No. S 742
Registered Designs Act
(CHAPTER 266)
Registered Designs
(Amendment) Rules 2014
In exercise of the powers conferred by section 74 of the Registered Designs 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 Registered Designs (Amendment) Rules 2014 and shall come into operation on 13 November 2014.
Amendment of rule 2
2.  Rule 2(1) of the Registered Designs Rules (R 1) (referred to in these Rules as the principal Rules) is amended by deleting the definitions of “account holder”, “authentication code” and “identification name”.
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, the payment of a fee in connection with an act referred to in rule 58A(2)(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 to be used for any purpose relating to the registration of a design or any other proceedings before the Registrar under the Act.”; and
(b)by deleting paragraph (3) and substituting the following paragraphs:
(3)  Any reference in these Rules to a numbered form shall be construed as a reference to the current version of the form which bears the corresponding number and is described in the Second Schedule.
(4)  The matters referred to in the Act, including sections 11, 14(1), 15(1), 27(5), 28(1) and 35(2) of the Act, shall be filed with, made to or given to, the Registrar, or done in an effective and efficient manner by means which may be specified by the Registrar by the issuance of practice directions.”.
New rule 4AA
5.  The principal Rules are amended by inserting, immediately after rule 4, the following rule:
Practice directions
4AA.  All practice directions issued by the Registrar under the Act or these Rules shall be published by the Registrar on the Office’s Internet website at http://www.ipos.gov.sg.”.
Amendment of rule 6
6.  Rule 6 of the principal Rules is amended —
(a)by deleting paragraph (1) and substituting the following paragraph:
(1)  Where the Act or these Rules authorise or require any document to be given or sent to, filed with or served on the Registrar or Registry, the giving, sending, filing or service may be effected on the Registrar or Registry —
(a)by sending the document by post;
(b)where there is no fee payable to the Registrar or Registry for the giving, sending, filing or service of the document, by sending the document by facsimile transmission;
(c)by sending an electronic communication of the document using the electronic online system; or
(d)by hand.”;
(b)by deleting the words “Act authorises or requires” in paragraph (2) and substituting the words “Act or these Rules authorise or require”;
(c)by deleting paragraph (3) and substituting the following paragraph:
(3)  Where the Act or these Rules authorise or require any notice or other document to be given or sent to or served on any party by the Registrar or Registry, the Registrar or Registry may effect the giving, sending or service on the party —
(a)by sending the notice or other document by post;
(b)by sending the notice or other document by facsimile transmission; or
(c)by sending an electronic communication of the notice or other document using the electronic online system.”;
(d)by deleting the words “the document would” in paragraph (4) and substituting the words “the notice or document would”;
(e)by inserting, immediately after the words “rule 7” in paragraph (5), the words “or 8”;
(f)by inserting the word “and” at the end of paragraph (6)(a);
(g)by deleting the semi‑colon at the end of paragraph (6)(b) and substituting a full‑stop;
(h)by deleting sub‑paragraphs (c) and (d) of paragraph (6);
(i)by inserting, immediately after paragraph (6), the following paragraph:
(6A)  Notwithstanding the availability of an address for service filed in accordance with rule 7, where any notice or other document to be given, sent or served by the Registrar or Registry is sent to a person by electronic communication using the electronic online system under paragraph (3)(c), that notice or document shall be taken to have been duly given, sent to or served on the person.”; and
(j)by inserting, immediately after paragraph (7), the following paragraph:
(8)  This rule shall not apply to notices and documents to be served in proceedings in court.”.
Deletion and substitution of rule 7
7.  Rule 7 of the principal Rules is deleted and the following rule substituted therefor:
Address for service
7.—(1)  For the purposes of any proceedings before the Registrar, an address for service in Singapore shall be filed in accordance with paragraph (2) or (5) by or on behalf of —
(a)every applicant for the registration of a design;
(b)every person applying to the Registrar under section 27 of the Act for the revocation of the registration of a design;
(c)every person granted leave to intervene under rule 49C;
(d)every owner of a registered design which is the subject of an application to the Registrar for the revocation of the registration of the design; and
(e)every other party to any proceedings before the Registrar.
(2)  Where the application for a matter requires an address for service in Singapore to be furnished, the address for service in Singapore shall be furnished on the form filed for the matter.
(3)  The filing of an address for service in accordance with paragraph (2) shall be effective only for the matter for which the form is filed.
(4)  Notwithstanding paragraph (3) —
(a)where an applicant for the registration of a grant of a licence, the amendment of a licence or the termination of a licence furnishes an address for service in Form CM6 in relation to that licence, the address for service shall be effective for the purposes of all proceedings in respect of that licence;
(b)where an applicant for the registration of a grant of any security interest, the amendment of any security interest or the termination of any security interest furnishes an address for service in Form CM7 in relation to that security interest, the address for service shall be effective for the purposes of all proceedings in respect of that security interest;
(c)where an applicant for the registration of a change in the ownership of a registered design furnishes an address for service in Form CM8, the address for service may, at the option of the applicant, be effective —
(i)for the purposes of all proceedings in respect of the design, including the application for the registration of the design; or
(ii)only for the purposes of the registration of the change in the ownership of the registered design, in which case the applicant must furnish another address for service for all other proceedings in respect of the design, including the application for the registration of the design, on a separate Form CM8;
(d)where an applicant for the registration of a design furnishes an address for service in Form D3, the address for service shall be effective for the purposes of all proceedings in respect of the design in relation to which that form is filed;
(e)where a registered owner who files a counter‑statement under rule 41 furnishes an address for service in Form HC6, the address for service shall be effective for the purposes of the proceedings in relation to which that form is filed and any related proceedings under Part VIIA;
