Trade Marks (Amendment) Rules 2014 - Singapore Statutes Online

No. S 743

Trade Marks Act

(CHAPTER 332)

Trade Marks
(Amendment) Rules 2014

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 2014 and shall come into operation on 13 November 2014.

Amendment of rule 2

2. Rule 2(1) of the Trade Marks 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 78A(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 trade mark or any other proceedings before the Registrar under the Act.”; and

(b)

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

“(4) 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.

(5) The matters referred to in the Act, including sections 5(1), 5A(2), 13(3) and 67(5) 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 4A

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

“Practice directions

4A. 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 7

6. Rule 7 of the principal Rules is amended —

(a)

by deleting the word “or” at the end of paragraph (1)(b);

(b)

by deleting the full‑stop at the end of sub‑paragraph (c) of paragraph (1) and substituting the word “; or”, and by inserting immediately thereafter the following sub‑paragraph:

“(d)	by hand.”; and

(c)

by deleting paragraph (6B).

Deletion and substitution of rule 9

7. Rule 9 of the principal Rules is deleted and the following rule substituted therefor:

“Address for service

9.—(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 trade mark;

(b)

every person opposing any of the following:

(i)	an amendment of an application for registration of a trade mark which has been published, where the amendment affects the goods or services covered by the application for registration;
(ii)	an application for registration of a trade mark, collective mark or certification mark;
(iii)	a removal of any matter from the register;
(iv)	an alteration of a registered trade mark;
(v)	an application to amend the regulations governing the use of a registered collective mark or certification mark;

(c)

every person applying to the Registrar under section 22 of the Act for the revocation of the registration of a trade mark, under section 23 of the Act for a declaration of invalidity of the registration of a trade mark, or under section 67 of the Act for the rectification of the register;

(d)

every person granted leave to intervene under rule 60;

(e)

every proprietor of a registered trade mark which is the subject of an application to the Registrar for the revocation of the registration of the trade mark, for a declaration of invalidity of the registration, or for a rectification of the register;

(f)

every applicant for the renewal of the registration of a trade mark or for the restoration of a trade mark to the register;

(g)

every applicant for the registration of —

(i)	a grant of a licence;
(ii)	the amendment of a licence; or
(iii)	the termination of a licence;

(h)

every applicant for the registration of —

(i)	a grant of any security interest;
(ii)	the amendment of any security interest; or
(iii)	the termination of any security interest;

(i)

every applicant for the registration of a change in ownership of a registered trade mark;

(j)

every person recorded as having an interest in a trade mark pursuant to —

(i)	the making of an assent by personal representatives; or
(ii)	an order of the Court or any other competent authority; and

(k)

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)

subject to sub‑paragraph (e), where an applicant for the registration of a trade mark furnishes an address for service in Form TM 4, the address for service shall be effective for the purposes of all proceedings in respect of the trade mark in relation to which that form is filed;

(b)

subject to sub‑paragraph (f), the address for service of a proprietor of a registered trade mark shall be effective for the purposes of all proceedings in respect of the registered trade mark, except for any application for the second or any subsequent renewal of the registered trade mark;

(c)

where a person who opposes any of the following furnishes an address for service in Form TM 11, 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 X:

(i)	an amendment of an application for registration of a trade mark which has been published, where the amendment affects the goods or services covered by the application for registration;
(ii)	an application for registration of a trade mark, collective mark or certification mark;
(iii)	a removal of any matter from the register;
(iv)	an alteration of a registered trade mark;
(v)	an application to amend the regulations governing the use of a registered collective mark or certification mark;

(d)

where an applicant who makes any of the following applications to the Registrar furnishes an address for service in Form TM 28, 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 X:

(i)	an application under section 22 of the Act for the revocation of the registration of a trade mark;
(ii)	an application under section 23 of the Act for a declaration of invalidity of the registration of a trade mark;
(iii)	an application under section 67 of the Act for the rectification of the register;

(e)

where an applicant who replies to an opposition to any of the following 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 X:

(i)	an amendment of an application for registration of a trade mark which has been published, where the amendment affects the goods or services covered by the application for registration;
(ii)	an application for registration of a trade mark, collective mark or certification mark;
(iii)	an alteration of a registered trade mark;
(iv)	an application to amend the regulations governing the use of a registered collective mark or certification mark;

(f)

where a registered proprietor who files a counter‑statement under rule 58 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 X;

(g)

where an applicant for the renewal of the registration of a trade mark, or the restoration of a trade mark to the register, furnishes an address for service in Form TM 19, the address for service shall be effective for the purposes of all renewal applications or proceedings, and all restoration applications or proceedings, in respect of the trade mark in relation to which that form is filed;

(h)

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;

(i)

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;

(j)

where an applicant for the registration of a change in the ownership of a registered trade mark 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 trade mark, including the application for the registration of the trade mark; or
(ii)	only for the purposes of the registration of the change in the ownership of the registered trade mark, in which case the applicant must furnish another address for service for all other proceedings in respect of the trade mark, including the application for the registration of the trade mark, on a separate Form CM8;

(k)

where a person referred to in paragraph (1)(d) furnishes an address for service in Form CM1, the address for service shall be effective for the purposes of the application under rule 60 (for leave to intervene) in relation to which that form is filed and any related proceedings under Part X;

(l)

where a party referred to in paragraph (1)(k) 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 X;

(m)

where a person, recorded as having an interest in a trade mark pursuant to the making of an assent by personal representatives, or pursuant to an order of the Court or any other competent authority, furnishes an address for service in Form TM 20 in relation to the assent or order, the address for service shall be effective for the purposes of such of the following as may be applicable in respect of the assent or order:

(i)

the registration of —

(A)	a grant of a licence;
(B)	the amendment of a licence; or
(C)	the termination of a licence;

(ii)

the registration of —

(A)	a grant of any security interest;
(B)	the amendment of any security interest; or
(C)	the termination of any security interest;

(iii)

the registration of a change in the ownership of a registered trade mark;

(n)

subject to sub‑paragraph (f), the address for service of an applicant for the registration of a trade mark shall, upon the registration of the trade mark, be the address for service of that party as the proprietor of the trade mark, unless —

(i)	the Registrar is notified of a change in the address for service in accordance with paragraph (7) or rule 44; or
(ii)	the Registrar is notified of an assignment or transaction referred to in rule 55(1)(a), in accordance with rule 55; and

(o)

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) or rule 44.

