No. S 852
Trade Marks Act
(Chapter 332)
Trade Marks (Amendment) Rules 2005
In exercise of the powers conferred by section 108 of the Trade Marks Act, the Minister for Law, after consulting with the Intellectual Property Office of Singapore, hereby makes the following Rules:
Citation and commencement
1.  These Rules may be cited as the Trade Marks (Amendment) Rules 2005 and shall come into operation on 1st January 2006.
Deletion and substitution of rule 7
2.  Rule 7 of the Trade Marks Rules (R 1) (referred to in these Rules as the principal Rules) is deleted and the following rule substituted therefor:
“Service of documents
7.—(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; or
(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.
(2)  Where the Act or these Rules authorise or require any document to be given or sent to or served on any party other than the Registrar or Registry, the giving, sending or service may be effected on that party by sending the document by post.
(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; or
(b)by sending the notice or other document by facsimile transmission.
(4)  Where any notice or other document is sent by post under paragraph (2) or (3), the giving, sending or service, as the case may be, of the notice or other document shall, until the contrary is proved, be treated as having been effected at the time at which the document would have been delivered in the ordinary course of post.
(5)  For the purposes of paragraphs (2) and (3), a notice or other document is sent to a party by post if the notice or other document is sent by pre-paid post to the party at his address for service referred to in rule 9 or 10.
(6)  Where any person has attempted to send any document by facsimile transmission under paragraph (1) —
(a)if any part or all of the document received by the Registrar or Registry is illegible or if any part of the document is not received by the Registrar or Registry, the document shall be treated as not having been submitted; and
(b)the burden of proving the legibility and completeness of the document lies with the person who has attempted to send the document.
(7)  Paragraph (1)(b) shall not apply to the following matters:
(a)the filing of a request for an extension of time to file a notice of opposition under rule 29(3);
(b)the filing of a statutory declaration under rule 32(1), 33(1) or 34(1).”.
Amendment of rule 9
3.  Rule 9 (4) of the principal Rules is amended —
(a)by deleting the words “Form TM 4, TM 9, TM 19 , TM 22 or TM 24” in sub-paragraph (a) and substituting the words “Form TM 4 or TM 22”;
(b)by deleting the word “and” at the end of sub-paragraph (a);
(c)by deleting “TM 14,” in sub-paragraph (b); and
(d)by deleting the full-stop at the end of sub-paragraph (b) and substituting the word “; and”, and by inserting immediately thereafter the following sub-paragraph:
“(c)where the address for service is filed on Form TM 19 or TM 24, the filing of the address for service shall be effective for the purposes of all renewal applications or proceedings in respect of the trade mark in relation to which that form is filed.”.
Deletion and substitution of rule 21
4.  Rule 21 of the principal Rules is deleted and the following rule substituted therefor:
“Deficiencies in application
21.—(1)  Where an application for registration of a trade mark does not satisfy any requirement under section 5(2) or (3) of the Act, the Registrar may send the applicant a notice requiring the applicant to remedy the deficiency.
(2)  Where the Registrar has sent the applicant a notice under paragraph (1), the applicant shall remedy all deficiencies set out in the notice within 2 months from the date of the notice.
(3)  In accordance with section 5(4) of the Act, an application for registration of a trade mark shall not be treated as made unless —
(a)all the requirements under section 5(2) of the Act have been satisfied; and
(b)all the fees payable under section 5(3) of the Act —
(i)have been paid; or
(ii)are treated by the Registrar as paid.
(4)  Subject to paragraph (1), where an application for registration does not comply with rule 15(1) or 19(2)(a), the Registrar shall send the applicant a notice requiring the applicant to remedy the deficiency.
(5)  If the applicant fails to remedy all deficiencies set out in the notice under paragraph (4) within 2 months from the date of the notice, the application shall be treated as withdrawn.”.
Amendment of rule 22
5.  Rule 22 of the principal Rules is amended by deleting paragraph (3A).
Amendment of rule 24
6.  Rule 24 of the principal Rules is amended by deleting paragraphs (1), (2) and (2A) and substituting the following paragraphs:
“(1)  If, in the course of an examination of an application for registration, it appears to the Registrar that the requirements for registration are not met or that additional information or evidence is required to meet those requirements, the Registrar shall give a written notice of this to the applicant.
(2)  If, within 4 months from the date of the written notice of the Registrar, the applicant fails to —
