Trade Marks (Amendment) Rules 2000 - Singapore Statutes Online

No. S 491

Trade Marks Act

(Chapter 332)

Trade Marks (Amendment) Rules 2000

In exercise of the powers conferred by section 108 of the Trade Marks Act, the Minister for Law hereby makes the following Rules:

Citation and commencement

1. These Rules may be cited as the Trade Marks (Amendment) Rules 2000 and shall come into operation on 31st October 2000.

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 inserting, immediately after paragraph (2), the following paragraphs:

“(3) Where an application is for the registration of a series of trade marks, a representation of each trade mark in the series shall be provided in the application form.

(4) In the case of an application for the registration of a colour as a trade mark or a trade mark that is subject to a colour limitation, the applicant shall file with the Registrar 5 artwork copies of that trade mark in colour.

(5) In the case of an application for the registration of a 3-dimensional shape, unless all aspects of the shape can be captured from a single view, the applicant shall file a representation of every aspect of the mark at the time of filing the application form.”; and

(b)

by renumbering the existing paragraph (3) as paragraph (6).

Deletion of rule 17

3. Rule 17 of the principal Rules is deleted.

Amendment of rule 18

4. Rule 18 (1) of the principal Rules is amended by inserting, immediately after the words “application form” at the end thereof, the words “at the time of filing the application form”.

Amendment of rule 22

5. Rule 22 of the principal Rules is amended —

(a)

by deleting the word “address” in paragraph (2) and substituting the words “other particulars”; and

(b)

by inserting, immediately after paragraph (3), the following paragraph:

“(3A) An application to amend an application for the registration of a colour as a trade mark or a mark that is subject to a colour limitation shall, if the amendment relates to the representation of the trade mark, be accompanied by 5 artwork copies of the amended mark in colour.”.

Amendment of rule 24

6. Rule 24 of the principal Rules is amended —

(a)

by deleting the words “2 months” in the first line of paragraph (2) and substituting the words “4 months”;

(b)

by inserting, immediately after paragraph (2), the following paragraph:

“(2A) If the applicant wishes to have an extension of time to do any act referred to in paragraph (2)(a), (b) or (c), he shall file with the Registrar a request for extension in Form TM 49 before the expiry of the period of 4 months or any extended period previously allowed by the Registrar.”.

Deletion of rule 25

7. Rule 25 of the principal Rules is deleted.

Amendment of rule 26

8. Rule 26 of the principal Rules is amended by inserting, immediately after paragraph (2), the following paragraph:

“(3) In the case of an application for the registration of a series of trade marks, the Registrar may, if he thinks fit, publish, together with the publication of the application, a statement of the manner in which the several trade marks differ from one another.”.

Deletion of rules 27 and 28

9. Rules 27 and 28 of the principal Rules are deleted.

Deletion and substitution of rule 29

10. Rule 29 of the principal Rules is deleted and the following rule substituted therefor:

“Notice of opposition

29.—(1) A person (referred to in this Division as the opponent) may, within 2 months from the date of publication of the application for registration, file with the Registrar a notice opposing the registration in Form TM 11 (referred to in this Division as a notice of opposition).

(2) The opponent shall serve on the applicant a copy of the notice of opposition at the same time as the notice is filed with the Registrar.

(3) A request for an extension of time to file the notice of opposition shall be made by filing with the Registrar Form TM 48 within 2 months from the date of the publication of the application for registration.

(4) The total extension of time for which the Registrar may allow to file the notice of opposition shall not exceed 4 months from the date of the publication of the application for registration.

(5) Before making a request for an extension of time, the person seeking the extension shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —

(a)	a statement of the person’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)	a request for the consent of the applicant or other person to the extension.

(6) The request for the extension shall be supported by a copy of the notice referred to in paragraph (5) and the consent in writing, if this is given.

(7) The Registrar may refuse to grant the extension —

(a)	if the person requesting for it fails to show a good and sufficient reason for the extension; or
(b)	if that person fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (5) has been served on the applicant and every person likely to be affected by the extension.