(f)where an applicant for the revocation of the registration of a design furnishes an address for service in Form D13, the address for service shall be effective for the purposes of the proceedings in relation to which that form is filed and any related proceedings under Part VIIA;
(g)where an applicant for any of the following, furnishes an address for service in Form D8, the address for service shall be effective for the purposes of the proceedings in relation to which that form is filed:
(i)an application for an extension of the period of registration of a design under section 21 of, or paragraph 3(6) of the Schedule to, the Act;
(ii)an application for the restoration of the registration of a design which was removed from the Register;
(h)subject to sub‑paragraph (e), the address for service of an applicant for the registration of a design shall, upon the registration of the design, be the address for service of that party as the owner of the design, unless —
(i)the Registrar is notified of a change in the address for service in accordance with paragraph (7); or
(ii)the Registrar is notified of an assignment of a registered design or any right in it referred to in rule 37(1)(b), in accordance with rule 37;
(i)where a person referred to in paragraph (1)(c) furnishes an address for service in Form CM1, the address for service shall be effective for the purposes of an application under rule 49C for leave to intervene in relation to which that form is filed and any related proceedings under Part VIIA;
(j)where a party referred to in paragraph (1)(e) furnishes an address for service in Form CM1, the address for service shall be effective for the purposes of any proceedings before the Registrar in relation to which that form is filed and any related proceedings under Part VIIA; and
(k)the Registrar may treat the trade or business address in Singapore of a person as his address for service, unless a different address for service is provided under paragraph (1) or (7).
(5)  In a case where paragraphs (2) and (4) do not apply, the address for service shall be filed in Form CM2.
(6)  Where an address for service is not filed as required by paragraph (1), the Registrar may send to the person concerned notice to file an address for service within 2 months after the date of the notice, and if that person fails to do so —
(a)in the case of an applicant or person referred to in paragraph (1)(a) or (b), the application made by the applicant or person shall be treated as withdrawn;
(b)in the case of a person referred to in paragraph (1)(c), the person shall be treated as having withdrawn the person’s intervention;
(c)in the case of the owner of a registered design referred to in paragraph (1)(d), the owner shall not be permitted to take part in any proceedings relating to the application for the revocation of the registration of the design; and
(d)in the case of a party referred to in paragraph (1)(e), the party shall not be permitted to take part in the proceedings in question.
(7)  Where a person referred to in paragraph (1) has changed his address for service in Singapore, he shall notify the Registrar of such change in Form CM2.
(8)  Anything sent to or served on a person at his address for service shall be taken to have been duly sent to or served on the person.”.
Amendment of rule 8
8.  Rule 8 of the principal Rules is amended —
(a)by inserting, immediately after the words “the Act” in paragraph (1), the words “or these Rules”; and
(b)by deleting paragraphs (3) and (4) and substituting the following paragraphs:
(3)  Where an agent has been appointed by a person for any application or proceedings, the agent’s address for service in Singapore shall be treated as the address for service of that person.
(4)  The appointment of an agent for a matter shall be notified to the Registrar in the form for that matter.
(5)  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.
(6)  Where an agent who has changed his name desires to change his name appearing on the Register, the agent shall apply for the name appearing on the Register to be changed by filing Form CM2 with the Registrar.
(7)  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 12
9.  Rule 12(1) of the principal Rules is amended by deleting sub‑paragraph (ii) of sub‑paragraph (c) and substituting the following sub‑paragraph:
(ii)in 3 dimensions one or more articles manufactured in lengths for the purposes of sale or hire.”.
Amendment of rule 23
10.  Rule 23 of the principal Rules is amended by deleting the words “Form D4” and substituting the words “Form CM9”.
Amendment of rule 24
11.  Rule 24(2) of the principal Rules is amended by deleting the words “Form D1” and substituting the words “Form CM2”.
Deletion and substitution of rule 25
12.  Rule 25 of the principal Rules is deleted and the following rule substituted therefor:
Reinstatement of application, right or thing
25.—(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 in Form CM13 and filed with the Registrar within 6 months after 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 —
(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 application for the registration of a design which has been withdrawn under section 14 of the Act; 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)a failure to comply with the time limit for —
(A)an application under rule 15(3) of the Registered Designs (International Registration) Rules 2005 (G.N. No. S 177/2005) for the registration of a design;
(B)any act under —
(BA)section 27 of the Act or Part VI of these Rules; or
(BB)section 27 of the Act and Part VI of these Rules, read with rule 12 of the Registered Designs (International Registration) Rules 2005,
in any proceedings for the revocation of the registration of a design;
(C)the filing of a request under paragraph (2);
(D)the filing of Form HC5 under rule 27(8)(a); or
(E)an application for a hearing to make representations in relation to a written notice given by the Registrar that the formal requirements for registration under rule 27 are not met; or
(ii)a failure to pay the fee for the extension of the period of registration of a design under rule 35(2) or the restoration of the registration of a design under rule 35C.”.
Amendment of rule 27
13.  Rule 27 of the principal Rules is amended —
(a)by deleting the words “3 months from” in paragraph (3) and substituting the words “3 months after”;
(b)by inserting, immediately after the word “Registrar” in paragraph (3)(b), the words “in Form HC4”;
(c)by deleting the words “Form D16” in paragraph (4) and substituting the words “Form CM5”;
(d)by deleting paragraph (5) and substituting the following paragraph:
(5)  Where the applicant has applied to the Registrar in Form HC4 for a hearing, the Registrar shall give notice to the applicant of a date on which the Registrar will hear the applicant’s arguments.”; and
(e)by deleting paragraph (8) and substituting the following paragraph:
(8)  Where the applicant wishes to have the Registrar’s grounds of decision —
(a)the applicant shall, within one month after the date of the Registrar’s decision, file a request in Form HC5 for the Registrar to state the Registrar’s grounds of decision; and
(b)the Registrar shall, within 2 months after the date of the request, send the grounds of decision to the applicant.”.
Amendment of rule 28
14.  Rule 28 of the principal Rules is amended —
(a)by deleting the word “and” at the end of paragraph (e); and
(b)by deleting the full‑stop at the end of paragraph (f) and substituting a semi‑colon, and by inserting immediately thereafter the following paragraphs:
(g)the statement of novelty relating to the design;
(h)such other information as the Registrar thinks fit.”.
New rule 28A
15.  The principal Rules are amended by inserting, immediately after rule 28, the following rule:
Deferment of publication
28A.—(1)  An applicant may, when applying for the registration of a design in Form D3, request in that form that any publication of the design be deferred for 18 months.
(2)  A request made under paragraph (1) shall be accompanied by the applicable fee specified in the First Schedule.”.
Amendment of rule 30
16.  Rule 30(1) of the principal Rules is amended by inserting, immediately after the words “relating to a registered design”, the words “which has been published under section 18 of the Act, shall be made in Form CM10 and”.
Amendment of rule 31
17.  Rule 31 of the principal Rules is amended by deleting paragraph (f) and substituting the following paragraph:
(f)the representations relating to the design;”.
Amendment of rule 32
18.  Rule 32 of the principal Rules is amended by deleting the words “Form D7” and substituting the words “Form CM12”.
New rule 32A
19.  The principal Rules are amended by inserting, immediately after rule 32, the following rule:
General certificates by Registrar
32A.—(1)  Any person who desires to obtain a certificate referred to in section 72 of the Act in relation to any entry, matter or thing which the Registrar is authorised to make or do under the Act or these Rules may make a request to the Registrar in writing.
(2)  Before giving the certificate, the Registrar may require the person to furnish evidence to show that he has an interest in the entry, matter or thing.”.
Amendment of rule 33
20.  Rule 33 of the principal Rules is amended —
(a)by deleting the words “Form D5” in paragraph (1) and substituting the words “Form CM4”; and
(b)by deleting the words “Form D1” in paragraph (2) and substituting the words “Form CM2”.
Amendment of rule 35
21.  Rule 35(1) of the principal Rules is amended by deleting the words “Subject to rule 67, an” and substituting the word “An”.
Amendment of rule 35A
22.  Rule 35A of the principal Rules is amended by deleting paragraph (3).
Amendment of rule 35B
23.  Rule 35B of the principal Rules is amended —
(a)by deleting the word “or” at the end of paragraph (a); and
(b)by deleting the full‑stop at the end of paragraph (b) and substituting the word “; or”, and by inserting immediately thereafter the following paragraph:
(c)no application for the restoration of the design is filed in accordance with rule 35C.”.
New rule 35C
24.  The principal Rules are amended by inserting, immediately after rule 35B, the following rule:
Restoration of registration
35C.—(1)  A person may apply to restore a design which has been removed, on or after 13 November 2014, from the Register under rule 35B by —
(a)filing an application with the Registrar in Form D8 within 6 months after the last day of the first 6‑month period after the date on which the design is removed from the Register; and
(b)paying the fees for the restoration of the design and the extension of the period of registration of the design after the design is restored.
(2)  The Registrar may, in any case, require the applicant for restoration to furnish such additional evidence or information, by statutory declaration or otherwise, as the Registrar thinks fit, within such time as the Registrar may specify.
(3)  The Registrar may restore the design to the Register and renew the registration of the design if he is satisfied that it is just to do so, and upon such conditions as he may think fit to impose.”.
Amendment of rule 37
25.  Rule 37 of the principal Rules is amended —
(a)by deleting paragraph (1) and substituting the following paragraph:
(1)  An application —
(a)to register the particulars of a registrable transaction or to amend any particular of a registrable transaction, under section 34 of the Act; or
(b)to give notice to the Registrar of the particulars of a transaction under section 35 of the Act,
shall be made —
(i)in the case of the grant, amendment or termination of a licence, in Form CM6;
(ii)in the case of the grant, amendment or termination of any security interest, in Form CM7; or
(iii)in any other case, in Form CM8.”;
(b)by deleting the word “mortgagor” in paragraph (2)(c) and substituting the word “grantor”;
(c)by inserting the word “or” at the end of paragraph (2)(ca);
(d)by deleting sub‑paragraph (cb) of paragraph (2);
(e)by inserting, immediately after paragraph (2), the following paragraph:
(2AA)  Where an application under paragraph (2) is filed by means of the electronic online system, the application shall be authorised by all relevant parties and be validated by such means as the Registrar considers fit.”;
(f)by deleting the words “paragraph (2) is not complied with and, in such event,” in paragraph (2A) and substituting the words “paragraph (2) or (2AA) is not complied with and, in such event, the Registrar”; and
(g)by deleting paragraphs (2B), (3A), (3B) and (4).
Deletion of rule 38
26.  Rule 38 of the principal Rules is deleted.
Amendment of rule 39
27.  Rule 39 of the principal Rules is amended —
(a)by deleting the words “Form D12” in paragraph (1) and substituting the words “Form CM3”;
(b)by inserting the word “and” at the end of paragraph (2)(a);
(c)by deleting sub‑paragraph (b) of paragraph (2);
(d)by deleting the words “every such person” in paragraph (2)(c) and substituting the words “every person having an interest in the design”; and
(e)by deleting the word “consented” in paragraph (2)(c)(ii) and substituting the words “no objection”.
Amendment of rule 40
28.  Rule 40 of the principal Rules is amended by inserting, immediately after paragraph (3), the following paragraph:
(4)  If the applicant does not comply with paragraph (3), his application shall be treated as not having been filed.”.
Amendment of rule 41
29.  Rule 41 of the principal Rules is amended —
(a)by deleting the words “2 months from the date he receives the copies of both” in paragraph (1) and substituting the words “2 months after the date he receives the copies of”;
(b)by deleting the words “Form D14” in paragraph (1) and substituting the words “Form HC6”;
(c)by deleting paragraph (3) and substituting the following paragraph:
(3)  A request for an extension of time to file the counter‑statement shall be made by the registered owner to the Registrar in Form HC3 within 2 months after the date of receipt of the copies of the application and the statement.”;