(a)make representations in writing;
(b)apply to the Registrar for a hearing;
(c)apply to amend the application; or
(d)furnish the additional or any other information or evidence,
the application shall be treated as withdrawn.
(2A)  If the applicant wishes to have an extension of time to do any act referred to in paragraph (2)(a), (b), (c) or (d), he shall file with the Registrar a request for extension in Form TM 49 before the expiry of —
(a)the period of 4 months; or
(b)any extended period previously allowed by the Registrar,
whichever is the later.”.
Deletion and substitution of rules 32, 33 and 34
7.  Rules 32, 33 and 34 of the principal Rules are deleted and the following rules substituted therefor:
“Evidence in support of opposition
32.—(1)  Within 2 months from the date of receipt of the counter-statement from the applicant, the opponent shall file with the Registrar a statutory declaration setting out the evidence he wishes to adduce in support of his opposition.
(2)  When the opponent files his statutory declaration with the Registrar, the opponent shall, at the same time, send to the applicant a copy of the statutory declaration.
(3)  If the opponent fails to comply with paragraph (1) or (2), he shall be treated as having withdrawn his opposition.
(4)  Subject to paragraph (6), a request by the opponent for an extension of time to file the statutory declaration shall be made to the Registrar in writing within 2 months from the date of receipt of the counter-statement from the applicant.
(5)  The extension of time which the Registrar may allow to file the statutory declaration pursuant to a request under paragraph (4) shall not exceed 6 months from the date of receipt of the counter-statement from the applicant.
(6)  A request by the opponent for a further extension of time to file the statutory declaration shall be made to the Registrar by filing Form TM 50 before the expiry of the last extended period allowed by the Registrar under this rule.
(7)  Before making any request for an extension of time under paragraph (4) or (6), the opponent shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —
(a)a statement of the opponent’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)a request for the consent of the applicant or other person to the extension.
(8)  A request for an extension of time under paragraph (4) or (6) shall be supported by a copy of the notice referred to in paragraph (7) and the consent in writing, if this is given.
(9)  The Registrar may refuse to grant the extension —
(a)if the opponent fails to show a good and sufficient reason for the extension; or
(b)if the opponent fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (7) has been served on the applicant and every person likely to be affected by the extension.
(10)  Where a person on whom a notice referred to in paragraph (7) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —
(a)the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and
(b)the Registrar may do so without having to conduct a hearing in accordance with rule 67.
Evidence in support of application
33.—(1)  Within 2 months from the date of receipt by the applicant of the copy of the opponent’s statutory declaration referred to in rule 32, the applicant shall file with the Registrar a statutory declaration setting out the evidence he wishes to adduce in support of his application.
(2)  When the applicant files his statutory declaration with the Registrar, the applicant shall, at the same time, send to the opponent a copy of the statutory declaration.
(3)  If the applicant fails to comply with paragraph (1) or (2), he shall be treated as having withdrawn his application.
(4)  Subject to paragraph (6), a request by the applicant for an extension of time to file his statutory declaration shall be made to the Registrar in writing within 2 months from the date of receipt by the applicant of the copy of the opponent’s statutory declaration referred to in rule 32.
(5)  The extension of time which the Registrar may allow to file the applicant’s statutory declaration pursuant to a request under paragraph (4) shall not exceed 6 months from the date of receipt by the applicant of the copy of the opponent’s statutory declaration.
(6)  A request by the applicant for a further extension of time to file his statutory declaration shall be made to the Registrar by filing Form TM 50 before the expiry of the last extended period allowed by the Registrar under this rule.
(7)  Before making any request for an extension of time under paragraph (4) or (6), the applicant shall serve a notice on the opponent and every other person likely to be affected by the extension, which shall contain —
(a)a statement of the applicant’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)a request for the consent of the opponent or other person to the extension.
(8)  A request for an extension of time under paragraph (4) or (6) shall be supported by a copy of the notice referred to in paragraph (7) and the consent in writing, if this is given.
