No. S 370
Trade Marks Act
(Chapter 332)
Trade Marks (Amendment) Rules 2004
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 2004 and shall come into operation on 1st July 2004.
New rule 3A
2.  The Trade Marks Rules (R 1) (referred to in these Rules as the principal Rules) are amended by inserting, immediately after rule 3, the following rule:
Filing of documents
3A.—(1)  The Registrar may refuse to accept or process any document filed at the Registry that fails to comply with the Act or these Rules.
(2)  Every document filed at the Registry shall —
(a)be in English; or
(b)where the document is not in English, be accompanied by an English translation of the document.
(3)  Every document filed at the Registry which is not filed using the electronic online system shall —
(a)be filed using durable paper; and
(b)be in writing that is legible and permanent.
(4)  Where the Registrar refuses to accept any document that does not comply with paragraph (2) or (3), the Registrar shall give the applicant a notice stating the manner in which the document does not comply with paragraph (2) or (3), as the case may be.
(5)  Where any document filed at the Registry is a copy, the Registrar may —
(a)decide whether to accept or process the document; and
(b)require the original to be filed with the Registry.
(6)  The Registrar may require the filing of a hard copy of any document filed using the electronic online system.”.
Amendment of rule 4
3.  Rule 4 of the principal Rules is amended —
(a)by deleting paragraph (1) and substituting the following paragraph:
(1)  The Registrar shall publish in the Trade Marks Journal —
(a)the forms to be used for any purpose relating to the registration of a trade mark or any other proceedings before the Registrar under the Act;
(b)the Registrar’s directions relating to the use of any form; and
(c)any amendment or modification of any such form or direction.”; and
(b)by inserting, immediately after paragraph (2), the following paragraphs:
(3)  The Registrar may accept, in lieu of any form, any other document which is filed with the Registry for any purpose for which the form was published, if the document —
(a)complies with rule 3A (2) and every direction of the Registrar relating to the use of the form; and
(b)is in a format that is acceptable to the Registrar.
(4)  Any reference in these Rules to a numbered form shall be construed as a reference to the current version of the form bearing the corresponding number which is —
(a)described in the Second Schedule; and
(b)published in the Trade Marks Journal.”.
Amendment of rule 9
4.  Rule 9 of the principal Rules is amended —
(a)by deleting the words “or TM 22” in paragraph (4)(a) and substituting the words “, TM 22 or TM 24”;
(b)by deleting the words “, TM 29 or TM 36” in paragraph (4)(b) and substituting the words “or TM 29”; and
(c)by deleting paragraph (7A).
Amendment of rule 10
5.  Rule 10 of the principal Rules is amended —
(a)by inserting, immediately after the words “file with the Registrar” in paragraph (3), the words “in Form TM 1”;
(b)by deleting the words “, (7) and (7A)” in paragraph (4) and substituting the words “and (7)”; and
(c)by deleting the words “Notwithstanding rule 9 (7A), where” in paragraph (4A) and substituting the word “Where”.
Amendment of rule 16
6.  Rule 16 of the principal Rules is amended by deleting paragraph (4).
Amendment of rule 18
7.  Rule 18 of the principal Rules is amended —
(a)by deleting the words “and shall be supported by filing with the Registrar a declaration in Form TM 5” in paragraph (1); and
(b)by deleting paragraph (2) and substituting the following paragraph:
(2)  The particulars referred to in paragraph (1) are —
(a)the country or territory in which —
(i)the priority application; or
(ii)where there is more than one priority application, each priority application,
was filed;
(b)the date on which —
(i)the priority application; or
(ii)where there is more than one priority application, each priority application,
was filed;
(c)where the right of priority is claimed in respect of one or more, but not all, of the goods or services for which registration was sought in the priority application, the goods or services in respect of which the right of priority is claimed; and
(d)where the right of priority is claimed through more than one priority application, the goods or services in respect of which the right of priority is claimed through each priority application.”.
Amendment of rule 19
8.  Rule 19 of the principal Rules is amended by deleting paragraph (2) and substituting the following paragraph:
(2)  Every application shall contain, for each class of goods or services to which the application relates —
(a)the class number as set out in the Third Schedule; and
(b)a specification of those goods or services which —
(i)is appropriate to that class;
(ii)is described in such a manner as to —
(A)indicate clearly the nature of those goods or services; and
(B)allow those goods or services to be classified in accordance with the Third Schedule; and
(iii)complies with any other requirement of the Registrar.”.
Deletion and substitution of rule 21
9.  Rule 21 of the principal Rules is deleted and the following rule substituted therefor:
Deficiencies in application
21.—(1)  Where an application for registration does not comply with rule 15(1) or 19(2)(a), the Registrar shall send the applicant a notice requiring the applicant to remedy the deficiency.
(2)  If the applicant fails to remedy all deficiencies set out in the notice within 2 months from the date of the notice, the application shall be treated as withdrawn.”.
Amendment of rule 22
10.  Rule 22 of the principal Rules is amended by deleting paragraph (3).
Amendment of rule 23
11.  The principal Rules are amended by renumbering rule 23 as paragraph (1) of that rule, and by inserting immediately thereafter the following paragraphs:
(2)  Any person who wishes to oppose the amendment shall, within 2 months from the date of publication of the amendment or statement referred to in paragraph (1), file with the Registrar a notice of opposition to the amendment in Form TM 11.
(3)  The notice of opposition shall contain a statement of the grounds upon which the person opposes the amendment, including, where relevant, how the amendment would be contrary to section 14(3) of the Act.