(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), (c), (f), (g), (h) or (i), 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)(b) or (d), the person shall be treated as having withdrawn the person’s opposition or intervention (as the case may be);
(c)	in the case of the proprietor referred to in paragraph (1)(e), the proprietor shall not be permitted to take part in any proceedings relating to the application for the revocation of the registration of the trade mark, the declaration of invalidity of the registration, or the rectification of the register, as the case may be;
(d)	in the case of a person referred to in paragraph (1)(j), the application made by the person to register the making of the assent, or the order of the Court or any other competent authority, shall be treated as withdrawn; and
(e)	in the case of a party referred to in paragraph (1)(k), 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 10

8. Rule 10 of the principal Rules is amended by deleting paragraphs (3), (4), (4A) and (5) 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 16

9. Rule 16(6) of the principal Rules is amended by deleting the words “Form TM 27B” and substituting the words “Form TM 27”.

Amendment of rule 19

10. Rule 19(3) of the principal Rules is amended by deleting the words “in consecutive numerical order”.

Amendment of rule 20

11. Rule 20(1) of the principal Rules is amended by deleting sub‑paragraphs (a) and (b) and substituting the following sub‑paragraphs:

“(a)	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)	the language to which the word or words belong.”.

Amendment of rule 21

12. Rule 21 of the principal Rules is amended by deleting the words “2 months from” in paragraphs (2) and (5) and substituting in each case the words “2 months after”.

New rule 21A

13. The principal Rules are amended by inserting, immediately after rule 21, the following rule:

“Withdrawal of application

21A. A notice of withdrawal of an application for registration of a trade mark referred to in section 5 of the Act may be made in either of the following ways:

(a)	by way of a written request;
(b)	in Form CM9.”.

Amendment of rule 22

14. Rule 22 of the principal Rules is amended by deleting paragraph (1) and substituting the following paragraph:

“(1) An application to amend an application for registration shall be made in —

(a)	Form CM1, if it is made to appoint, change or remove an agent;
(b)	Form CM2, if it is made to change or correct the name or other particulars of the applicant, and the change or correction does not affect the representation of the trade mark; and
(c)	Form TM 27, if sub‑paragraphs (a) and (b) do not apply.”.

Amendment of rule 23

15. Rule 23 of the principal Rules is amended —

(a)

by deleting the words “or a statement of the effect of the amendment” in paragraph (1);

(b)

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

“(2) Any person who wishes to oppose the amendment shall, within 2 months after the date of publication of the amendment, file with the Registrar a notice of opposition to the amendment in Form TM 11.”; and

(c)

by deleting the words “or statement referred to in paragraph (1)” in paragraph (5)(b).

Amendment of rule 24

16. Rule 24 of the principal Rules is amended —

(a)

by deleting the words “4 months from” in paragraph (2) and substituting the words “4 months after”;

(b)

by inserting, immediately after the words “apply to the Registrar” in paragraph (2)(b), the words “in Form HC4”;

(c)

by deleting paragraph (2A);

(d)

by deleting paragraph (3) and substituting the following paragraph:

“(3) 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 (6) and substituting the following paragraph:

“(6) 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 26

17. Rule 26 of the principal Rules is amended by deleting paragraph (3).

Amendment of rule 29

18. Rule 29 of the principal Rules is amended —

(a)

by deleting the word “from” in paragraphs (1), (3), (4) and (8) and substituting in each case the word “after”;

(b)

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

“(2A) If the opponent does not comply with paragraph (2), his notice of opposition shall be treated as not having been filed.”; and

(c)

by deleting the words “rule 67” in paragraph (8)(b) and substituting the words “rule 67A”.

Amendment of rule 30

19. Rule 30 of the principal Rules is amended by deleting paragraphs (2) and (3) 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, the following information must be included in the statement, for the purpose of determining whether the mark is identical or similar to the earlier trade mark:

(a)

a representation of the earlier trade mark; and

(b)

such of the following as may be applicable:

(i)

if the earlier trade mark is registered —

(A)	its registration number; and
(B)	the class number and specification of the goods or services in respect of which the earlier trade mark is registered;

(ii)

if the application to register the earlier trade mark is pending —

(A)	the number accorded by the Registrar to the application; and
(B)	the class number and specification of the goods or services in respect of which the earlier trade mark is sought to be registered; or

(iii)

if the earlier trade mark is not registered, and no application has been made to register it, the specification of the goods or services in respect of which the earlier trade mark is used.

(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 following additional information must be included in the statement for the purpose of determining whether 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.”.

Amendment of rule 31

20. Rule 31 of the principal Rules is amended —

(a)	by deleting the words “2 months from” in paragraph (1) and substituting the words “2 months after”;
(b)	by deleting the words “Form TM 12” in paragraph (1) and substituting the words “Form HC6”;
(c)	by deleting the words “deemed to have” in paragraph (3) and substituting the words “treated as having”;
(d)	by deleting the words “writing within 2 months from” in paragraph (4) and substituting the words “Form HC3 within 2 months after”;
(e)	by deleting the word “from” in paragraphs (5) and (9) and substituting in each case the word “after”; and
(f)	by deleting the words “rule 67” in paragraph (9)(b) and substituting the words “rule 67A”.

Amendment of rule 32

21. Rule 32 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 “in writing within 2 months from” in paragraph (4) and substituting the words “in Form HC3 within 3 months after”;
(c)	by deleting the words “6 months from” in paragraph (5) and substituting the words “6 months after”;
(d)	by deleting the words “Form TM 50” in paragraph (6) and substituting the words “Form HC3”;
(e)	by deleting the words “2 weeks from” in paragraph (10) and substituting the words “2 weeks after”; and
(f)	by deleting the words “rule 67” in paragraph (10)(b) and substituting the words “rule 67A”.

Amendment of rule 33

22. Rule 33 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 “in writing within 2 months from” in paragraph (4) and substituting the words “in Form HC3 within 3 months after”;
(c)	by deleting the word “from” in paragraphs (5) and (10) and substituting in each case the word “after”;
(d)	by deleting the words “Form TM 50” in paragraph (6) and substituting the words “Form HC3”; and
(e)	by deleting the words “rule 67” in paragraph (10)(b) and substituting the words “rule 67A”.