(8) Where a person on whom a notice referred to in paragraph (5) is served fails or refuses to give his consent to the extension, the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and the Registrar may do so without having to conduct a hearing in accordance with rule 67.”.

Amendment of rule 30

11. Rule 30 of the principal Rules is amended —

(a)

by deleting the words “the person filing it (referred to in this Division as the opponent)” in paragraph (1) and substituting the words “the opponent”; and

(b)

by deleting paragraph (2) and substituting the following paragraphs:

“(2) If registration is opposed on the ground that the mark is identical or similar to an earlier trade mark —

(a)	a representation of the earlier trade mark;
(b)	the registration number of the earlier trade mark, if registered, or the number accorded by the Registrar to the application for registration of the earlier trade mark, if pending registration; and
(c)	the class number and specification of the goods or services in respect of which the mark is registered or for which registration is sought or, if the mark is neither registered nor pending registration, in respect of which the mark is used,

shall be included in the notice for the purpose of determining if the mark is identical or similar to the earlier trade mark.

(3) If registration is opposed on the ground that the mark is identical or similar to an earlier trade mark which is well known in Singapore, the notice shall, in addition to the information referred to in paragraph (2), include the following information for the purpose of determining if the trade mark is well known in Singapore:

(a)	information on the use of the earlier trade mark; and
(b)	information on any promotion undertaken for the earlier trade mark.”.

Deletion and substitution of rule 31

12. Rule 31 of the principal Rules is deleted and the following rule substituted therefor:

“Counter-statement

31.—(1) Within 2 months from the date of receipt of the copy of the notice of opposition from the opponent, the applicant shall file with the Registrar a counter-statement in Form TM 12 (referred to in this Division as the counter-statement) setting out —

(a)	the grounds on which he relies as supporting his application; and
(b)	the facts alleged in the notice of opposition which he admits, if any.

(2) The applicant shall serve a copy of the counter-statement on the opponent at the same time as the counter-statement is filed with the Registrar.

(3) If the applicant does not comply with paragraph (1) or (2), he shall be deemed to have withdrawn his application.

(4) A request for an extension of time to file the counter-statement shall be made by the applicant to the Registrar in writing within 2 months from the date of receipt of the notice of opposition from the opponent.

(5) The total extension of time for which the Registrar may allow to file the counter-statement shall not exceed 4 months from the date of receipt by the applicant of the notice of opposition.

(6) Before making a request for an extension of time, the applicant shall serve a notice on the opponent and every other person likely to be affected by the extension, which shall contain —

(a)	a statement of the applicant’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)	a request for the consent of the opponent or other person to the extension.

(7) The request for the extension shall be supported by a copy of the notice referred to in paragraph (6) and the consent in writing, if this is given.

(8) The Registrar may refuse to grant the extension —

(a)	if the applicant fails to show a good and sufficient reason for the extension; or
(b)	if the applicant fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (6) has been served on the opponent and every person likely to be affected by the extension.

(9) Where a person on whom a notice referred to in paragraph (6) is served fails or refuses to give his consent to the extension, the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and the Registrar may do so without having to conduct a hearing in accordance with rule 67.”.

Amendment of rule 32

13. Rule 32 (1) of the principal Rules is amended by deleting the words “the Registrar’s letter forwarding the copy of the counter-statement to the opponent” in the 1st and 2nd lines and substituting the words “receipt of the counter-statement from the applicant”.

New rule 36A

14. The principal Rules are amended by inserting, immediately after rule 36, the following rule:

“Pre-hearing review

36A.—(1) At any time after the completion of the filing of evidence by the parties, the Registrar may direct the parties to attend a pre-hearing review at which he may give such directions as he considers necessary or desirable for securing the just, expeditious and economical disposal of the proceedings.

(2) At the pre-hearing review, the Registrar may consider any matter including the possibility of settlement of any or all of the issues in the proceedings and may require the parties to furnish him with such information as he may require.

(3) If any party fails to comply with any direction given under paragraph (1) or (2), the Registrar may dismiss the proceedings or make such other order as he thinks fit.