(4)  Rules 29(2) to (8) and 31 to 40 shall apply, with the necessary modifications, to any proceedings arising from the notice of opposition.
(5)  For the purposes of the application of the rules referred to in paragraph (4) —
(a)any reference to the application for registration shall be read as a reference to the application for amendment referred to in paragraph (1);
(b)any reference to the date of publication of the application for registration shall be read as a reference to the date of publication of the amendment or statement referred to in paragraph (1);
(c)any reference to the notice of opposition shall be read as a reference to the notice of opposition referred to in paragraphs (2) and (3); and
(d)any reference to the opponent shall be read as a reference to the person referred to in paragraphs (2) and (3).”.
Amendment of rule 24
12.  Rule 24 of the principal Rules is amended —
(a)by deleting paragraph (6) and substituting the following paragraph:
(6)  Where the applicant wishes to appeal against the decision of the Registrar —
(a)the applicant shall, within one month from the date of the decision, by filing Form TM 7 with the Registrar, request the Registrar to state the Registrar’s grounds of decision; and
(b)the Registrar shall, within 2 months from the date of the request, send the grounds of decision to the applicant.”;
(b)by deleting paragraph (7); and
(c)by deleting the words “decision is” in paragraph (8) and substituting the words “Registrar’s grounds of decision are”.
Amendment of rule 42
13.  Rule 42 of the principal Rules is amended —
(a)by deleting the word “and” at the end of paragraph (i);
(b)by deleting the full-stop at the end of paragraph (j) and substituting the word “; and”, and by inserting immediately thereafter the following paragraph:
(k)where the trade mark is registered pursuant to a transformation application, the number of the corresponding international registration and —
(i)the date of that international registration in accordance with Article 3(4) of the Madrid Protocol; or
(ii)where the request for extension of protection to Singapore was made subsequent to that international registration, the date of recordal of that request in accordance with Article 3ter (2) of the Madrid Protocol.”; and
(c)by renumbering the rule as paragraph (1) of that rule, and by inserting immediately thereafter the following paragraph:
(2)  In this rule —
“corresponding international registration”, in relation to a transformation application, means the international registration referred to in rule 24(1) of the Trade Marks (International Registration) Rules (R 3);
“international registration” has the same meaning as in the Trade Marks (International Registration) Rules;
“Madrid Protocol” has the same meaning as in section 54(4) of the Act;
“transformation application” means an application referred to in rule 24 (1) (b) of the Trade Marks (International Registration) Rules.”.
Amendment of rule 44
14.  Rule 44 of the principal Rules is amended by deleting paragraphs (2) and (3).
Deletion and substitution of rules 49 and 50
15.  Rules 49 and 50 of the principal Rules are deleted and the following rules substituted therefor:
Renewal of registration
49.—(1)  Subject to paragraph (2), an application for the renewal of registration of a trade mark shall be made not later than 6 months after the date of expiry of the registration.
(2)  Where a trade mark is registered after the date on which it becomes due for renewal by reference to the date of the application for its registration, an application for the renewal of its registration shall be made not later than 6 months after the actual date of its registration.
(3)  An application for the renewal of registration of a trade mark shall —
(a)if made on or before the date of expiry of the registration, be in Form TM 19; or
(b)if made within 6 months after the date of expiry of the registration, be in Form TM 24.
(4)  Notwithstanding paragraph (3)(b), where —
(a)a trade mark is registered —
(i)within 6 months before; or
(ii)after,
the date on which it becomes due for renewal by reference to the date of the application for its registration; and
(b)an application for the renewal of its registration is made not later than 6 months after the actual date of its registration,
the application for the renewal of its registration shall be in Form TM 19.
Notice of renewal
50.—(1)  Subject to paragraphs (2) and (3), the Registrar shall, not less than one month nor more than 6 months before the date of expiry of the registration of a trade mark, send a notice in writing to the proprietor, at the proprietor’s address for service, notifying him of the date of expiry of the registration.
(2)  Subject to paragraph (3), where a trade mark is registered —
(a)within 6 months before; or
(b)after,
the date on which it becomes due for renewal by reference to the date of the application for its registration, the Registrar shall, within one month after the actual date of its registration, send a notice in writing to the proprietor, at the proprietor’s address for service, notifying him of the date of expiry of its registration.
(3)  The Registrar need not send any notice referred to in paragraph (1) or (2) if an application for the renewal of registration of the trade mark has been made in accordance with rule 49.”.
Deletion and substitution of rule 51
16.  Rule 51 of the principal Rules is deleted and the following rule substituted therefor:
Removal of trade mark from register
51.  The Registrar may remove a trade mark from the register if —
(a)no application for the renewal of registration of the trade mark is filed in accordance with rule 49; or
(b)where an application for the renewal of registration of the trade mark is filed in accordance with rule 49, the applicant for the renewal of registration —
(i)fails to comply with any direction of the Registrar relating to the renewal; or
(ii)notifies the Registrar that he wishes to withdraw or abandon the application.”.
Deletion of rule 52
17.  Rule 52 of the principal Rules is deleted.
Amendment of rule 53
18.  Rule 53 of the principal Rules is amended by deleting paragraph (1) and substituting the following paragraph:
(1)  An application for restoration of a trade mark which has been removed from the register under rule 51 shall be filed with the Registrar on Form TM 21 within 6 months from the date of the removal of the trade mark from the register.”.
Amendment of rule 56
