of Form TM 7 under rule 24(6)(a); or
(iii)a failure to pay the fee for the renewal of registration of a trade mark under rule 49(3) or 53.”.
Amendment of rule 78A
15.  Rule 78A (2) of the principal Rules is amended by deleting the words “and (2)”.
Deletion of rule 84
16.  Rule 84 of the principal Rules is deleted.
Amendment of First Schedule
17.  The First Schedule to the principal Rules is amended —
(a)by inserting, immediately after the words “each trade mark” under the heading “Fee” in items 1 (a) and (b), 1A (b), 1B (b), 17, 17A, 18, 19, 20, 21 and 21A, the word “number”;
(b)by deleting items 3 and 3A and substituting the following items:
“
3. Application to amend an application for registration of a trade mark, or by a proprietor of a registered trade mark to rectify an error or omission in the register relating to that trade mark, filed other than by means of the electronic online system —
 
 
 
 
 
 
(a) where the application is made in relation only to any matter other than the name or other particulars of the applicant or proprietor, the class number or specification of any goods or services, or the particulars of any claim to a right of priority
 
22 (1), 56 (1), 57 (1A) (a)
 
$44 in respect of each trade mark number
 
27B
(b) where the application is made —
 
22 (1), 56 (1), 57 (1A) (a)
 
$44 x number of classes
 
27A
(i) in relation only to the class number or specification of any goods or services, or the particulars of any claim to a right of priority; or
 
 
 
 
 
 
(ii) in relation to the class number or specification of any goods or services, or the particulars of any claim to a right of priority, and in relation to any matter other than the name or other particulars of the applicant or proprietor
 
 
 
 
 
 
3A. Application to amend an application for registration of a trade mark, or by a proprietor of a registered trade mark to rectify an error or omission in the register relating to that trade mark, filed by means of the electronic online system —
 
 
 
 
 
 
(a) where the application is made in relation only to any matter other than the name or other particulars of the applicant or proprietor, the class number or specification of any goods or services, or the particulars of any claim to a right of priority
 
22 (1), 56 (1), 57 (1A) (a)
 
$40 in respect of each trade mark number
 
27B
(b) where the application is made —
 
22 (1), 56 (1), 57 (1A) (a)
 
$40 x number of classes
 
27A
(i) in relation only to the class number or specification of any goods or services, or the particulars of any claim to a right of priority; or
 
 
 
 
 
 
(ii) in relation to the class number or specification of any goods or services, or the particulars of any claim to a right of priority, and in relation to any matter other than the name or other particulars of the applicant or proprietor
 
 
 
 
 
 
”;
(c)by deleting “22 (2), 44 (1)” under the heading “Corresponding Rule(s)” in items 4 and 4A and substituting in each case “44 (1), 57 (1A)(a)”;
(d)by inserting, immediately after “$600” under the heading “Fee” in item 5, the words “in respect of each trade mark number”;
(e)by deleting the words “for each notice of opposition” under the heading “Fee” in item 7 and substituting the words “x number of classes”;
(f)by deleting the words “for each counter-statement” under the heading “Fee” in item 9 and substituting the words “x number of classes”;
(g)by inserting, immediately after “$650” under the heading “Fee” in item 12, the words “x number of classes”;
(h)by deleting item 13;
(i)by inserting, immediately after “$80” under the heading “Fee” in item 14, the words “in respect of each trade mark number”;
(j)by inserting, immediately after “$250” under the heading “Fee” in item 15(a), the words “x number of classes”;
(k)by inserting, immediately after “$270” under the heading “Fee” in item 15(b), the words “x number of classes”;
(l)by inserting, immediately after the words “late renewal fee)” under the heading “Fee” in item 15A, the words “x number of classes”;
(m)by deleting the words “for each trade mark” under the heading “Fee” in item 16 and substituting the words “x number of classes”;
(n)by deleting item 23;
(o)by deleting item 25 and substituting the following item:
“
25. Application for the revocation, or a declaration of invalidity, of the registration of a trade mark, or by any person other than the proprietor of a registered trade mark for the rectification of an error or omission in the register relating to that trade mark
 