(d)by deleting the words “4 months from the date the registered owner receives the copies of both” in paragraph (4) and substituting the words “4 months after the date of receipt by the registered owner of the copies of”;
(e)by deleting the words “2 weeks from” in paragraph (8) and substituting the words “2 weeks after”;
(f)by deleting the words “rule 52” in paragraph (8) and substituting the words “rule 52A”; and
(g)by inserting, immediately after paragraph (8), the following paragraph:
(8A)  The Registrar shall grant the application where no counter‑statement has been filed or served on the applicant within the time allowed.”.
Amendment of rule 42
30.  Rule 42 of the principal Rules is amended —
(a)by deleting the words “2 months from” in paragraph (1) and substituting the words “3 months after”;
(b)by deleting the words “send to” in paragraph (1) and substituting the words “serve on”; and
(c)by deleting paragraph (2) and substituting the following paragraph:
(2)  If the applicant does not file or serve any evidence in accordance with paragraph (1), the application shall, unless the Registrar otherwise directs, be treated as withdrawn.”.
Amendment of rule 43
31.  Rule 43 of the principal Rules is amended —
(a)by deleting the words “2 months from” in paragraph (1) and substituting the words “3 months after”;
(b)by deleting the words “counter‑statement and shall, at the same time, send to” in paragraph (1) and substituting the words “registration and shall, at the same time, serve on”;
(c)by deleting paragraph (2) and substituting the following paragraph:
(2)  If the registered owner does not file or serve any evidence in accordance with paragraph (1), he shall, unless the Registrar otherwise directs, be deemed to have admitted to the facts alleged by the applicant in his application for revocation.”; and
(d)by deleting the rule heading and substituting the following rule heading:
Evidence in support of registration”.
Amendment of rule 44
32.  Rule 44(1) of the principal Rules is amended —
(a)by deleting the words “2 months from” and substituting the words “3 months after”; and
(b)by deleting the words “send to” and substituting the words “serve on”.
Amendment of rule 47
33.  Rule 47(1) of the principal Rules is amended by deleting the words “, at the request of the other party and at that other party’s expense,”.
Amendment of rule 47A
34.  Rule 47A of the principal Rules is amended —
(a)by deleting paragraph (3) and substituting the following paragraph:
(3)  If any party fails to comply with any direction given or requirement imposed under paragraph (1) or (2), the Registrar may —
(a)where that direction was given or requirement was imposed in relation to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be; or
(b)make such other order as the Registrar thinks fit.”; and
(b)by deleting paragraphs (5) and (6) and substituting the following paragraphs:
(5)  If, during or pursuant to a pre‑hearing review, the parties are agreeable to a settlement of all or some of the matters in dispute in any application or proceedings, the Registrar may —
(a)give his decision in relation to the application or proceedings; or
(b)make such order as he thinks just to give effect to the settlement.
(6)  If any party does not appear at a pre‑hearing review, the Registrar may —
(a)where the pre‑hearing review pertains to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be;
(b)make such other order as the Registrar thinks fit; or
(c)adjourn the pre‑hearing review.”.
Amendment of rule 48
35.  Rule 48 of the principal Rules is amended —
(a)by deleting the words “Form D15” in paragraphs (3), (4) and (5) and substituting in each case the words “Form HC1”; and
(b)by deleting paragraphs (6), (7) and (8) and substituting the following paragraphs:
(6)  Where the Registrar gives his decision under paragraph (4) or (5) in relation to the proceedings, whether the hearing was proceeded with or not, rule 49 shall apply.
(7)  If neither party appears at the hearing, the Registrar may dismiss the proceedings.
(8)  Upon making any decision or order under paragraph (4) or (5) or dismissing any proceedings under paragraph (4), (5) or (7), the Registrar shall notify every party of the decision, order or dismissal, as the case may be, in writing.
(9)  Any decision or order made by the Registrar under paragraph (4) or (5) in the absence of any party may, on the application of that party, be set aside by the Registrar on such terms as the Registrar thinks fit.
(10)  Any proceedings dismissed under paragraph (4), (5) or (7) may, on the application of any party, be restored on the direction of the Registrar.
(11)  An application under paragraph (9) or (10) shall be made within 14 days after the date of the Registrar’s notification under paragraph (8).”.
Deletion and substitution of rule 49
36.  Rule 49 of the principal Rules is deleted and the following rule substituted therefor:
Notice of decision
49.—(1)  Subject to paragraph (2), the Registrar shall inform the parties of his decision and the grounds of the decision —
(a)in any case where the duration of the hearing is one day or less, within 3 months after the date of the hearing; or
(b)in any other case, within 3 months after the last day of the hearing.
(2)  Where the Registrar grants leave to one or more parties to file closing submissions on a date which is after the last day of the hearing, he shall inform all parties of his decision and the grounds of the decision within 3 months after the date of filing of those submissions.”.
Deletion and substitution of rule 52 and new rule 52A
37.  Rule 52 of the principal Rules is deleted and the following rules substituted therefor:
Registrar’s discretionary powers
52.  Without prejudice to any of the provisions of the Act or these Rules requiring the Registrar to hear any party to proceedings under the Act or these Rules, or to give such party an opportunity to be heard, the Registrar shall, before exercising any discretionary power vested in him by or under the Act or these Rules adversely to any party to a proceeding before him, give that party an opportunity to be heard.
Request for hearing
52A.—(1)  A request for the exercise of the discretionary power of the Registrar under rule 52 in ex parte proceedings, whether interlocutory or otherwise —
(a)shall be made in Form HC4; and
(b)shall be filed within one month after —
(i)the date of notification by the Registrar of any objection to an application; or
(ii)the date of any other indication that the Registrar proposes to exercise a discretionary power,
and the Registrar may refuse to hear any party who has not filed the request within the time allowed.
(2)  Upon receipt of a request under paragraph (1), the Registrar shall send to the person making the request a notice of a time when the person may be heard, which shall be not less than 14 days after the date of the notice.
(3)  A request for the exercise of the discretionary powers of the Registrar under rule 52 in inter partes interlocutory proceedings shall be made to the Registrar in writing.