Amendment of rule 34

23. Rule 34 of the principal Rules is amended —

(a)

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

“(1) Within 3 months after the date of receipt by the opponent of the copy of the applicant’s statutory declaration referred to in rule 33, the opponent may file with the Registrar a statutory declaration setting out his evidence in reply.”;

(b)

by deleting the words “in writing within 2 months from” in paragraph (4) and substituting the words “in Form HC3 within 3 months after”;

(c)

by deleting the word “from” in paragraphs (5) and (10) and substituting in each case the word “after”;

(d)

by deleting the words “Form TM 50” in paragraph (6) and substituting the words “Form HC3”; and

(e)

by deleting the words “rule 67” in paragraph (10)(b) and substituting the words “rule 67A”.

Amendment of rule 36

24. Rule 36 of the principal Rules is amended by deleting paragraph (1) and substituting the following paragraph:

“(1) Where there are exhibits to any evidence filed in an opposition, the party who is relying on the exhibits in support of his case must send a copy of each exhibit to the other party.”.

Amendment of rule 36A

25. Rule 36A 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 37

26. Rule 37 of the principal Rules is amended —

(a)

by deleting the words “Form TM 13” 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 38 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 38

27. Rule 38 of the principal Rules is deleted and the following rule substituted therefor:

“Registrar’s decision in opposition proceedings

38.—(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.”.

Amendment of rule 42

28. Rule 42(1) of the principal Rules is amended by deleting sub‑paragraph (g).

Amendment of rule 43

29. Rule 43 of the principal Rules is amended —

(a)	by deleting the words “Form TM 33” and substituting the words “Form TM 27”; and
(b)	by deleting the words “and publish such disclaimer or limitation”.

Amendment of rule 44

30. Rule 44 of the principal Rules is amended —

(a)	by deleting the words “on Form TM 26” in paragraph (1) and substituting the words “in Form CM2”; and
(b)	by deleting the words “on Form TM 1” in paragraph (4) and substituting the words “in Form CM2”.

Amendment of rule 46

31. Rule 46 of the principal Rules is amended by deleting the word “from” in paragraphs (2) and (3) and substituting in each case the word “after”.

Amendment of rule 47

32. Rule 47 of the principal Rules is amended —

(a)	by deleting the words “on Form TM 34” in paragraph (1) and substituting the words “in writing”;
(b)	by deleting the words “named in the form” in paragraph (1); and
(c)	by deleting the words “and publish the note in the Trade Marks Journal” in paragraph (2).

Deletion and substitution of rule 48

33. Rule 48 of the principal Rules is deleted and the following rule substituted therefor:

“Extract from register

48. Any person may, by filing Form CM12 with the Registrar, request from the Registrar any of the following:

(a)	a certified copy of any entry in the register pertaining to a trade mark;
(b)	a certified extract from the register pertaining to a trade mark;
(c)	a certified copy of any form, pertaining to an application for registration, which was filed with the Registrar.”.

Amendment of rule 49

34. Rule 49 of the principal Rules is amended —

(a)

by deleting the words “not later than 6 months after” in paragraph (1) and substituting the words “not earlier than 6 months before, and not later than 6 months after,”;

(b)

by deleting paragraph (3) and substituting the following paragraph:

“(3) An application for the renewal of registration of a trade mark shall —

(a)	be in Form TM 19, if made on or before the date of expiry of the registration; or
(b)	be in Form TM 19 and be accompanied by the additional late payment fee, if made within 6 months after the date of expiry of the registration.”; and

(c)

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

“(5) To avoid doubt, the application for the renewal of the registration of the trade mark under paragraph (4) need not be accompanied by any additional late payment fee.”.

Amendment of rule 50A

35. Rule 50A of the principal Rules is amended by deleting paragraph (3).

Amendment of rule 53

36. Rule 53 of the principal Rules is amended —

(a)	by deleting the words “on Form TM 21 within 6 months from” in paragraph (1) and substituting the words “in Form TM 19 within 6 months after”; and
(b)	by deleting paragraphs (2), (2A) and (3A).

Amendment of rule 55

37. Rule 55 of the principal Rules is amended —

(a)

by deleting sub‑paragraphs (a) to (f) of paragraph (1) and substituting the following sub‑paragraphs:

“(a)	in the case of any assignment or transaction other than a transaction referred to in sub‑paragraphs (b) and (c), in Form CM8;
(b)	in the case of the grant, amendment or termination of a licence, in Form CM6;
(c)	in the case of the grant, amendment or termination of any security interest, in Form CM7;
(d)	in the case of the making by personal representatives of an assent in relation to a registered trade mark, an application for registration of a trade mark, or any right in or under a registered trade mark or an application for registration of a trade mark, in Form TM 20; or
(e)	in the case of an order of the Court or any other competent authority transferring a registered trade mark, an application for registration of a trade mark, or any right in or under a registered trade mark or an application for registration of a trade mark, by way of a written request accompanied by a copy of the order.”;

(b)

by deleting the words “paragraph (1)(f)” in paragraph (2)(b) and substituting the words “paragraph (1)(d)”;

(c)

by deleting the words “paragraph (1)(f)” in paragraph (2)(c) and substituting the words “paragraph (1)(e)”;

(d)

by deleting the word “certified” in paragraph (3A)(a)(i) and (v), (b)(iii), (c)(ii) and (d);

(e)

by deleting the words “a certified extract” in paragraph (3A)(a)(ii) and (b)(i) and substituting in each case the words “an extract”;

(f)

by deleting the words “paragraph (1)(c) or (d)” in paragraph (3A)(c) and substituting the words “paragraph (1)(b)”; and

(g)

by deleting paragraphs (4), (5A) and (6).

Amendment of rule 56

38. Rule 56 of the principal Rules is amended —

(a)	by deleting the words “on Form TM 27B” in paragraph (1) and substituting the words “in Form TM 27”; and
(b)	by deleting the word “from” in paragraph (4) and substituting the word “after”.