(9)  The Registrar may refuse to grant the extension —
(a)if the applicant fails to show a good and sufficient reason for the extension; or
(b)if the applicant fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (7) has been served on the opponent and every person likely to be affected by the extension.
(10)  Where a person on whom a notice referred to in paragraph (7) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —
(a)the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and
(b)the Registrar may do so without having to conduct a hearing in accordance with rule 67.
Evidence in reply by opponent
34.—(1)  Within 2 months from the date of receipt by the opponent of the copy of the applicant’s statutory declaration referred to in rule 33, the opponent shall file with the Registrar a statutory declaration setting out his evidence in reply.
(2)  If the opponent files a statutory declaration setting out his evidence in reply with the Registrar, the opponent shall, at the same time, send to the applicant a copy of the statutory declaration.
(3)  The opponent’s statutory declaration under paragraph (1) shall be confined to matters strictly in reply to the applicant’s statutory declaration referred to in rule 33.
(4)  Subject to paragraph (6), a request by the opponent for an extension of time to file his statutory declaration setting out his evidence in reply shall be made to the Registrar in writing within 2 months from the date of receipt by the opponent of the copy of the applicant’s statutory declaration referred to in rule 33.
(5)  The extension of time which the Registrar may allow to file the opponent’s statutory declaration pursuant to a request under paragraph (4) shall not exceed 6 months from the date of receipt by the opponent of the copy of the applicant’s statutory declaration.
(6)  A request by the opponent for a further extension of time to file his statutory declaration setting out his evidence in reply shall be made to the Registrar by filing Form TM 50 before the expiry of the last extended period allowed by the Registrar under this rule.
(7)  Before making any request for an extension of time under paragraph (4) or (6), the opponent shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —
(a)a statement of the opponent’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)a request for the consent of the applicant or other person to the extension.
(8)  A request for an extension of time under paragraph (4) or (6) shall be supported by a copy of the notice referred to in paragraph (7) and the consent in writing, if this is given.
(9)  The Registrar may refuse to grant the extension —
(a)if the opponent fails to show a good and sufficient reason for the extension; or
(b)if the opponent fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (7) has been served on the applicant and every person likely to be affected by the extension.
(10)  Where a person on whom a notice referred to in paragraph (7) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —
(a)the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and
(b)the Registrar may do so without having to conduct a hearing in accordance with rule 67.”.
Amendment of rule 50
8.  Rule 50 of the principal Rules is amended by deleting paragraph (2) and substituting the following paragraph:
“(2)  Subject to paragraph (3), where a trade mark is registered —
(a)within 6 months before; or
(b)after,
the date on which it becomes due for renewal by reference to the date of the application for its registration, the Registrar shall, within one month after the actual date of its registration, send a notice in writing to the proprietor —
(i)where an application for the renewal of registration of the trade mark has previously been made in accordance with rule 49, at the address for service as indicated in the application; or
(ii)in any other case, at the proprietor’s address for service,
notifying him of the date of expiry of its registration.”.
Amendment of rule 62
9.  Rule 62 of the principal Rules is amended by deleting paragraph (4).
Amendment of rule 65
10.  Rule 65 of the principal Rules is amended —
(a)by deleting the words “Form TM 14” in paragraph (1) and substituting the words “Form TM 11”; and
(b)by deleting paragraph (2).
Amendment of rule 66A
11.  Rule 66A of the principal Rules is amended —
(a)by deleting the words “Form TM 14” in paragraph (1)(a) and substituting the words “Form TM 11”;
(b)by inserting, at the end of paragraph (4)(d), the word “and”;
(c)by deleting the word “; and” at the end of paragraph (4)(e) and substituting a full-stop; and
(d)by deleting sub-paragraph (f) of paragraph (4).
Deletion and substitution of heading to Part XI
12.  Part XI of the principal Rules is amended by deleting the Part heading and substituting the following Part heading:
“EXTENSION OF TIME AND RESTORATION OF APPLICATIONS TREATED AS WITHDRAWN”.
Amendment of rule 77
13.  Rule 77 (6) of the principal Rules is amended —
(a)by deleting sub-paragraph (a) and substituting the following sub-paragraph:
“(a)the remedying of a deficiency under rule 21;”;