(4)  A person shall, at the time he makes a request under paragraph (3), serve on every other party to the proceedings a copy of the request.
(5)  Except as provided in paragraph (1) or (3), no request shall be made for the exercise of the discretionary powers of the Registrar under rule 52.
(6)  The Registrar may give such directions as he may think fit with regard to any aspect of the procedure for a hearing under this rule.
(7)  After hearing each party, the Registrar shall notify every party of the Registrar’s decision in relation to the exercise of the discretionary power.
(8)  Where any party wishes to have the Registrar’s grounds of decision in respect of a request under paragraph (1) —
(a)the party shall, within one month after the date of the Registrar’s decision, by filing Form HC5, request the Registrar to state the Registrar’s grounds of decision; and
(b)the Registrar shall, within 2 months after the date of the request, send the grounds of decision to the party.
(9)  The date on which the Registrar’s grounds of decision are sent to the party making the request under paragraph (8)(a) shall be deemed to be the date of the Registrar’s decision for the purpose of an appeal.
(10)  In paragraph (9), “Registrar’s decision” means any decision referred to in section 62(1) of the Act.”.
Amendment of rule 56A
38.  Rule 56A(1) of the principal Rules is amended by deleting the words “one month from” in sub‑paragraph (b) and substituting the words “one month after”.
Amendment of rule 56B
39.  Rule 56B of the principal Rules is amended —
(a)by deleting the words “from the date of the award of costs” in paragraph (1) and substituting the words “after the relevant date referred to in paragraph (1A)”;
(b)by inserting, immediately after paragraph (1), the following paragraph:
(1A)  For the purposes of paragraph (1), the relevant date is —
(a)subject to sub‑paragraph (b), the date of the order for costs made by the Registrar; or
(b)where any appeal is brought in respect of that order for costs, the date on which that appeal is finally disposed of.”;
(c)by deleting paragraph (2) and substituting the following paragraphs:
(2)  Every bill of costs shall set out in 3 separate sections the following:
(a)work done in the cause or matter (other than for or in the taxation of costs);
(b)work done for or in the taxation of costs;
(c)all disbursements made in the cause or matter.
(2A)  The costs claimed under paragraph (2)(a), (b) and (c) shall set out the sum claimed for each item.
(2B)  The bill of costs shall set out in chronological order, with dates, all relevant events in the cause or matter, all relevant events in the taxation of costs, and all relevant events relating to the making of disbursements.”; and
(d)by deleting the words “one month from” in paragraph (4) and substituting the words “one month after”.
Amendment of rule 56D
40.  Rule 56D of the principal Rules is amended by deleting paragraph (1) and substituting the following paragraph:
(1)  The provisions in the Fourth Schedule shall apply to the sections of the bill of costs relating to —
(a)work done in the cause or matter (other than for or in the taxation of costs); and
(b)work done for or in the taxation of costs.”.
Deletion and substitution of rule 56E
41.  Rule 56E of the principal Rules is deleted and the following rule substituted therefor:
Certificate
56E.  When a bill of costs has been taxed, the party who applied for the costs to be taxed shall file Form HC2, and the Registrar shall proceed to make his certificate for the amount of the taxed costs.”.
Amendment of rule 57
42.  Rule 57 of the principal Rules is amended —
(a)by deleting the words “made in Form D16” in paragraph (1);
(b)by deleting paragraph (3) and substituting the following paragraph:
(3)  A request under paragraph (1) shall be made in Form CM5 or Form HC3, as appropriate, before the expiry of the period of time in question, and shall be accompanied by —
(a)a copy of the notice referred to in paragraph (2);
(b)each written consent, if any, that has been given pursuant to a request under paragraph (2)(b); and
(c)the applicable fee specified in the First Schedule.”;
(c)by deleting the words “2 weeks from” in paragraph (5) and substituting the words “2 weeks after”;
(d)by deleting the words “rule 52” in paragraph (5) and substituting the words “rule 52A”;
(e)by deleting sub‑paragraphs (a) to (e) of paragraph (6) and substituting the following sub‑paragraphs:
(a)the doing of the act referred to in rule 27(3)(b);
(b)the making of an application to extend the period of the registration of a design under rule 35;
(c)the making of an application for the restoration of a design which has been removed from the Register under rule 35C(1);
(d)the filing of a counter‑statement to an application for revocation under rule 41;
(e)the filing of a request for the Registrar’s grounds of decision under rule 27(8)(a) or 52A(8)(a).”; and
(f)by inserting, immediately after paragraph (6), the following paragraphs:
(7)  This rule as in force immediately before 13 November 2014 shall continue to apply on or after that date to any request made before that date under this rule for an extension of time.
(8)  Notwithstanding paragraph (7), any request made by a person or party concerned before 13 November 2014 under this rule as in force immediately before that date, for the extension of a particular period of time (whether prescribed by these Rules or specified by the Registrar) for doing any act or taking any proceedings, shall be taken into account for the purpose of determining the fee payable under paragraph (3)(c) for any request for a further extension of that period made by that person or party on or after that date under this rule.”.
Amendment of rule 58A
43.  Rule 58A of the principal Rules is amended by deleting paragraph (2) and substituting the following paragraphs:
(2)  The electronic online system may be used —
(a)by any person for giving, sending to, filing with or serving on the Registrar or Registry any document (other than a notice or document to be served in proceedings in court); and
(b)by the Registrar or 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).
(3)  The Registrar may issue practice directions specifying —
(a)the manner in which any document is to be given or sent to, filed with or served on the Registrar or Registry under paragraph (2)(a);
(b)the manner in which the Registrar or Registry may give, send or serve any notice or document under paragraph (2)(b);
(c)the procedures and conditions for the setting‑up, operation and use of the electronic online system; and
(d)the manner in which the fee for filing any document through the electronic online system is to be paid.”.
Deletion of rules 58B to 58E
44.  Rules 58B to 58E of the principal Rules are deleted.
Deletion and substitution of rule 58G and new rule 58H
45.  The principal Rules are amended by deleting rule 58G and substituting the following rules:
Documents to be signed, made on oath, etc.