Amendment of rule 57

39. Rule 57 of the principal Rules is amended —

(a)

by deleting the words “on Form TM 28” in paragraph (1) and substituting the words “in Form TM 28”;

(b)

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

“(a)

in the case of an application by the proprietor of a registered trade mark to amend any information in the register relating to that trade mark —

(i)	in Form CM2, if the amendment pertains to the name or other particulars of the proprietor; or
(ii)	in Form TM 27, if sub‑paragraph (i) does not apply; or”;

(c)

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

“(2A) If an application for a declaration of invalidity is based on the ground that the registered trade mark is identical or similar to an earlier trade mark, the following shall be included in the statement for the purpose of determining whether the registered trade mark is identical or similar to the earlier trade mark:

(a)

a representation of the earlier trade mark;

(b)

such of the following as may be applicable:

(i)

where the earlier trade mark is registered —

(A)	its registration number; and
(B)	the class number and specification of the goods or services in respect of which the earlier trade mark is registered;

(ii)

where the application to register the earlier trade mark is pending —

(A)	the number accorded by the Registrar to the application; and
(B)	the class number and specification of the goods or services in respect of which the earlier trade mark is sought to be registered; or

(iii)

where the earlier trade mark is not registered and no application has been made to register it, the specification of the goods or services in respect of which the earlier trade mark is used.

(2B) If an application for a declaration of invalidity is based on the ground that the registered trade mark is identical or similar to an earlier trade mark which is well known in Singapore, the statement shall, in addition to the matters referred to in paragraph (2A), include the following information for the purpose of determining whether the earlier trade mark is well known in Singapore:

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

(d)

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 58

40. Rule 58 of the principal Rules is amended —

(a)

by deleting the words “2 months from” in paragraph (1) and substituting the words “2 months after”;

(b)

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

(c)

by deleting paragraph (3) and substituting the following paragraph:

“(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 —

(a)

file, together with the counter‑statement, a statutory declaration setting out —

(i)

evidence of the use by the proprietor of the trade mark in relation to the goods or services for which it is registered during the period of non‑use alleged by the applicant in Form TM 28;

(ii)

evidence supporting proper reasons for non‑use during the period of non‑use alleged by the applicant in Form TM 28;

(iii)

evidence of commencement or resumption of use of the trade mark in relation to the goods or services for which it is registered on a date which falls after the period of non‑use alleged by the applicant in Form TM 28, and before the 3‑month period immediately preceding the date of the application; or

(iv)

evidence of —

(A)	commencement or resumption of use of the trade mark in relation to the goods or services for which it is registered on a date which falls after the period of non‑use alleged by the applicant in Form TM 28, and within the 3‑month period immediately preceding the date of the application; and
(B)	the fact that the proprietor was unaware that the application might be made when the preparations for the commencement or resumption of use of the trade mark began; and

(b)

serve a copy of the statutory declaration on the applicant at the same time.”;

(d)

by deleting the words “in writing within 2 months from” in paragraph (4) and substituting the words “in Form HC3 within 2 months after”;

(e)

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

(f)

by deleting the words “rule 67” in paragraph (9)(b) and substituting the words “rule 67A”; and

(g)

by deleting paragraph (10) and substituting the following paragraphs:

“(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 or statutory declaration referred to in paragraph (3) has been filed or served on the applicant within the time allowed.

(11) In the case of an application for revocation on the ground referred to in section 22(1)(c) or (d) of the Act, the application shall be granted where no counter‑statement has been filed or served on the applicant within the time allowed.

(12) In the case of an application for a declaration of invalidity, the application shall be granted where no counter‑statement has been filed or served on the applicant within the time allowed.

(13) In the case of an application for the rectification of an error or omission in the register by a person, other than the proprietor of a registered trade mark, the application shall be granted where no counter‑statement has been filed or served on the applicant within the time allowed.”.

Amendment of rule 59

41. Rule 59 of the principal Rules is amended by deleting paragraph (1) and substituting the following paragraphs:

“(1) Upon an application being made under rule 57 on the ground referred to in section 22(1)(c) or (d) or 23 of the Act and a counter‑statement being filed under rule 58, rules 32 to 40 shall apply, with the necessary modifications referred to in paragraph (2)(a) to (d), to further proceedings on the application.

(1A) Upon an application being made under rule 57 on the ground referred to in section 22(1)(a) or (b) of the Act and a counter‑statement being filed under rule 58, the following provisions shall apply:

(a)

the applicant may, within 3 months after the date of receipt of the counter‑statement from the proprietor, file with the Registrar a statutory declaration setting out the evidence he wishes to adduce in support of his application;

(b)

where the applicant files a statutory declaration under sub‑paragraph (a), he shall, at the same time, send to the proprietor a copy of the statutory declaration;

(c)

if the applicant does not file any statutory declaration under sub‑paragraph (a), the Registrar shall notify the proprietor of this;

(d)

the proprietor may file with the Registrar a statutory declaration setting out evidence in support of his case additional to that already provided in the statutory declaration filed with his counter‑statement —

(i)	in the case where the applicant files a statutory declaration under sub‑paragraph (a), within 3 months after the date of receipt of the applicant’s statutory declaration; or
(ii)	in the case where the applicant does not file any statutory declaration under sub‑paragraph (a), within 2 months after the date of the Registrar’s notification referred to in sub‑paragraph (c);

(e)

where the proprietor files a statutory declaration under sub‑paragraph (d) —

(i)	the proprietor shall, at the same time, send to the applicant a copy of the statutory declaration; and
(ii)	the applicant may, within 3 months after the date of receipt of the proprietor’s statutory declaration, file with the Registrar a statutory declaration setting out any evidence in reply, such evidence being confined to matters strictly in reply to the proprietor’s statutory declaration under sub‑paragraph (d); and

(f)

rules 32(4) to (10), 33(4) to (10), 34(4) to (10) and 35 to 40 shall apply, with the necessary modifications referred to in paragraph (2)(a), (b) and (c), to any proceedings on the application.”.

Amendment of rule 60

42. Rule 60(1) of the principal Rules is amended by deleting the words “on Form TM 29” and substituting the words “in writing”.

Amendment of rule 61

43. Rule 61 of the principal Rules is amended —

(a)

by deleting paragraphs (1) and (2) and substituting the following paragraphs:

“(1) The proprietor may, by filing with the Registrar a notice in Form CM3 —

(a)	cancel the proprietor’s registered trade mark, if the cancellation relates to all of the goods or services in respect of which the trade mark is registered; or
(b)	cancel the registration of the proprietor’s registered trade mark in relation to at least one of the goods or services in respect of which the trade mark is registered.