(4) Any direction or order by the Registrar may be set aside or varied by him on such terms as he thinks fit.

(5) If, at any time during the pre-hearing review, the parties are agreeable to a settlement of all or some of the matters in dispute in the proceedings, the Registrar may give his decision in relation to the proceedings or make such order as he thinks just to give effect to the settlement.

(6) If a party does not appear at the pre-hearing review, the Registrar may dismiss the proceedings or make such other order as the Registrar thinks fit, or he may adjourn the review.

(7) An order made by the Registrar in the absence of a party may be set aside by the Registrar, on the application of that party, on such terms as the Registrar thinks fit.”.

New rule 50A

15. The principal Rules are amended by inserting, immediately after rule 50, the following rule:

“Notice of non-compliance

50A.—(1) If, in the course of an examination of an application for renewal of registration, it appears to the Registrar that the application is not in order, the Registrar shall give written notice of this to the applicant.

(2) If the applicant fails to —

(a)	respond in writing to the Registrar on the notice; or
(b)	comply with any requisition of the Registrar set out in the notice,

within the time specified in the notice, the Registrar may treat the application as having been withdrawn.

(3) If the applicant wishes to have an extension of time to do any act referred to in paragraph (2)(a) or (b), he shall file with the Registrar a request for an extension of time in Form TM 49 before the expiry of the time specified in the notice or any extended period previously allowed by the Registrar.”.

Amendment of rule 53

16. Rule 53 of the principal Rules is amended —

(a)

by inserting, immediately after the words “as he thinks fit” in paragraph (3), the words “, within such time as the Registrar may specify”; and

(b)

by inserting, immediately after paragraph (3), the following paragraph:

“(3A) If the applicant wishes to have an extension of time to comply with the requirement referred to in paragraph (3), he shall file with the Registrar a request for an extension of time in Form TM 49 before the expiry of the time specified by the Registrar or any extended period previously allowed by the Registrar.”.

Amendment of rule 55

17. Rule 55 of the principal Rules is amended —

(a)

by inserting, immediately after the words “as the Registrar thinks fit” in paragraph (5), the words “, within such time as the Registrar may specify”; and

(b)

by inserting, immediately after paragraph (5), the following paragraph:

“(5A) If the applicant wishes to have an extension of time to comply with the requirement referred to in paragraph (5), he shall file with the Registrar a request for an extension of time in Form TM 49 before the expiry of the time specified by the Registrar or any extended period previously allowed by the Registrar.”.

Amendment of rule 56

18. Rule 56 of the principal Rules is amended —

(a)

by deleting the words “in duplicate” in the 3rd line of paragraph (4);

(b)

by inserting, immediately after paragraph (4), the following paragraphs:

“(4A) The person filing the notice and statement under paragraph (4) shall, at the same time, serve copies of the notice and statement on the proprietor.”; and

(c)

by deleting paragraphs (5) to (7) and substituting the following paragraphs:

“(5) Rules 29(3) to (8) and 31 to 40 shall, with the necessary modifications, apply to the proceedings thereon as they apply to proceedings relating to an opposition to an application for registration of a trade mark.

(6) For the purposes of the application of the rules referred to in paragraph (5) —

(a)	references in those rules to the applicant shall be treated as references to the proprietor;
(b)	references in those rules to the application shall be treated as references to the application referred to in paragraph (1);
(c)	references in those rules to the date of the publication of the application for registration shall be treated as references to the date of the publication of the alteration;
(d)	references in those rules to the notice of opposition shall be treated as references to the notice and statement referred to in paragraph (4); and
(e)	references in those rules to the opponent shall be treated as references to the person filing the notice and statement referred to in paragraph (4).”.

Amendment of rule 57

19. Rule 57 of the principal Rules is amended by deleting paragraph (3) and substituting the following paragraph:

“(3) The applicant shall, if he is not the proprietor of the registered trade mark, serve a copy of the application and statement on the proprietor at the same time as he files these documents with the Registrar.”.