57 (1) or (1A) (b)
 
$325 x number of classes
 
28
”;
(p)by inserting, immediately after “$75” under the heading “Fee” in item 26, the words “in respect of each trade mark number”;
(q)by inserting, immediately after “$30” under the heading “Fee” in item 27 (a), the words “in respect of each trade mark number”;
(r)by inserting, immediately after “$40” under the heading “Fee” in item 27 (b), the words “x number of classes”;
(s)by inserting, immediately after “$340” under the heading “Fee” in item 29, the words “in respect of each trade mark number”;
(t)by inserting, immediately after “$70” under the heading “Fee” in item 30, the words “in respect of each trade mark number”;
(u)by inserting, immediately after “$80” under the heading “Fee” in item 34, the words “x number of classes”;
(v)by inserting, immediately after “$32” under the heading “Fee” in item 35, the words “in respect of each trade mark number”;
(w)by inserting, immediately after “$50” under the heading “Fee” in item 36, the words “x number of classes”;
(x)by inserting, immediately after “$35” under the heading “Fee” in item 44, the words “in respect of each trade mark number”;
(y)by deleting the words “in respect of each trade mark” under the heading “Fee” in item 47 and substituting the words “x number of classes”; and
(z)by deleting item 48 and substituting the following items:
“
48. Request for reinstatement of application, right or thing
 
77B (2)
 
$130 in respect of each trade mark number
 
40
49. Request to divide an application for registration of a trade mark made in respect of 2 or more goods or services (referred to in this item as the original application) into 2 or more separate applications, each in respect of one or more of those goods or services
 
17 (2)
 
$280 for each additional application that the original application is divided into
 
8
”.
Amendment of Second Schedule
18.  The Second Schedule to the principal Rules is amended —
(a)by inserting, immediately after the item relating to Form TM 7, the following item:
“
TM 8
 
Request to Divide an Application for Registration
”;
(b)by deleting the item relating to Form TM 18;
(c)by deleting the items relating to Forms TM 27 and TM 28 and substituting the following items:
“
TM 27A
 
Application to Amend an Application for Registration or by Proprietor to Rectify the Register (for Class Number, Specification or Claim to Priority)
TM 27B
 
Application to Amend an Application for Registration or by Proprietor to Rectify the Register (Except for Amendment to Name or Other Particulars of Applicant or Proprietor, Class Number, Specification or Claim to Priority)
TM 28
 
Application for Revocation or Declaration of Invalidity of Registration of Trade Mark or Protection of a Protected International Trade Mark (Singapore) or by Person other than Proprietor for Rectification of the Register
”;
(d)by deleting the item relating to Form TM 35;
(e)by deleting the item relating to Form TM 40 and substituting the following item:
“
TM 40
 
Request for Reinstatement of Application, Right or Thing
”; and
(f)by deleting the “Note” at the end of the Schedule.
Amendment of Third Schedule
19.  The Third Schedule to the principal Rules is amended by inserting, immediately after the word “preserved,” in the item relating to “Class 29” in Part I, the word “frozen,”.
Amendment of Fourth Schedule
20.  The Fourth Schedule to the principal Rules is amended —
(a)by deleting the words “the reply to” in item 4; and
(b)by inserting, immediately after item 6, the following heading:
“FULL HEARINGS”.
[G.N. Nos. S 491/2000; S 507/2000; S 661/2001; S 474/2003; S 370/2004; S 852/2005; S 642/2006]

Made this 16th day of April 2007.

CHAN LAI FUNG
Permanent Secretary,
Ministry of Law,
Singapore.
[LAW 18/001/003; AG/LEG/SL/332/2002/1 Vol. 5]
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