(2) A notice under paragraph (1) shall have no effect unless the proprietor in that notice certifies that every other person (if any) having a right in the mark —

(a)	has been given not less than 3 months’ notice of the proprietor’s intention to cancel the mark; and
(b)	is not affected by the cancellation or if affected has no objection to the cancellation.”; and

(b)

by deleting the rule heading and substituting the following rule heading:

“Application to cancel registered trade mark or registration in relation to certain goods or services”.

Amendment of rule 62

44. Rule 62(3) of the principal Rules is amended by deleting the words “rule 9(9)(b)” and substituting the words “rule 9(4)(o)”.

Deletion and substitution of rule 63

45. Rule 63 of the principal Rules is deleted and the following rule substituted therefor:

“Filing of regulations

63. Within 9 months after the date of the application for the registration of a collective mark or certification mark, the applicant must file with the Registrar —

(a)	Form TM 10; and
(b)	a copy of the regulations governing the use of the mark.”.

Amendment of rule 64

46. Rule 64 of the principal Rules is amended —

(a)

by deleting the words “on Form TM 30” in paragraph (1) and substituting the words “in Form TM 10”; and

(b)

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

“(2) Form TM 10 shall be accompanied by a copy of the amended regulations with the amendments shown in red.”.

Amendment of rule 65

47. Rule 65(1) of the principal Rules is amended by deleting the word “from” and substituting the word “after”.

Amendment of rule 66

48. Rule 66 of the principal Rules is amended —

(a)	by deleting the words “on Form TM 30” in paragraph (1) and substituting the words “in Form TM 10”; and
(b)	by deleting the words “, and both shall be filed in duplicate” in paragraph (2).

Amendment of rule 66A

49. Rule 66A(1) of the principal Rules is amended by deleting the word “from” and substituting the word “after”.

Deletion and substitution of rule 67 and new rule 67A

50. Rule 67 of the principal Rules is deleted and the following rules substituted therefor:

“Registrar’s discretionary powers

67. 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

67A.—(1) A request for the exercise of the discretionary power of the Registrar under rule 67 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 67 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 67.

(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 his 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) For the purposes of paragraph (9), the Registrar’s decision must be one which is subject to appeal to the Court under section 75(2) of the Act.”.

Amendment of rule 72

51. Rule 72(1) of the principal Rules is amended by deleting the word “from” in sub‑paragraph (b) and substituting the word “after”.

Amendment of rule 73

52. Rule 73 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; and
(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 word “from” in paragraph (4) and substituting the word “after”.

Amendment of rule 75

53. Rule 75 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 76

54. Rule 76 of the principal Rules is deleted and the following rule substituted therefor:

“Certificate

76. 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 77

55. Rule 77 of the principal Rules is amended —

(a)

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 set out in the First Schedule.”;

(b)

by deleting the word “from” in paragraph (5) and substituting the word “after”;

(c)

by deleting the words “rule 67” in paragraph (5)(b) and substituting the words “rule 67A”;

(d)

by deleting sub‑paragraph (ab) of paragraph (6) and substituting the following sub‑paragraphs:

“(ab)	the filing of a counter‑statement in response to a notice of opposition to an amendment of an application for registration which has been published, under rule 31 read with rule 23(4);
(ac)	the filing of a request for the Registrar’s grounds of decision under rule 24(6)(a) or 67A(8)(a);”;

(e)

by deleting sub‑paragraph (e) of paragraph (6) and substituting the following sub‑paragraph:

“(e)	the doing of any act referred to in rule 49;”;

(f)

by deleting sub‑paragraphs (g) and (h) of paragraph (6); and

(g)

by inserting, immediately after paragraph (6), the following paragraphs:

“(7) This rule as in force immediately before 13 November 2014 shall continue to apply 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 77B

56. Rule 77B of the principal Rules is amended —

(a)

by deleting the words “on Form TM 40 and filed with the Registrar within 6 months from” in paragraph (2)(a) and substituting the words “in Form CM13 and filed with the Registrar within 6 months after”;

(b)

by deleting the words “, and shall state that” in paragraph (2)(b);

(c)

by deleting sub‑paragraph (F) of paragraph (5)(b)(ii) and substituting the following sub‑paragraph:

“(F)	the filing of Form HC5 under rule 24(6)(a) or 67A(8)(a); or”; and

(d)

by deleting sub‑paragraph (iii) of paragraph (5)(b) and substituting the following sub‑paragraph:

“(iii)

a failure to pay the fee for the renewal or restoration of the registration of a trade mark under rule 49(3) or (4) or 53, as the case may be.”.

Amendment of rule 78A

57. Rule 78A 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 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).

(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 the Registry under paragraph (2)(a);
(b)	the manner in which the Registrar or the 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 78B to 78E

58. Rules 78B to 78E of the principal Rules are deleted.

Deletion of rule 78G

59. Rule 78G of the principal Rules is deleted.

New rule 78I

60. The principal Rules are amended by inserting, immediately after rule 78H, the following rule:

“Service bureau

78I. 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 the Registry any document referred to in rule 78A(2)(a).”.

Amendment of rule 79

61. Rule 79(3) of the principal Rules is amended —

(a)	by deleting sub‑paragraph (a);
(b)	by deleting the words “rule 78A(2)(b)” in sub‑paragraph (b) and substituting the words “rule 78A(2)(a)”; and
(c)	by deleting the words “rule 78A(2)(c)” in sub‑paragraph (c) and substituting the words “rule 78A(2)(b)”.