58G.—(1)  Where any document to be given, sent, filed or served using the electronic online system is to be signed or made on oath or by affirmation, it shall be signed, made on oath or affirmed in the usual way on the original paper document.
(2)  Where any document to be given, sent, filed or served using the electronic online system is to be attested, it shall be attested in the usual way in which the original paper document is attested.
(3)  The giving, sending, filing or service of such document using the electronic online system shall be effected by sending a true and complete electronic image of the original paper document.
Service bureau
58H.  The Registrar may establish or appoint agents to establish one or more service bureaus to assist a person in the use of the electronic online system for giving, sending to, filing with or serving on the Registrar or Registry any document referred to in rule 58A(2)(a).”.
Amendment of rule 60A
46.  The principal Rules are amended by renumbering rule 60A as paragraph (1) of that rule, and by inserting immediately thereafter the following paragraphs:
(2)  At a case management conference, the Registrar may —
(a)consider any matter, including the possibility of settlement of any or all of the issues in the application or proceedings; and
(b)direct the parties to furnish the Registrar with such information as the Registrar may require.
(3)  If any party fails to comply with any direction or order given under paragraph (1) or (2), the Registrar may —
(a)where that direction or order was given in relation to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be; or
(b)make such other order as the Registrar thinks fit.
(4)  Any direction given or order made by the Registrar under paragraph (1), (2) or (3) may be set aside or varied by the Registrar on such terms as the Registrar thinks fit.
(5)  If, during or pursuant to a case management conference, the parties are agreeable to a settlement of all or some of the matters in dispute in any application or proceedings, the Registrar may —
(a)give the Registrar’s decision in relation to the application or proceedings; or
(b)make such order as the Registrar thinks just to give effect to the settlement.
(6)  If any party does not appear at a case management conference, the Registrar may —
(a)where the case management conference pertains to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be;
(b)make such other order as the Registrar thinks fit; or
(c)adjourn the case management conference.
(7)  An order made by the Registrar in the absence of a party under paragraph (6) may be set aside by the Registrar, on the application of that party, on such terms as the Registrar thinks fit.
(8)  Any application or proceedings dismissed under paragraph (3) or (6) may, on application of any party, be restored on the direction of the Registrar.”.
Deletion of rule 60C
47.  Rule 60C of the principal Rules is deleted.
Deletion and substitution of rule 62
48.  Rule 62 of the principal Rules is deleted and the following rule substituted therefor:
Order of Court and certificate of validity
62.—(1)  Where an order is made by the Court or any other competent authority in any matter under the Act, the person, or one of the persons, in whose favour the order is made shall, as soon as practicable, file with the Registrar a copy of the order by way of a written request.
(2)  If the order is to rectify or alter the Register, the Registrar shall rectify or alter the Register in accordance with such order.
(3)  Where the Court has certified, in accordance with section 43 of the Act, that a design has been validly registered, the owner of the registered design may request the Registrar to include a notation in the Register that such certificate has been given for the registered design by sending the following to the Registrar:
(a)a written request;
(b)a copy of the certificate.”.
Deletion and substitution of rule 65
49.  Rule 65 of the principal Rules is deleted and the following rule substituted therefor:
Correction of errors
65.—(1)  A request by a person who has made an application (other than an application for registration of a design) for the correction of a clerical error or mistake referred to in section 72A of the Act must be made in Form CM4.
(2)  For the purposes of paragraph (1), the correction must be clearly identified on a document filed together with the form or on the form itself.
(3)  The Registrar may call for such written explanation of the reasons for the request or evidence in support of the request as the Registrar may require in order to be satisfied that there is an error or mistake.
(4)  Paragraph (1) shall not apply to the correction of an error of translation or transcription or of a clerical error or mistake in —
(a)any document filed in inter partes proceedings under —
(i)any of rules 40 to 48; or
(ii)rule 49C, 52A(3) or (4), 56A, 56B, 56E or 57(1);
(b)any form filed under rule 52A(1) or (8); or
(c)any form filed for an application under rule 27(3)(b) or for a request under rule 27(8)(a).
(5)  A request for the correction of an error in respect of any proceedings referred to in paragraph (4)(a) shall be made to the Registrar in writing.”.
New rule 65A
50.  The principal Rules are amended by inserting, immediately after rule 65, the following rule:
Irregularities
65A.  Any irregularity in procedure which, in the opinion of the Registrar, is not detrimental to the interests of any person or party may be corrected on such terms as the Registrar may direct.”.
Amendment of rule 66
51.  Rule 66 of the principal Rules is amended —
(a)by deleting the words “Form D1” in paragraphs (1) and (2) and substituting in each case the words “Form CM2”;
(b)by deleting paragraph (3); and
(c)by deleting the words “Upon due proof of such alteration” in paragraph (4) and substituting the words “If the Registrar is satisfied that any request to change any name or address may be allowed”.
Amendment of rule 66A
52.  Rule 66A(1) of the principal Rules is amended —
(a)by deleting the words “rules 4(1), 28 and 67(3);” in sub‑paragraph (a) and substituting the words “rule 28; and”; and
(b)by deleting sub‑paragraph (b).
Deletion of rule 67
53.  Rule 67 of the principal Rules is deleted.
Deletion and substitution of First and Second Schedules
54.  The First and Second Schedules to the principal Rules are deleted and the following Schedules substituted therefor:
FIRST SCHEDULE
Rules 3(1), 28A(2), 30(1), 57(3)(c) and 68(1)
Fees
First column
Matter
Second column
Corresponding
Rule(s)
Third column
Fee
Fourth column
Corresponding Form(s)
1.Application for registration of a design under section 11 of the Act
13
$250 in respect of each design
Form D3
2.Request for deferment of publication
28A
$40 in respect of each request
Form D3
3.Application to amend an application for registration of a design under section 15 of the Act
24(1)
$45 in respect of each design number
Form D5
4.Application for extension of period of registration of a design under section 21 of, or paragraph 3(6) of the Schedule to, the Act —
35
 