Deletion and substitution of rule 58

20. Rule 58 of the principal Rules is deleted and the following rule substituted therefor:

“Counter-statement

58.—(1) Within 2 months from the date of receipt of the copies of the application and statement, the proprietor may file with the Registrar a counter-statement in Form 12 setting out —

(a)	the grounds on which he relies as supporting his registration; and
(b)	the facts alleged in the application which he admits, if any.

(2) The proprietor shall serve on the applicant a copy of the counter-statement at the same time as he files the counter-statement with the Registrar.

(3) In the case of an application for revocation of the registration of a trade mark on the ground referred to in section 22 (1) (a) or (b) of the Act, the proprietor shall file, together with the counter-statement, evidence of the use by him of the trade mark, and shall also serve this on the applicant at the same time.

(4) A request for an extension of time to file the counter-statement shall be made to the Registrar within 2 months from the date of receipt of the copies of the application and statement.

(5) The total extension of time for which the Registrar may allow to file the counter-statement shall not exceed 4 months from the date of receipt of the copies of the application and statement.

(6) Before making a request for an extension of time, the proprietor shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —

(a)	a statement of the proprietor’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)	a request for the consent of the applicant or other person to the extension.

(7) The request for the extension shall be supported by a copy of the notice referred to in paragraph (6) and the consent in writing, if this is given.

(8) The Registrar may refuse to grant the extension —

(a)	if the proprietor fails to show a good and sufficient reason for the extension; or
(b)	if the proprietor fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (6) has been served on the applicant and every other person likely to be affected by the extension.

(10) In the case of an application for revocation on the ground referred to in section 22 (1) (a) or (b) of the Act, the application shall be granted where no counter-statement has been filed within the time allowed.”.

Amendment of rule 59

21. Rule 59 of the principal Rules is amended —

(a)

by deleting the words “rule 58 (4)” at the end thereof and substituting the words “rule 58 (3)”; and

(b)

by renumbering that rule as paragraph (1) of that rule, and by inserting immediately thereafter the following paragraph:

“(2) For the purposes of the application of rules 32 to 40 —

(a)	references in those rules to the applicant shall be treated as references to the proprietor;
(b)	references in those rules to the application shall be treated as references to the proprietor’s registration;
(c)	references in those rules to the opponent shall be treated as references to the applicant for revocation or a declaration of invalidity of the registration; and
(d)	the reference in rule 33 (2) to the withdrawal of the application shall be treated as a reference to the admission by the proprietor to the facts alleged by the applicant in his application for revocation or a declaration of invalidity of the registration.”.

Amendment of rule 65

22. Rule 65 (1) of the principal Rules is amended by deleting the words “in duplicate” in the 3rd line.

Amendment of rule 66

23. Rule 66 of the principal Rules is amended by deleting paragraphs (4) to (8).

New rule 66A

24. The principal Rules are amended by inserting, immediately after rule 66, the following rule:

“Opposition to amendment of regulations

66A.—(1) Any person may, within 2 months from the date of the publication of the notice referred to in rule 66(3), file with the Registrar —

(a)	a notice of opposition to the amendment to the regulations in Form TM 14; and
(b)	a statement indicating why the amended regulations do not comply with the requirements of rule 6(1) of the First Schedule to the Act, or rule 7(1) of the Second Schedule to the Act, as the case may be.

(2) The person filing the notice and statement under paragraph (1) shall, at the same time, serve copies of the notice and statement on the proprietor.

(3) Rules 29(3) to (8) and 31 to 40 shall, with the necessary modifications, apply to the proceedings thereon as they apply to an opposition to an application for registration of a trade mark.

(4) For the purposes of the application of the rules referred to in paragraph (3) —

(a)	references in those rules to the applicant shall be treated as references to the applicant for the amendment of the regulations;
(b)	references in those rules to the application shall be treated as references to the application for the amendment of the regulations;
(c)	references in those rules to the date of the publication of the application for registration shall be treated as references to the date of the publication of the notice referred to in rule 66(3);
(d)	references to those rules to the notice of opposition shall be treated as references to the notice and statement referred to in paragraph (1);
(e)	references in those rules to the opponent shall be treated as references to the person who filed the notice and statement referred to in paragraph (1); and
(f)	Form TM 12 and Form TM 13 in those Rules shall be substituted with Form TM 15 and Form TM 16, respectively.”.