(b)by inserting, immediately after sub-paragraph (aa), the following sub-paragraph:
“(ab)the doing of any act referred to in rule 24 (2)(a), (b), (c) or (d);”;
(c)by inserting, immediately after sub-paragraph (c), the following sub-paragraph:
“(ca)the filing of any statutory declaration under rule 32, 33 or 34;”; and
(d)by inserting, immediately after sub-paragraph (o), the following sub-paragraph:
“(oa)the filing of an application under rule 77B (2) for the restoration of an application treated as withdrawn;”.
New rule 77B
14.  The principal Rules are amended by inserting, immediately after rule 77A, the following rule:
“Restoration of applications treated as withdrawn
77B.—(1)  Where an application is treated as withdrawn under —
(a)rule 9(6)(a), 21(5), 24(2) or 50A(2);
(b)rule 6(3) or 7(3A) of the First Schedule to the Act; or
(c)rule 7(3) or 8(3A) of the Second Schedule to the Act,
by reason that the applicant has failed to do any act on time, the Registrar shall send the applicant a notice notifying the applicant of that fact.
(2)  An application for the restoration of an application referred to in paragraph (1) —
(a)shall be filed with the Registrar in Form TM 40 within 3 months from the date of the notice under paragraph (1);
(b)shall not be made unless, and shall state that, the applicant’s delay in doing the act referred to in paragraph (1) was unintentional; and
(c)where that act involves the filing of any document or thing, shall be accompanied by —
(i)that document or thing; or
(ii)a request for an extension of time to file that document or thing.
(3)  Subject to paragraph (4), where an application is made under paragraph (2) for the restoration of an application referred to in paragraph (1), the Registrar shall allow the restoration unless there is a good and sufficient reason not to allow the restoration.
(4)  The Registrar shall not allow the restoration of an application referred to in paragraph (1) unless paragraph (2) is complied with.”.
Amendment of rule 78A
15.  Rule 78A (2) of the principal Rules is amended by deleting the words “, 55 (1) (a) and (5A) and 62 (4)” and substituting the words “and 55 (1) (a) and (5A)”.
Amendment of rule 78B
16.  Rule 78B of the principal Rules is amended —
(a)by deleting paragraph (1) and substituting the following paragraph:
“(1)  Any person who desires to make use of the electronic online system to —
(a)carry out any transaction referred to in rule 78A (2); and
(b)make payment through Interbank GIRO for that transaction,
shall, in accordance with the procedures set out in practice directions issued by the Registrar, apply to the Registrar to be registered as an account holder.”; and
(b)by deleting the words “of agent” in the rule heading.
Amendment of rule 79
17.  Rule 79 of the principal Rules is amended by inserting, immediately after paragraph (6), the following paragraphs:
“(6A)  Subject to paragraph (6) of rule 7, where a document referred to in that paragraph —
(a)is transmitted to the Registrar or Registry by means of facsimile transmission; and
(b)is received —
(i)by any facsimile machine designated by the Registry for the receipt of such transmissions; and
(ii)at any time before midnight on any day which is not an excluded day for the business of sending to or filing with the Registry that document by means of facsimile transmission,
that document shall be treated as sent to or filed with, and received by, the Registry at that time and on that day.
(6B)  For the purposes of paragraph (6A) —
(a)a document shall be treated as sent to or filed with, and received by, the Registry if and only if all sheets comprising the complete document are received by the facsimile machine referred to in that paragraph; and
(b)the date and time of receipt of the document, as recorded by the facsimile machine referred to in that paragraph, shall, until the contrary is proved, be treated as the date and time when the document was sent to or filed with, and received by, the Registry.”.
Amendment of rule 80A
18.  Rule 80A of the principal Rules is amended —
(a)by deleting paragraph (1) and substituting the following paragraph:
“(1)  Where, on any day, there is an interruption in —
(a)the postal service of Singapore;
(b)the operation of the Registry; or
(c)the operation of the electronic online system,
the Registrar may issue practice directions to declare that day as one on which there has been an “interruption” and, where any period of time specified in the Act or these Rules for the giving, sending, filing or serving of any notice, application or other document expires on a day so declared, the period shall be extended to the first day next following (not being an excluded day) which is not so declared.”; and
(b)by deleting paragraph (2).
Amendment of First Schedule
19.  The First Schedule to the principal Rules is amended —
(a)by deleting items 2 and 2A and substituting the following items:
“
2. Application to register a trade mark, collective mark or certification mark filed other than by means of the electronic online system —
 
