Trade Marks (International Registration) (Amendment) Rules 2004

No. S 372

Trade Marks Act

(Chapter 332)

Trade Marks (International Registration) (Amendment) Rules 2004

In exercise of the powers conferred by sections 54 and 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 (International Registration) (Amendment) Rules 2004 and shall come into operation on 1st July 2004.

Amendment of rule 4

2. Rule 4 of the Trade Marks (International Registration) Rules (R 3) (referred to in these Rules as 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 referred to in these Rules;
(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 document which is filed with the Registry for any purpose for which the form was published but which deviates from the form, if the document —

(a)	complies with 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 —

(i)	in the case of Forms MP 1, MP 2 and MP 3, in the Second Schedule; or
(ii)	in the case of any other form, in the Second Schedule to the Trade Marks Rules (R 1); and

(b)

published in the Trade Marks Journal.”.

Amendment of rule 8

3. Rule 8 of the principal Rules is amended —

(a)

by deleting sub-paragraph (a) of paragraph (3); and

(b)

by deleting paragraphs (4) and (5) and substituting the following paragraphs:

“(4) Until —

(a)	in the case of any notifiable transaction referred to in paragraph (1)(b), an application has been made for the registration of the relevant particulars of the transaction; or
(b)	in the case of any relevant transaction, the transaction has been recorded in the International Register,

the transaction is ineffective as against a person acquiring an interest in or under the protected international trade mark (Singapore) in ignorance of it.

(5) A person who becomes the proprietor of a protected international trade mark (Singapore) by virtue of any notifiable transaction referred to in paragraph (1)(b) or relevant transaction is not entitled to damages, an account of profits or statutory damages under section 31(5)(c) of the Act in respect of any infringement of the protected international trade mark (Singapore) occurring after the date of the transaction and before the transaction is recorded in the International Register.

(5A) For the avoidance of doubt, paragraph (4) shall not apply to any relevant transaction relating to —

(a)	a licence under a protected international trade mark (Singapore); or
(b)	any right in or under the licence.”.

Amendment of rule 14

4. Rule 14 of the principal Rules is amended —

(a)

by inserting, immediately after the words “consent to the extension” in paragraph (9), the words “within 2 weeks from the date of the notice”; and

(b)

by inserting, immediately after paragraph (9), the following paragraph:

“(10) For the avoidance of doubt, if the holder fails to comply with paragraph (1), (2) or (3) in relation to any class of goods or services in respect of which protection is opposed, the Registrar shall be entitled to treat the holder’s request for protection in Singapore in respect of those goods or services as withdrawn, and the refusal shall subsist in respect of those goods or services.”.

Amendment of rule 24

5. Rule 24 (2) of the principal Rules is amended by deleting the words “Form MP 1 in the Second Schedule” and substituting the words “Form MP 1”.

Amendment of rule 26

6. Rule 26 (5) of the principal Rules is amended by deleting the words “Form MP 2 in the Second Schedule” and substituting the words “Form MP 2”.

Amendment of rule 27

7. Rule 27 (5) of the principal Rules is amended by deleting the words “Form MP 3 in the Second Schedule” and substituting the words “Form MP 3”.

Deletion and substitution of Second Schedule

8. 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

MP 1

Request to transform an international registration into national application(s)

MP 2

Request to replace Singapore national registration with international registration

MP 3

Address for service/Agent”.

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]

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