Amendment of rule 69

25. Rule 69 of the principal Rules is amended by inserting, immediately after paragraph (1), the following paragraph:

“(1A) Subject to the provisions of the Statutory Declarations Act (Cap. 320) and these Rules, Order 41 of the Rules of Court (cap. 322 R 5) shall, with the necessary modifications, apply in relation to a statutory declaration filed or used in any proceedings before the Registrar as it applies to an affidavit filed or used in any proceedings before the Court.”.

Amendment of rule 73

26. Rule 73 (4) of the principal Rules is amended by deleting the words “14 days” in the 3rd line and substituting the words “one month”.

Amendment of rule 77

27. Rule 77 of the principal Rules is amended by deleting paragraphs (2) to (7) and substituting the following paragraphs:

“(2) Before making a request for an extension of time, the person seeking the extension shall serve a notice on every person or party likely to be affected by the extension, which shall contain —

(a)	a statement of his intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)	a request for the consent in writing of the person or party to the extension.

(3) The request for extension shall be made before the expiry of the period of time in question and shall be supported by a copy of the notice referred to in paragraph (2) and the consent in writing, if this is given.

(4) The Registrar may refuse to grant the extension —

(a)	if the person requesting the extension fails to show a good and sufficient reason for the extension; or
(b)	if he fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (2) has been served on every person or party likely to be affected by the extension.

(5) Where a person or party on whom a notice referred to in paragraph (2) is served fails or refuses to give his consent to the extension, the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and the Registrar may do so without having to conduct a hearing in accordance with rule 67.

(6) Paragraphs (1) to (5) shall not apply to the following matters:

(a)	the doing of any act referred to in rule 24 (2)(a), (b) or (c);
(b)	the filing of a notice of opposition under rule 29;
(c)	the filing of a counter-statement under rule 31;
(d)	the filing of a notice of opposition to the removal of any matter from the register under rule 46 (2);
(e)	the doing of any act referred to in rule 50A (2)(a) or (b);
(f)	the filing of an application for the restoration of a registration under rule 53 (1);
(g)	the compliance with a requirement referred to in rule 53 (3);
(h)	the compliance with a requirement referred to in rule 55 (5);
(i)	the filing of a notice opposing the alteration of a registered trade mark under rule 56 (4);
(j)	the filing of a counter-statement to a notice referred to in sub-paragraph (i);
(k)	the filing of a counter-statement to an application for revocation, declaration of invalidity, or rectification of the register under rule 58;
(l)	the filing of a notice opposing the registration of a collective mark or certification mark under rule 65;
(m)	the filing of a counter-statement to a notice referred to in sub-paragraph (l);
(n)	the filing of a notice of opposition to an amendment to regulations governing the use of a registered collective or certification mark under rule 66A (1);
(o)	the filing of a counter-statement to a notice referred to in sub-paragraph (n);
(p)	the filing of a notice of opposition in respect of a pending application for registration referred to in rule 87; and
(q)	the filing of a counter-statement to a notice referred to in sub-paragraph (p).”.

New rule 81A

28. The principal Rules are amended by inserting, immediately after rule 81, the following rule:

“Case management conference

81A. Notwithstanding anything in these Rules, at any stage of any application to or proceedings before the Registrar, the Registrar may direct the applicant or parties to attend a case management conference in order that the Registrar may make such order or give such direction as he thinks fit for the just, expeditious and economical disposal of the matter.”.