15 (1), 62
 
 
 
4
(a) where the specification consists of goods or services included in one class in the Third Schedule
 
 
 
$340
 
 
(b) where the specification consists of goods or services included in more than one class in the Third Schedule
 
 
 
$340 x number of classes
 
 
2A. Application to register a trade mark, collective mark or certification mark filed by means of the electronic online system —
 
15(1), 62
 
 
 
4
(a) where the specification consists of goods or services included in one class in the Third Schedule
 
 
 
$310
 
 
(b) where the specification consists of goods or services included in more than one class in the Third Schedule
 
 
 
$310 x number of classes
 
 
”;
(b)by deleting “$40” under the heading “Fee” in item 3 and substituting “$44”;
(c)by deleting item 7 and substituting the following item:
“
7. Filing of notice of opposition to —
 
23 (2), 29 (1), 46 (2) and (3), 56 (4), 65, 66A
 
$340 for each notice of opposition
 
11
(a) an amendment of an application for registration of a trade mark which has been published, where the amendment affects the representation of the trade mark or the goods or services covered by the application for registration
 
 
 
 
 
 
(b) the registration of a trade mark, collective mark or certification mark
 
 
 
 
 
 
(c) the removal of any matter from the register
 
 
 
 
 
 
(d) the alteration of a registered trade mark
 
 
 
 
 
 
(e) an application to amend the regulations governing the use of a registered collective mark or certification mark
 
 
 
 
 
 
”;
(d)by deleting items 9, 10 and 11 and substituting the following item:
“
9. Filing of a counter-statement to —
 
31, 56 (5), 58 (1), 65, 66A (3)
 
$325 for each counter-statement
 
12
(a) a notice of opposition to the registration of a trade mark, collective mark or certification mark
 
 
 
 
 
 
(b) an application to alter a registered trade mark
 
 
 
 
 
 
(c) an application for revocation or a declaration of invalidity of a registration, or for rectification of register
 
 
 
 
 
 
(d) an application to amend the regulations governing the use of a registered collective mark or certification mark
 
 
 
 
 
 
”;
(e)by deleting item 12 and substituting the following item:
“
12. Filing of notice of attendance at hearing
 
37 (3), 56 (5), 59, 65 (1), 66A (3)
 
$650
 
13
”;
(f)by deleting “$80” under the heading “Fee” in item 17 and substituting “$88”.
(g)by deleting items 28 and 28A;
(h)by deleting “—” under the heading “Fee” in item 29 and substituting “$340”;
(i)by deleting items 31, 32 and 33;
(j)by deleting “$30” under the heading “Fee” in item 35 and substituting “$32”; and
(k)by inserting, immediately after item 46, the following items:
“
47. Request for an extension of time to file statutory declaration under rule 32(6), 33 (6) or 34 (6)
 
32 (6), 33 (6) and 34 (6)
 
$100 in respect of each trade mark
 
50
48. Request for restoration of application treated as withdrawn
 
77B (2)
 
$130
 
40
”.
Amendment of Second Schedule
20.  The Second Schedule to the principal Rules is amended —
(a)by deleting the item relating to Form TM 4 and substituting the following item:
“
TM 4
 
Application to Register a Trade Mark, Collective Mark or Certification Mark
”;
(b)by deleting the items relating to Forms TM 9, TM 14, TM 15 and TM 16;
(c)by inserting, immediately after the item relating to Form TM 39, the following item:
“
TM 40
 
Request for Restoration of Application Treated as Withdrawn
”;
(d)by inserting, immediately after the item relating to Form TM 49, the following item:
“
TM 50
 
Request for Extension of Time to File Statutory Declaration under Rule 32(6), 33 (6) or 34 (6)
”; and
(e)by deleting “17, 25, 36, 40,” in the “Note” at the end of the Schedule and substituting “9, 14, 15, 16, 17, 25, 36,”.
Deletion and substitution of Fourth Schedule
21.  The Fourth Schedule to the principal Rules is deleted and the following Schedule substituted therefor:
“FOURTH SCHEDULE
Rule 75
Scale of Costs
Item
Matter
 
Amount
 
INSTITUTION OF PROCEEDINGS
 
 
1.
Drawing and filing notice of opposition, application for revocation of registration of a trade mark, application for declaration of invalidity of registration of a trade mark, or application for rectification of an entry in the register, all including a statement of grounds
 
$300
2.
Drawing and filing counter-statement
 
$300
3.
Preparing and filing evidence for opposition and revocation, invalidation or rectification proceedings
 
$300-$1,600 per statutory declaration
4.
Reviewing the reply to any document referred to in items 1, 2 and 3
 
$150-$800 per document
 
INTERLOCUTORY PROCEEDINGS
 
 
5.
Preparing for all interlocutory proceedings
 
$50-$500
6.
Attending all interlocutory proceedings
 
$50-$500
7.
Preparing for hearing
 
$500-$2,000
8.
Attendance at hearing
 
$200-$800
9.
General and travelling expenses of witness required to attend the hearing —
 
 
 
(a) where the witness is an expert witness
 
$100-$200 per day
 
(b) where the witness is not an expert witness
 
$50-$100 per day
 
TAXATION
 
 
10.
Drawing bill of costs
 
$5 per folio
11.
Attending taxation and obtaining the Registrar’s certificate or order
 
$100-$300”.
[G.N. Nos. S 491/2000; S 661/2001; S 474/2003; S 370/2004]

Made this 28th day of December 2005.

LEO YIP
Permanent Secretary,
Ministry of Law,
Singapore.
[LAW 18/001/003 V5; AG/LEG/SL/332/2002/1 Vol. 3]
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