19.  Rule 56 of the principal Rules is amended by deleting paragraphs (4), (4A), (5) and (6) and substituting the following paragraphs:
(4)  Any person claiming to be affected by the alteration may, within 2 months from the date of the publication of the alteration, file with the Registrar a notice of opposition to the alteration in Form TM 11.
(5)  The notice of opposition shall contain a statement of the grounds upon which the person opposes the alteration, including, where relevant, how the alteration would be contrary to section 20(2) of the Act.
(6)  Rules 29(2) to (8) and 31 to 40 shall apply, with the necessary modifications, to any proceedings arising from the notice of opposition.
(6A)  For the purposes of the application of the rules referred to in paragraph (6) —
(a)any reference to the applicant shall be read as a reference to the proprietor;
(b)any reference to the application for registration shall be read as a reference to the application for alteration referred to in paragraph (1);
(c)any reference to the date of publication of the application for registration shall be read as a reference to the date of publication of the alteration;
(d)any reference to the notice of opposition shall be read as a reference to the notice of opposition referred to in paragraph (4); and
(e)any reference to the opponent shall be read as a reference to the person referred to in paragraph (4).”.
Amendment of rule 58
20.  Rule 58 (9) of the principal Rules is amended by inserting, immediately after the words “consent to the extension”, the words “within 2 weeks from the date of the notice”.
Amendment of rule 69
21.  Rule 69 of the principal Rules is amended by deleting paragraph (4).
Amendment of rule 73
22.  Rule 73 of the principal Rules is amended by deleting paragraph (1) and substituting the following paragraph:
(1)  Where the Registrar has awarded party and party costs to a party to proceedings before the Registrar and the party wishes to have the costs taxed by the Registrar, the party shall, within one month from the date of the award of costs —
(a)apply for the costs to be taxed by filing a copy of the bill of costs with the Registrar; and
(b)send at the same time a copy of the bill of costs to every other person having an interest in the taxation proceedings.”.
Amendment of rule 77
23.  Rule 77 (6) of the principal Rules is amended by inserting, immediately after sub-paragraph (a), the following sub-paragraph:
(aa)the filing of a notice of opposition to an amendment of an application which has been published under rule 23 (2);”.
Deletion and substitution of rule 79
24.  Rule 79 of the principal Rules is deleted and the following rule substituted therefor:
Hours of business and excluded days
79.—(1)  Subject to paragraph (4), any business done under the Act or these Rules —
(a)on any day after the hours of business of the Registry for that class of business; or
(b)on any day which is an excluded day for that class of business,
shall be taken to have been done on the next following day which is not an excluded day for that class of business.
(2)  Where the time for doing any business under the Act or these Rules expires on an excluded day for the doing of that class of business, that time shall be extended to the next following day which is not an excluded day for the doing of that class of business.
(3)  For the avoidance of doubt, where the time for carrying out any transaction referred to in rule 78A(2) expires on an excluded day for the carrying out of that transaction, that time shall be extended to the next following day which is not an excluded day for the carrying out of that transaction, notwithstanding the availability of the electronic online system for the carrying out of that transaction.
(4)  Where, in carrying out any transaction referred to in rule 78A(2), a document —
(a)is transmitted to the Registry by means of the electronic online system; and
(b)is received, by the server of that system set up to receive such transmissions, at any time before midnight on any day which is not an excluded day for the business of sending to or filing with the Registry any document by means of that system,
that document shall be treated as sent to or filed with, and received by, the Registry at that time and on that day.
(5)  For the purposes of paragraph (4), the document shall be treated as sent to or filed with, and received by, the Registry if and only if the last byte of the transmission containing the document is received by the server referred to in that paragraph.
(6)  Any person who sends or files a document by means of the electronic online system may produce a record of transmission issued through that system as evidence of —
(a)the sending or filing of that document; and
(b)the date and time when the sending or filing took place.
(7)  In the Act and these Rules, “excluded day”, in relation to any specific class of business, means any day on which the Registry shall be taken to be closed for the purposes of the transaction by the public of that class of business.”.
Deletion of rule 80
25.  Rule 80 of the principal Rules is deleted.
New rule 81B
26.  The principal Rules are amended by inserting, immediately after rule 81A, the following rule:
Production of documents, information or evidence
81B.  Notwithstanding anything in these Rules, at any stage of any application to or proceedings before the Registrar, the Registrar may direct the applicant or any party to produce or file, within such period as the Registrar may specify, any document, information or evidence which the Registrar may reasonably require.”.
Amendment of rule 86A
27.  Rule 86A (1) of the principal Rules is amended by deleting sub-paragraphs (a) and (b) and substituting the following sub-paragraphs:
(a)all matters that are required to be published in that Journal under rules 4 (1), 23 (1), 26 (1), 47 (2) and 56 (3);
(b)the practice directions issued by the Registrar under the Act or these Rules; and
(c)such other information as the Registrar thinks fit.”.
Deletion of rule 88
28.  Rule 88 of the principal Rules is deleted.
Amendment of First Schedule
29.  The First Schedule to the principal Rules is amended —
(a)by deleting items 1 and 1A and substituting the following items:
1.
Filing of address for service, agent’s name and address for service or request to alter address for service on record —
9 (5) or (7), 10 (3), 44 (4)
 
