Trade Marks (International Registration) (Amendment) Rules 2014

No. S 740

Trade Marks Act

(CHAPTER 332)

Trade Marks (International Registration)
(Amendment) Rules 2014

In exercise of the powers conferred by sections 54 and 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 (International Registration) (Amendment) Rules 2014 and shall come into operation on 13 November 2014.

Amendment of rule 2

2. Rule 2 of the Trade Marks (International Registration) Rules (R 3) (referred to in these Rules as the principal Rules) is amended —

(a)

by inserting, immediately after the definition of “Common Regulations”, the following definition:

“ “electronic online system” means the electronic online system established under rule 78A of the Trade Marks Rules (R 1);”; and

(b)

by deleting the definition of “International Bureau”.

Amendment of rule 3

3. Rule 3 of the principal Rules is amended by deleting paragraph (2) and substituting the following paragraphs:

“(2) Unless otherwise provided for in these Rules, or the Registrar permits or directs otherwise —

(a)	where a fee is specified in the First Schedule in respect of any matter, the fee shall be paid at the same time as the filing of the form corresponding to the matter; and
(b)	if the fee is not paid, the form shall not be treated as filed.

(3) Unless the Registrar permits or directs otherwise, payment of a fee in connection with an act referred to in rule 4A(a) shall be made using any mode of payment designated by the electronic online system if the act is carried out using that system.”.

Amendment of rule 4

4. Rule 4 of the principal Rules is amended —

(a)

by deleting paragraph (1) and substituting the following paragraph:

“(1) The Registrar shall publish on the Office’s Internet website at http://www.ipos.gov.sg the forms referred to in these Rules.”;

(b)

by deleting the word “relating” in paragraph (3)(a) and substituting the words “referred to in paragraph (2) which relates”; and

(c)

by deleting paragraph (4) and substituting the following paragraph:

“(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 described —

(a)	in the case of Forms MP1 and MP2, in the Second Schedule; or
(b)	in the case of any other form, in the Second Schedule to the Trade Marks Rules.”.

New rule 4A

5. The principal Rules are amended by inserting, immediately after rule 4, the following rule:

“Electronic online system

4A. The electronic online system may be used —

(a)	by any person for giving, sending to, filing with or serving on the Registrar or the Registry any document (other than a notice or document to be served in proceedings in court); and
(b)	by the Registrar or the Registry for giving, sending to or serving on any person any notice or other document (other than a notice or document to be served in proceedings in court).”.

Amendment of rule 11

6. Rule 11 of the principal Rules is amended —

(a)

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

“(2A) Where the mark to which the international registration relates contains or consists of a word or words in characters other than Roman or in a language other than English, the Registrar may require the holder to —

(a)	file with the Registrar a translation in English to the satisfaction of the Registrar and, if the case requires, a transliteration in English to the satisfaction of the Registrar, of the word or words; and
(b)	indicate on the translation and the transliteration (if any) the language to which the word or words belong.”;

(b)

by deleting the words “on Form TM 49” in paragraph (5) and substituting the words “in Form CM5”; and

(c)

by deleting paragraphs (6) and (7) and substituting the following paragraphs:

“(6) A holder making representations shall file with the Registrar an address for service in Singapore in Form CM2.

(7) A request by the holder to the Registrar to change or correct an address for service shall be made in Form CM2.

(8) The following shall be notified to the Registrar in Form CM1:

(a)	any appointment of an agent for a matter for which no form is prescribed;
(b)	any change of an agent for a matter.

(9) Where an agent for a party to any proceedings intends to cease to act on the party’s behalf —

(a)	the agent shall file, and serve on the party and on the Registrar, a notice in Form CM1 of the intention to cease to act on the party’s behalf; and
(b)	upon complying with sub‑paragraph (a), the agent shall cease to be the agent for the party.”.

Amendment of rule 13

7. Rule 13 of the principal Rules is amended by deleting the word “from” in paragraphs (1) and (6) and substituting in each case the word “after”.