Deletion of rule 81

62. Rule 81 of the principal Rules is deleted.

Amendment of rule 81A

63. The principal Rules are amended by renumbering rule 81A 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.”.

New rule 84

64. The principal Rules are amended by inserting, immediately after rule 83, the following rule:

“Correction of errors

84.—(1) A request for the correction of an error or a mistake must —

(a)	in the case of an error or a mistake referred to in section 14(3)(b) or (c) of the Act, be made in Form TM 27; or
(b)	in the case of an error or a mistake referred to in section 25(a) of the Act, 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 a 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)	rule 23;
(ii)	any of rules 29(2) to (8) and 31 to 37, as applied by rule 23(4);
(iii)	any of rules 29 to 37;
(iv)	rule 56(4);
(v)	any of rules 29(2) to (8) and 31 to 37, as applied by rule 56(6);
(vi)	rule 57 or 58;
(vii)	any of rules 32 to 37, as applied by rule 59;
(viii)	rule 60;
(ix)	rule 65 or 66A;
(x)	any of rules 29 to 37, as applied by rule 65(1);
(xi)	any of rules 29(3) to (8) and 31 to 37, as applied by rule 66A(3); or
(xii)	rule 67A(3) or (4), 72, 73, 76 or 77(1);

(b)

any form filed under rule 67A(1) or (8); or

(c)

any form filed for an application under rule 24(2)(b) or for a request under rule 24(6)(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.”.

Amendment of rule 86

65. Rule 86 of the principal Rules is amended —

(a)

by deleting paragraphs (1) and (2) and substituting the following paragraph:

“(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 a copy of the order with the Registrar.”; and

(b)

by deleting the word “The” in paragraph (3) and substituting the words “If the order is to rectify or alter the register, the”.

Amendment of rule 86A

66. Rule 86A(1) of the principal Rules is amended —

(a)	by deleting the words “rules 4(1), 23(1), 26(1), 47(2)” in sub‑paragraph (a) and substituting the words “rules 23(1), 26(1)”;
(b)	by inserting the word “and” at the end of sub‑paragraph (a); and
(c)	by deleting paragraph (b).

Amendment of rule 87

67. Rule 87 of the principal Rules is amended by deleting the word “from” in paragraphs (1) and (2) and substituting in each case the word “after”.

Deletion and substitution of First and Second Schedules

68. The First and Second Schedules to the principal Rules are deleted and the following Schedules substituted therefor:

“FIRST SCHEDULE

Rules 3 and 77(3)(c)

fees

First column
Matter

Second column
Corresponding
Rule(s)

Third column
Fee

Fourth column
Corresponding
Form(s)

1.	Application to register a trade mark, collective mark or certification mark filed by means of the electronic online system —

15, 62

Form TM 4

(a)	where the specification consists of goods or services included in one class in the Third Schedule

$341

(b)	where the specification consists of goods or services included in 2 or more classes in the Third Schedule

$341 × number of classes

2.	Application to register a trade mark, collective mark or certification mark filed by means other than the electronic online system —

15, 62

Form TM 4

(a)	where the specification consists of goods or services included in one class in the Third Schedule

$374

(b)	where the specification consists of goods or services included in 2 or more classes in the Third Schedule

$374 × number of classes

3.	Request to divide an application for registration of a trade mark made in respect of 2 or more goods or services (referred to in this item as the original application) into 2 or more separate applications, each in respect of one or more of those goods or services

17(2)

$280 for each additional application that the original application is divided into

Form TM 8

4.	Filing of regulations relating to a collective mark or certification mark

$340 in respect of each trade mark number

Form TM 10

5.	Filing of amended regulations, or amendment of regulations, relating to a collective mark or certification mark

64, 66

$70 in respect of each trade mark number

Form TM 10

6.	Application for renewal of registration of a trade mark filed —

49(3)(a) or (4)

Form TM 19

(a)	by means of the electronic online system

$250 × number of classes

(b)	by means other than the electronic online system

$270 × number of classes

7.	Late application for renewal of registration of a trade mark

49(3)(b)

$370 × number of classes

Form TM 19

8.	Application to restore a trade mark to the register

$400 × number of classes

Form TM 19

9.	Filing of statutory declaration

—

Form TM 23

10.	Application to amend an application for registration of a trade mark, or by a proprietor of a registered trade mark to rectify an error or omission in the register relating to that trade mark —

(a)

where the application is made in relation only to the alteration of a registered trade mark as is permitted under section 20 of the Act, or any matter other than the name or other particulars of the applicant or proprietor, the class number or specification of any goods or services, or the particulars of any claim to a right of priority

22(1)(c), 56(1), 57(1A)(a)(ii)

$40 in respect of each trade mark number

Form TM 27

(b)	where the application is made —

22(1)(c), 56(1), 57(1A)(a)(ii)

(i)	in relation only to the class number or specification of any goods or services, or the particulars of any claim to a right of priority; or

$40 × number of classes

Form TM 27

(ii)	in relation to the class number or specification of any goods or services, or the particulars of any claim to a right of priority, and in relation to any matter other than the name or other particulars of the applicant or proprietor

$40 × number of classes

Form TM 27

11.	Request to enter a disclaimer or limitation in the register

$35 in respect of each trade mark number

Form TM 27

12.	Request to appoint, change or remove agent

10(5) or (7)

$8.50 in respect of each trade mark number

Form CM1

13.	Application to change agent’s name appearing on the register

10(6)

$8.50 in respect of each trade mark number

Form CM2

14.	Application to change name, address or address for service or entry of address for service

9(7), 44(1) or (4), 57(1A)(a)(i)

$13

Form CM2

15.	Application for cancellation of a trade mark —

61(1)

(a)	where the cancellation relates to all the goods or services in respect of which the trade mark is registered

$30 in respect of each trade mark number

Form CM3

(b)	where the cancellation relates to some of the goods or services in respect of which the trade mark is registered

$30 in respect of each trade mark number

Form CM3

16.	Request for correction of error or mistake referred to in section 25(a) of the Act

84(1)(b)

$50

Form CM4

17.	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 —

77(3)

Form CM5

(a)	for first or second extension of that period

—

(b)	for third or any subsequent extension of that period

$50

18.	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 —

77(3)

Form HC3

(a)	for first extension of that period

—

(b)	for second or any subsequent extension of that period

$100

19.	Application to register the grant, amendment or termination of a licence

55(1)(b)

$60 in respect of each trade mark number

Form CM6

20.	Application to register the grant, amendment or termination of any security interest

55(1)(c)

$50 in respect of each trade mark number

Form CM7

21.	Application to register —

(a)	any assignment or transaction other than the grant, amendment or termination of a licence or any security interest

55(1)(a)

$70 in respect of each trade mark number

Form CM8

(b)	the making of an assent by personal representatives in relation to a registered trade mark, an application for registration of a trade mark, or any right in or under a registered trade mark or an application for registration of a trade mark

55(1)(d)