Form D8
(a)for the first period of 5 years
 
$220
 
(b)for the second period of 5 years
 
$330
 
(c)for the third period of 5 years
 
$440
 
(d)for the fourth period of 5 years
 
$550
 
5.Application for restoration of registration of a design removed from the Register under section 21(6) of the Act
35C(1)
$135 in respect of each registration
Form D8
6.Late application to extend period of registration of a design under section 21(5) of, or paragraph 3(6) of the Schedule to, the Act
$50 in respect of each registration in addition to fee under item 4
7.Request to appoint, change or remove agent
8(5)
$8.50 in respect of each design number
Form CM1
8.Request to change name, address or address for service or entry of address for service
7(7), 8(6), 66
$13
Form CM2
9.Request to surrender registration of a design
39(1)
$30 in respect of each design number
Form CM3
10.Request for correction of error
33(1), 65(1)
$50
Form CM4
11.Request for extension of time by a person or party regarding a particular period prescribed by the Rules or specified by the Registrar for doing any act or taking any proceedings in relation to non‑contentious proceedings —
57(3)
 
Form CM5
(a)for first or second extension of that period
 
 
(b)for third or any subsequent extension of that period
 
$50 in respect of each design number
 
12.Notice for withdrawal of an application for registration
23
Form CM9
13.Request for extension of time by a person or party regarding a particular period prescribed by the Rules or specified by the Registrar for doing any act or taking any proceedings in relation to contentious proceedings —
57(3)
 
Form HC3
(a)for first extension of that period
 
 
(b)for second or any subsequent extension of that period
 
$100
 
14.Application to register the grant, amendment or termination of a licence
37(1)(i)
$60 in respect of each design number
Form CM6
15.Application to register the grant, amendment or termination of any security interest
37(1)(ii)
$50 in respect of each design number
Form CM7
16.Application for an assignment of a registered design or any right in it
37(1)(iii)
$70 in respect of each design number
Form CM8
17.Request for online file inspection
30, 68
$30 in respect of each design number
Form CM10
18.Request for certified copy of an entry in the Register or certified extract from the Register —
32
 
Form CM12
(a)where the certified copy or extract or document is in soft copy
 
$28 in respect of each design number
 
(b)where the certified copy or extract or document is in hard copy
 
$35 in respect of each design number
 
19.Request for reinstatement of application, right or thing
25(2)
$100 in respect of each design number
Form CM13
20.Application for revocation of the registration of a design
40(1)
$400
Form D13
21.Notice of attendance at hearing
48(3)
$715
Form HC1
22.Request to extract the Registrar’s certificate of taxation
56E
$80
Form HC2
23.Request for extension of time to file counter‑statement
41(3)
Form HC3
24.Request for ex parte hearing
27(5), 52A(1)
$100
Form HC4
25.Request to the Registrar to state grounds of decision for hearing
27(8), 52A(8)(a)
$700
Form HC5
26.Filing of counter‑statement
41(1)
$360
Form HC6
27.Purchase of a copy of the Designs Journal
$10
28.For using the services of a service bureau to file any of the following by means of the electronic online system:
58H
 
(a)any form, and any document accompanying the form
 
$40 per form plus $0.50 for each page of the document accompanying the form
(b)any statutory declaration filed as evidence in inter partes proceedings or any written submission or bundle of authorities, not accompanying any form when filed
 