Amendment of rule 14

8. Rule 14 of the principal Rules is amended —

(a)

by deleting the word “from” in paragraphs (1), (4), (5) and (9) and substituting in each case the word “after”;

(b)

by deleting the words “Form TM 12” in paragraph (1)(a) and substituting the words “Form HC6”;

(c)

by deleting sub‑paragraph (b) of paragraph (1) and substituting the following sub‑paragraph:

“(b)

an address for service in Singapore —

(i)	if the holder appoints an agent to make representations before the Registrar, in Form CM1; or
(ii)	if the holder does not appoint any agent to make representations before the Registrar, in Form CM2.”;

(d)

by deleting the words “in writing” in paragraph (4) and substituting the words “in Form HC3”; and

(e)

by deleting “67” in paragraph (9) and substituting “67A”.

Amendment of rule 16

9. Rule 16(1) of the principal Rules is amended by deleting the word “from” and substituting the word “after”.

Amendment of rule 17

10. Rule 17(1) of the principal Rules is amended by deleting the word “from” in sub‑paragraphs (a)(i) and (ii) and (b) and substituting in each case the word “after”.

Amendment of rule 24

11. Rule 24(1) of the principal Rules is amended by deleting the word “from” in sub‑paragraph (b) and substituting the word “after”.

Amendment of rule 27

12. Rule 27 of the principal Rules is amended —

(a)

by deleting paragraph (1) and substituting the following paragraph:

“(1) An applicant for the registration of a trade mark, or the proprietor of a registered trade mark, may, subject to the provisions of this rule, apply through the Registrar for the international registration of the trade mark —

(a)	by filing Form MM2(E); and
(b)	by filing the address for service in Singapore of the applicant or proprietor, as the case may be.”;

(b)

by inserting, immediately after the words “particulars appearing in the application” in paragraph (3), the words “(other than the address for service in Singapore of the applicant)”; and

(c)

by deleting paragraph (5) and substituting the following paragraph:

“(5) The application referred to in paragraph (1), and the applicant’s address for service in Singapore referred to in that paragraph, may be filed using the electronic online system.”.

Amendment of rule 28

13. Rule 28(2) of the principal Rules is amended by deleting the words “5 years from” wherever they appear in sub‑paragraphs (a), (aa)(i), (b), (c)(i), (d), (e) and (f) and substituting in each case the words “5 years after”.

Amendment of First Schedule

14. The First Schedule to the principal Rules is amended by deleting item 3.

Amendment of Second Schedule

15. The Second Schedule to the principal Rules is amended by deleting the item relating to Form MP3 and substituting the following item:

“

MM2(E)

Application for international registration governed exclusively by the Madrid Protocol

”.

Savings and transitional provisions

16.—(1) Any form filed before 13 November 2014 under rule 11(5) of the principal Rules as in force immediately before that date to request for an extension of time shall on or after that date be treated as filed under rule 11(5) of the principal Rules as in force on or after that date.

(2) Any form filed by a holder before 13 November 2014 under rule 11(6) of the principal Rules as in force immediately before that date to provide an address for service in Singapore shall on or after that date be treated as filed under rule 11(6) of the principal Rules as in force on or after that date.

(3) Any counter‑statement filed before 13 November 2014 under rule 14(1) of the principal Rules as in force immediately before that date shall on or after that date be treated as filed under rule 14(1) of the principal Rules as in force on or after that date.

(4) Rule 14(1)(b) of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to every form, which was filed by a holder to provide an address for service in Singapore under that provision before that date.

(5) Any request for an extension of time to file a counter‑statement made under rule 14(4) of the principal Rules as in force immediately before 13 November 2014 shall on or after that date be treated as made under rule 14(4) of the principal Rules as in force on or after that date.

[G.N. Nos. S 372/2004; S 853/2005; S 162/2007; S 597/2008; S 589/2011]

Made on 10 November 2014.

BEH SWAN GIN

Permanent Secretary,
Ministry of Law,
Singapore.

[LAW 06/011/024; AG/LLRD/SL/332/2011/1 Vol. 1]

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