1
 
(a) by means of the electronic online system
 
$8.00 in respect of each trade mark
 
 
(b) other than by means of the electronic online system
 
$8.50 in respect of each trade mark
 
1A.
Filing of request to alter agent’s name or address for service on record or both by means of the electronic online system —
10 (3) or (4A), 44 (4)
 
1
 
(a) where the agent has not been substituted by another legal entity
 
$8.00
 
 
(b) where the agent has been substituted by another legal entity
 
$8.00 in respect of each trade mark
 
1B.
Filing of request to alter agent’s name or address for service on record or both other than by means of the electronic online system —
10 (3) or (4A), 44 (4)
 
1
 
(a) where the agent has not been substituted by another legal entity
 
$8.50
 
 
(b) where the agent has been substituted by another legal entity
 
$8.50 in respect of each trade mark
 
”;
(b)by deleting item 2B;
(c)by deleting item 7 and substituting the following item:
7.
Filing of notice of opposition —
23 (2), 29 (1), 46 (2) and (3), 56 (4)
$340 for each notice of opposition
11
 
(a) to an amendment of an application for registration of a trade mark which has been published, where the amendment affects the representation of the trade mark or the goods or services covered by the application for registration
 
 
 
 
(b) to the registration of a trade mark
 
 
 
 
(c) to the removal of any matter from the register
 
 
 
 
(d) to the alteration of a registered trade mark
 
 
 
”;
(d)by deleting items 15 and 15A and substituting the following items:
15.
Application for renewal of registration of a trade mark filed —
49 (3) (a) or (4)
 