Amendment of rule 82

29. Rule 82 (e) of the principal Rules is amended by deleting “66” and substituting “66A”.

Amendment of First Schedule

30. The First Schedule to the principal Rules is amended —

(a)

by deleting “$6” in item 1 and substituting “$8”;

(b)

by deleting “$150” in item 2 (a) and (b) and substituting in each case “$306”;

(c)

by deleting the word “, address” in item 4;

(d)

by deleting “$515” in item 5 and substituting “$600”;

(e)

by deleting item 6;

(f)

by deleting “$325” in items 7 and 31 and substituting in each case “$340”;

(g)

by deleting “29 (2)” in item 8 and substituting “29 (3)”;

(h)

by deleting “$290” in items 9, 10, 11 and 32 and substituting in each case “$325”;

(i)

by deleting “56 (7)” in item 10 and substituting “56 (5)”;

(j)

by deleting “58” in item 11 and substituting “58 (1)”;

(k)

by deleting “56 (7)”, “65” and “66” in item 12 and substituting “56 (5)” and “65 (1)”, respectively;

(l)

by deleting “$350” in item 12 and substituting “$400”;

(m)

by deleting “$60” in item 14 and substituting “$80”;

(n)

by deleting “$200” in item 15 and substituting “$250”;

(o)

by deleting “$65” in item 17 and substituting “$80”;

(p)

by deleting “$50” in items 18, 19 and 20 and substituting in each case “$60”;

(q)

by deleting “$290” in item 24 and substituting “$340”;

(r)

by deleting “$225” in item 25 and substituting “$325”;

(s)

by deleting “$65” in item 26 and substituting “$75”;

(t)

by deleting “$32” in item 27 (b) and substituting “$40”;

(u)

by deleting “$150” in item 28 (a) and (b) and substituting in each case “$306”;

(v)

by deleting “$60” in item 30 and substituting “$70”;

(w)

by deleting “66” and “$325” in item 31 and substituting “66A” and “$340”, respectively;

(x)

by deleting “66” in item 33 and substituting “66A (3)”;

(y)

by deleting “$70” in item 34 and substituting “$80”;

(z)

by deleting “$25” in item 35 and substituting “$30”;

(za)

by deleting “$5” in item 42 (a) and substituting “$6”;

(zb)

by deleting “$10” in item 43 and substituting “$12”;

(zc)

by deleting “$30” in item 44 and substituting “$35”;

(zd)

by deleting “$8.50” in item 45 and substituting “$12”; and

(ze)

by inserting, immediately after item 45, the following item:

“

46. Request for extension of time under rules 24 (2A), 50A (3), 53 (3A) and 55 (5A)

24 (2A), 50A (3), 53 (3A), 55 (5A)

—

”.

Amendment of Second Schedule

31. The Second Schedule to the principal Rules is amended —

(a)

by deleting Form TM 6;

(b)

by deleting Forms TM 1, TM 4, TM 7, TM 9, TM 10, TM 11, TM 12, TM 13, TM 14, TM 15, TM 16, TM 22, TM 23, TM 26, TM 27, TM 28, TM 29, TM 30, TM 37, TM 42, TM 45 and TM 48 and substituting the following forms respectively:

(c)

by adding, immediately after Form TM 48, the following form:

Savings provision

32.—(1) Notwithstanding the provisions of rule 6, that rule shall not apply to any matter for which the Registrar has given a written notice at any time before the date these Rules come into operation, being a notice given under rule 24(2) of the principal Rules that is in force immediately before that date; and rule 24 of the principal Rules in force immediately before that date shall continue to apply to that matter.

(2) Notwithstanding the provisions of rules 7, 30(e) and 31(a), those rules shall not apply to any application for registration of a trade mark filed at any time before the date these Rules come into operation, and the following, namely:

(a)	rule 25 of the principal Rules;
(b)	item 6 of the First Schedule to the principal Rules;
(c)	Form TM 6 of the Second Schedule to the principal Rules,

in force immediately before that date shall continue to apply to that application.

[G.N. Nos.S 228/99]

Made this 28th day of October 2000.

NIAM CHIANG MENG

Permanent Secretary,
Ministry of Law,
Singapore.

[LAW 18/001/003 V3; AG/LEG/SL/332/96/2 Vol. 1]

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