$50 in respect of each trade mark number

Form TM 20

(c)	an order of the Court or any other competent authority transferring a registered trade mark, an application for registration of a trade mark, or any right in or under a registered trade mark or an application for registration of a trade mark

55(1)(e)

—

22.	Request for withdrawal of an application for registration

21A

—

Form CM9

23.	Filing of a copy of an order of the Court or any other competent authority

55(1)(e), 86

—

24.	Request for certified copy of entry in register, certified extract from register or certified copy of form pertaining to application for registration —

(a)	where the certified copy or extract or document is in hard copy

$35 in respect of each certified copy or extract or document

Form CM12

(b)	where the certified copy or extract or document is in soft copy

$28

Form CM12

25.	Request for reinstatement of application, right or thing

77B(2)

$100 in respect of each trade mark number

Form CM13

26.	Filing of notice of opposition to —

(a)	an amendment of an application for registration of a trade mark which has been published, where the amendment affects the goods or services covered by the application for registration

23(2)

$374 × number of classes

Form TM 11

(b)	the registration of a trade mark, collective mark or certification mark

29(1) read with 65(1)

$374 × number of classes

Form TM 11

(c)	the removal of any matter from the register

46(2) or (3)

$374 × number of classes

Form TM 11

(d)	the alteration of a registered trade mark

56(4)

$374 × number of classes

Form TM 11

(e)	an application to amend the regulations governing the use of a registered collective mark or certification mark

66A(1)

$374 × number of classes

Form TM 11

27.	Application for the revocation, or a declaration of invalidity, of the registration of a trade mark, or by any person other than the proprietor of a registered trade mark for the rectification of an error or omission in the register relating to that trade mark

57(1) or (1A)(b)

$357 × number of classes

Form TM 28

28.	Request for an extension of time to file notice of opposition

29(3), 29(3) read with 23, 56(6), 65(1) or 66A(3)

—

Form TM 48

29.	Filing of notice of attendance at hearing

37(3), 37(3) read with 23(4), 56(6), 59, 65(1) or 66A(3)

$715 × number of classes

Form HC1

30.	Issue by Registrar of a certificate as to amount of taxed costs

$80 × number of classes

Form HC2

31.	Request for an extension of time

32(6), 33(6), 34(6)

$100 × number of classes

Form HC3

32.	Request for ex parte hearing

24(3), 67A(1)

$100 in respect of each trade mark number

Form HC4

33.	Request for grounds of decision for ex parte hearing

24(6)(a), 67A(8)(a)

$700 in respect of each trade mark number

Form HC5

34.	Filing of a counter‑statement to —

(a)	a notice of opposition to the registration of a trade mark, collective mark or certification mark

31(1), 31(1) read with 65(1)

$360 × number of classes

Form HC6

(b)	an application to alter a registered trade mark

31(1) read with 56(6)

$360 × number of classes

Form HC6

(c)	an application for revocation, or a declaration of invalidity of a registration, or for rectification of register

58(1)

$360 × number of classes

Form HC6

(d)	an application to amend the regulations governing the use of a registered collective mark or certification mark

31(1) read with 66A(3)

$360 × number of classes

Form HC6

35.	For using the services of a service bureau to file any of the following by means of the electronic online system:

78I

(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

—

36.	Request to make any entry in the register, or to rectify any entry therein, for which no fee is expressly provided

—

37.	For certifying office copies, manuscripts or printed matter

—

$12

—

38.	Purchase of a copy of the Trade Marks Journal

86A

$12

—

SECOND SCHEDULE

Rule 4(4)

description of forms

First column
Form

Second column
Description of Form

Form TM 4

Application to register a trade mark, collective mark or certification mark

Form TM 8

Request to divide an application for registration

3.	Form TM 10

Filing or amendment of regulations governing the use of a collective mark or certification mark

4.	Form TM 11

Notice of opposition

5.	Form TM 19

Application for renewal or restoration of registration

6.	Form TM 20

Assent by personal representative

7.	Form TM 23

Statutory declaration

8.	Form TM 27

Application to amend a trade mark application or registration (excluding the change of name, address or address for service)

9.	Form TM 28

Application for revocation, invalidation or rectification

10.	Form TM 48

Request for extension of time to file notice of opposition

11.

Form CM1

Request to appoint, change or remove agent

12.

Form CM2

Request to change name, address and Singapore address for service of agent, applicant, proprietor or other interested person

13.

Form CM3

Request to cancel a registered trade mark, or to cancel registration of trade mark in relation to specified goods or services

14.

Form CM4

Request for correction of error

15.

Form CM5

Request for extension of time

16.

Form CM6

Application to register, amend or terminate licence

17.

Form CM7

Application to register, amend or terminate security interest

18.

Form CM8

Application to register transfer of ownership

19.

Form CM9

Request for withdrawal of application

20.

Form CM12

Request for certified copy of entry in register, certified extract from register or certified copy of form pertaining to application for registration

21.

Form CM13

Request for reinstatement of rights

22.

Form HC1

Notice of attendance at hearing

23.

Form HC2

Request to extract Registrar’s certificate of taxation

24.

Form HC3

Request for extension of time

25.

Form HC4

Request for ex parte hearing

26.

Form HC5

Request for grounds of decision for ex parte hearing

27.

Form HC6

Counter‑statement

”.

Amendment of Fourth Schedule

69. 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

70.—(1) Rule 10 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 form filed before 13 November 2014 under rule 16(6) of the principal Rules as in force immediately before that date to substitute the representation of a trade mark shall on or after that date be treated as filed under rule 16(6) of the principal Rules as in force on or after that date.

(3) Any notice for the withdrawal of an application for registration of a trade mark referred to in section 5 of the Act made to the Registrar in writing before 13 November 2014 shall on or after that date be treated as given under rule 21A of the principal Rules as in force on or after that date.

(4) Rule 22(1) 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 amend an application for registration, which was made under that provision before that date.

(5) Any application made before 13 November 2014 to the Registrar for a hearing under rule 24(2)(b) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 24(2)(b) of the principal Rules as in force on or after that date.

(6) Rule 24(2A) 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 an extension of time to do any act referred to in that provision, which was made under that provision before that date.

(7) Rule 24(6) 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 before that date.

(8) Rule 30(2) and (3) of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to every statement which was filed with a notice of opposition before that date.