$0.50 for each page of the document
SECOND SCHEDULE
Rule 4(3)
Description of Forms
First column
Form
Second column
Description of Form
1.Form D3
Application for registration of a design under section 11 of the Act
2.Form D5
Application to amend an application for registration of a design under section 15 of the Act
3.Form D8
Application for extension of period of registration of a design under section 21 of, or paragraph 3(6) of the Schedule to, the Act, for restoration of registration removed from the Register, or for extension of period of registration
4.Form D13
Application for revocation of the registration of a design under section 27 of the Act
5.Form CM1
Request to appoint, change or remove agent
6.Form CM2
Request to change name, address and Singapore address for service of agent, applicant, proprietor or other interested person
7.Form CM3
Request to surrender a registered design
8.Form CM4
Request for correction of error
9.Form CM5
Request for extension of time
10.Form CM6
Application to register, amend or terminate licence
11.Form CM7
Application to register, amend or terminate security interest
12.Form CM8
Application to register transfer of ownership
13.Form CM9
Request for withdrawal of application
14.Form CM10
Request for online file inspection
15.Form CM12
Request for certified copy of an entry in the Register or certified extract from the Register
16.Form CM13
Request for reinstatement of rights
17.Form HC1
Notice of attendance at hearing
18.Form HC2
Request to extract the Registrar’s certificate of taxation
19.Form HC3
Request for extension of time
20.Form HC4
Request for an ex parte hearing
21.Form HC5
Request for grounds of decision for ex parte hearing
22.Form HC6
Counter‑statement
”.
Amendment of Fourth Schedule
55.  The Fourth Schedule to the principal Rules is amended —
(a)by deleting the sub‑heading immediately before item 5 and substituting the following sub‑heading:
INTERLOCUTORY PROCEEDINGS, ETC.”;
(b)by deleting items 5 and 6 and substituting the following items:
5.Preparing for all interlocutory proceedings, pre‑hearing reviews and case management conferences
$50–$500
6.Attending all interlocutory proceedings, pre‑hearing reviews and case management conferences
$50–$500
”; and
(c)by deleting item 9.
Savings and transitional provisions
56.—(1)  Rule 8 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 under that rule before that date.
(2)  Any notice of withdrawal of an application for registration of a design given before 13 November 2014 under rule 23 of the principal Rules as in force immediately before that date shall on or after that date be treated as given under rule 23 of the principal Rules as in force on or after that date.
(3)  Any request to amend the particulars relating to the name or address of an applicant in an application for registration of a design, made before 13 November 2014 under rule 24 of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 24 of the principal Rules as in force on or after that date.
(4)  Rule 25 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to every notice referred to in section 16(3)(a) of the Act requesting reinstatement of an application for registration of a design, which was given under that rule before that date.
(5)  Any application to the Registrar for a hearing made before 13 November 2014 under rule 27(3)(b) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 27(3)(b) of the principal Rules as in force on or after that date.
(6)  Any request for an extension of time made before 13 November 2014 under rule 27(4) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 27(4) of the principal Rules as in force on or after that date.
(7)  Rule 27(8) of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to every request for the Registrar to state the Registrar’s grounds of decision, which was made under that provision as in force before that date.
(8)  Rule 30(1) of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to every request under section 28 of the Act for information, or for permission to inspect any document, relating to a registered design, which was made under rule 30(1) of the principal Rules as in force before that date.
(9)  Any application under section 55(3) of the Act, made before 13 November 2014 under rule 32 of the principal Rules as in force immediately before that date shall, on or after that date be treated as made under rule 32 of the principal Rules as in force on or after that date.
(10)  Any request for the correction of any clerical error made before 13 November 2014 under rule 33(1) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 33(1) of the principal Rules as in force on or after that date.
(11)  Any request to correct the particulars in the Register relating to the name or address of an applicant, made before 13 November 2014 under rule 33(2) of the principal Rules as in force immediately before that date, shall on or after that date be treated as made under rule 33(2) of the principal Rules as in force on or after that date.
(12)  Rule 37 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to the following, which was made or given under that rule before that date:
(a)every application to register particulars of a registrable transaction under section 34 of the Act;
(b)every notice to the Registrar of particulars of a transaction under section 35 of the Act.
(13)  Rule 38 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to every application which was made, by a person to have a note entered in the Register that he no longer claims to be mortgagee or licensee, under that rule before that date.
(14)  Any surrender of the registration of a design made before 13 November 2014 under rule 39(1) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 39(1) of the principal Rules as in force on or after that date.
(15)  Any counter‑statement filed before 13 November 2014 under rule 41(1) of the principal Rules as in force immediately before that date shall on or after that date be treated as filed under rule 41(1) of the principal Rules as in force on or after that date.
(16)  Any request for an extension of time to file a counter‑statement made before 13 November 2014 under rule 41(3) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 41(3) of the principal Rules as in force on or after that date.
(17)  Rule 42 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any evidence which was filed and sent under that rule before that date.
(18)  Rule 43 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any evidence which was filed and sent under that rule before that date.
(19)  Rule 44 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any evidence in reply which was filed and sent under that rule before that date.
(20)  Any form filed by a party who intends to appear at a hearing, before 13 November 2014 under rule 48(3) of the principal Rules as in force immediately before that date shall on or after that date be treated as filed under rule 48(3) of the principal Rules as in force on or after that date.
(21)  Rule 48(8) of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to the following:
(a)every application which was made before that date to restore any proceedings struck out under rule 48(6) of the principal Rules as in force immediately before that date;
(b)every application which was made before that date to set aside any decision made under rule 48(7) of the principal Rules as in force immediately before that date.
(22)  Rules 56B and 56D of, and the Fourth Schedule to, the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any order for costs made by the Registrar before that date, to any appeal brought before that date in respect of any such order for costs, or to any bill of costs filed before that date in respect of any such order for costs.
(23)  Any form filed before 13 November 2014 in relation to the issue of a certificate by the Registrar under rule 56E of the principal Rules as in force immediately before that date shall on or after that date be treated as filed under rule 56E of the principal Rules as in force on or after that date.
(24)  Rule 60C of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to a request, which was made before that date under rule 7(4) or 66(2) of the principal Rules as in force immediately before that date.
(25)  Rule 65 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date with respect to any direction given, or term imposed, by the Registrar under that rule before that date.
(26)  Any request made before 13 November 2014 under rule 66(1) of the principal Rules as in force immediately before that date, by any person to change his name appearing in the Register or any document given or sent to or filed with the Registrar, shall on or after that date be treated as made under rule 66(1) of the principal Rules as in force on or after that date.
(27)  Rule 67 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to every application to extend the period of registration of a relevant design from the expiry of its initial period of registration, which was made under that rule before that date.
[G.N. Nos. S 778/2004; S 556/2005; S 587/2011]
Made on 10 November 2014.
BEH SWAN GIN
Permanent Secretary,
Ministry of Law,
Singapore.
[LAW 06/011/047; AG/LLRD/SL/266/2011/1 Vol. 2]