19
 
(a) by means of the electronic online system
 
$250
 
 
(b) other than by means of the electronic online system
 
$270
 
15A.
Late application for renewal of registration of a trade mark
49 (3) (b)
$370 (comprising $270 for renewal fee and $100 for late renewal fee)
24
”; and
(e)by deleting items 24, 28B and 37.
Deletion and substitution of Second Schedule
30.  The Second Schedule to the principal Rules is deleted and the following Schedule substituted therefor:
SECOND SCHEDULE
Rule 4(4)
Descriptions of Forms
Form
 
Description of Form
TM 1
 
Request to Appoint or Change an Agent or to Enter or Change an Address for Service
TM 4
 
Application to Register a Trade Mark
TM 7
 
Request for Grounds of Decision
TM 9
 
Application to Register a Collective Mark or Certification Mark
TM 10
 
Filing of Regulations Governing the Use of a Collective Mark or Certification Mark
TM 11
 
Notice of Opposition
TM 12
 
Counter-Statement
TM 13
 
Notice to the Registrar of Attendance at Hearing
TM 14
 
Notice of Opposition in Relation to a Collective Mark or Certification Mark
TM 15
 
Counter-Statement to Notice of Opposition in Relation to a Collective Mark or Certification Mark
TM 16
 
Notice to the Registrar of Attendance at Hearing in Respect of a Collective Mark or Certification Mark
TM 18
 
Certificate of Registration
TM 19
 
Application for Renewal of Registration
TM 20
 
Assent by Personal Representatives or Order of the Court or Other Competent Authority
TM 21
 
Application for Restoration and Renewal of Registration Removed from the Register
TM 22
 
Application to Register a Change of Ownership
TM 23
 
Statutory Declaration
TM 24
 
Late Application for Renewal of Registration
TM 26
 
Request to Change the Name or Other Particulars (Except Trading Nature) of Applicant for Registration, Proprietor or Other Interested Person
TM 27
 
Request to Change the Details of an Application for Registration
TM 28
 
Application for Revocation or Declaration of Invalidity of Registration of Trade Mark or Protection of a Protected International Trade Mark (Singapore) or Rectification of the Register
TM 29
 
Application to Intervene in Proceedings
TM 30
 
Application to Amend the Regulations Governing the Use of a Collective Mark or Certification Mark
TM 31
 
Notice to Cancel a Registration
TM 32
 
Notice of Partial Cancellation of the Specification of Goods or Services for which the Mark is Registered
TM 33
 
Request by Registered Proprietor of a Trade Mark for Entry of Disclaimer or Limitation in the Register
TM 34
 
Request by Registered Proprietor for Entry on the Register of a Note of a Certificate of Validity by the Court under Section 102 of the Act
TM 35
 
Request for Alteration of a Registered Mark
TM 37
 
Application to Register a Licensee
TM 38
 
Application to Amend a Licence
TM 39
 
Application to Remove a Licence
TM 42
 
Request for Registrar’s General Certificate
TM 44
 
Notice of Order of Court for Alteration or Rectification of Register
TM 45
 
Request to Extract the Registrar’s Certificate of Taxation
TM 46
 
Application to Register the Grant, Amendment or Termination of Security Interest or Memorandum Relating to a Trade Mark
TM 48
 
Request For Extension of Time to File Notice of Opposition
TM 49
 
Request For Extension of Time Under Rule 24(2A), 50A(3), 53(3A) or 55(5A)”.
Note: There are no Forms TM 2, 3, 5, 6, 8, 17, 25, 36, 40, 41, 43 and 47.
Transitional provisions
31.—(1)  Rules 15 to 18 shall only apply in relation to the renewal of registration of a trade mark if such renewal falls due on or after 1st July 2004, and rules 49 to 53 of the principal Rules in force immediately before that date shall continue to apply in relation to any renewal which falls due before that date.
(2)  Rule 22 shall only apply in relation to an award of costs made by the Registrar on or after 1st July 2004, and rule 73(1) of the principal Rules in force immediately before that date shall continue to apply in relation to any award of costs made by the Registrar before that date.
[G.N. Nos. S 491/2000; S661/2001; S 474/2003]

Made this 24th day of June 2004.

YONG YING-I
Permanent Secretary,
Ministry of Law,
Singapore.
[LAW 18/001/003 V5; AG/LEG/SL/332/2002/1 Vol. 2]