(9) Any counter‑statement filed before 13 November 2014 under rule 31(1) of the principal Rules as in force immediately before that date shall on or after that date be treated as filed under rule 31(1) of the principal Rules as in force on or after that date.

(10) Any request for an extension of time to file a counter‑statement made by an applicant to the Registrar before 13 November 2014 under rule 31(4) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 31(4) of the principal Rules as in force on or after that date.

(11) Any request by an opponent for an extension of time to file a statutory declaration made to the Registrar before 13 November 2014 under rule 32(4) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 32(4) of the principal Rules as in force on or after that date.

(12) Any request by an opponent for a further extension of time to file a statutory declaration made to the Registrar before 13 November 2014 under rule 32(6) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 32(6) of the principal Rules as in force on or after that date.

(13) Any request by an applicant for an extension of time to file his statutory declaration made before 13 November 2014 under rule 33(4) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 33(4) of the principal Rules as in force on or after that date.

(14) Any request by an applicant for a further extension of time to file his statutory declaration made before 13 November 2014 under rule 33(6) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 33(6) of the principal Rules as in force on or after that date.

(15) Any request by an opponent for an extension of time to file his statutory declaration setting out his evidence in reply made before 13 November 2014 under rule 34(4) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 34(4) as in force on or after that date.

(16) Any request by an opponent for a further extension of time to file his statutory declaration setting out his evidence in reply made before 13 November 2014 under rule 34(6) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 34(6) of the principal Rules as in force on or after that date.

(17) Any form filed before 13 November 2014 under rule 37(3) of the principal Rules as in force immediately before that date by any party who intends to appear at a hearing shall on or after that date be treated as filed under rule 37(3) of the principal Rules as in force on or after that date.

(18) Any disclaimer or limitation filed before 13 November 2014 under rule 43 of the principal Rules as in force immediately before that date by a proprietor of a registered trade mark shall on or after that date be treated as filed under rule 43 of the principal Rules as in force on or after that date.

(19) Any application made before 13 November 2014 under rule 44(1) of the principal Rules as in force immediately before that date, by any person referred to in that provision to change his name or address appearing in the register, shall on or after that date be treated as made under rule 44(1) of the principal Rules as in force on or after that date.

(20) Any request made before 13 November 2014 under rule 44(4) of the principal Rules as in force immediately before that date, by any person to change his address for service in the register, shall on or after that date be treated as made under rule 44(4) of the principal Rules as in force on or after that date.

(21) Rule 48 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to every request, which was made to the Registrar for a copy of or extract from, the register under that rule before that date.

(22) Any application for the renewal of registration of a trade mark made before 13 November 2014 under rule 49(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 49(3)(b) of the principal Rules as in force on or after that date.

(23) Rule 50A(3) of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any request for an extension of time, which was made by an applicant to the Registrar under that provision before that date.

(24) Any application for restoration of a trade mark which has been removed from the register, made before 13 November 2014 under rule 53(1) of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 53(1) of the principal Rules as in force on or after that date.

(25) Rule 53(3A) of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any request for an extension of time, which was made by an applicant with the Registrar under that rule before that date.

(26) Any —

(a)	application to register particulars of a transaction to which section 39 of the Act applies; or
(b)	notice to the Registrar of particulars of a transaction to which section 41 of the Act applies,

if made or given before 13 November 2014 under rule 55(1) of the principal Rules as in force immediately before that date, shall on or after that date be treated as made or given under rule 55(1) of the principal Rules as in force on or after that date.

(27) Rule 55(5A) of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any request for an extension of time, which was made by an applicant with the Registrar under that provision before that date.

(28) Any application by a proprietor of a registered trade mark made before 13 November 2014 for such alteration of his trade mark as is permitted under section 20 of the Act, under rule 56(1) of the principal Rules as in force immediately before that date, shall on or after that date be treated as made under rule 56(1) of the principal Rules as in force on or after that date.

(29) Rule 57 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any of the following which was made under that rule before that date:

(a)	an application for the revocation of the registration of a trade mark under section 22 of the Act;
(b)	an application for a declaration of invalidity of the registration of a trade mark under section 23 of the Act;
(c)	an application for an amendment of any information in the register relating to a trade mark.

(30) Rule 58 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any counter‑statement which was filed with the Registrar under that rule before that date.

(31) Rule 59 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to further proceedings with respect to a counter‑statement which was filed under rule 58 before that date.

(32) Any application for leave to intervene made before 13 November 2014 under rule 60 of the principal Rules as in force immediately before that date shall on or after that date be treated as made under rule 60 of the principal Rules as in force on or after that date.

(33) Any notice to cancel a registered trade mark given by a proprietor of a trade mark to the Registrar before 13 November 2014 under rule 61 of the principal Rules as in force immediately before that date shall on or after that date be treated as given under rule 61 of the principal Rules as in force on or after that date.

(34) Any amended regulations filed before 13 November 2014 under rule 64 of the principal Rules as in force immediately before that date shall on or after that date be treated as filed under rule 64 of the principal Rules as in force on or after that date.

(35) Any notice to oppose an application for registration of a collective mark or certification mark given to the Registrar before 13 November 2014 under rule 66 of the principal Rules as in force immediately before that date shall on or after that date be treated as given under rule 66 of the principal Rules as in force on or after that date.

(36) Rules 73 and 75 of, and the Fourth Schedule to, the principal Rules as in force immediately before 13 November 2014 shall continue to apply 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.

(37) Any form filed before 13 November 2014 in relation to the issue of a certificate by the Registrar under rule 76 of the principal Rules as in force immediately before that date shall on or after that date be treated as filed under rule 76 of the principal Rules as in force on or after that date.

(38) Rule 77B of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any request for the reinstatement of any application, right or thing, which was made under that rule before that date.

(39) Rule 81 of the principal Rules as in force immediately before 13 November 2014 shall continue to apply on or after that date to any form which was filed under that rule before that date in relation to a certificate referred to in section 103 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.

[G.N. Nos. S 598/2008; S 588/2011; S 761/2013]

Made on 10 November 2014.

BEH SWAN GIN

Permanent Secretary,
Ministry of Law,
Singapore.

[LAW 06/011/024; AG/LLRD/SL/332/2011/2 Vol. 5]

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