PART II | REGISTRATION OF TRADE MARKS |
| Division 1 — Registrability of Trade Marks |
| Representation of President |
| 11. The Registrar shall refuse to register a trade mark which consists of or contains any representation of the President or any colourable imitation thereof. |
| Singapore Crest, Presidential Coat of Arms, Royal Arms, etc. |
12. The Registrar shall refuse to register a trade mark which consists of or contains —| (a) | any representation of the Crest of the Republic of Singapore, the Presidential Coat of Arms, the Royal or Imperial Arms, or of any crest, armorial bearing, insignia, or device so nearly resembling any of the foregoing as to be likely to be mistaken for them; | | (b) | any representation of the Royal or Imperial crown, or of the Singapore flag, or of the Royal or Imperial flag; | | (c) | the word “Royal”, “Imperial”, “Presidential”, or “Singapore Government”, or any word, letter or device if used in such a manner as to be likely to lead persons to think that the applicant either has or recently has had Royal, Imperial, Presidential or the Singapore Government’s patronage or authorisation, whether or not such be the case; | | (d) | the words “Red Cross” or “Geneva Cross”, any representation of the Geneva Cross or the Red Cross, any representation of the Swiss Federal cross in white on a red background or silver on a red background, or any representation similar to any of the foregoing; or | | (e) | the word “ANZAC”, |
| unless it appears to the Registrar that consent to its registration and use of the person or authority entitled to give consent has been obtained. |
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| Registration of mark consisting of arms, etc. |
13.—(1) Where a representation of the name, initials, armorial bearings, insignia, orders of chivalry, decorations, flags or devices of any state, settlement, city, borough, town, place, society, body corporate, government body, statutory board, institution or person appears on a trade mark which is the subject of an application for registration, the Registrar, before proceeding to register the mark, may require the applicant to furnish the Registrar with the consent to the registration and use of the matter in question of such official or other person as appears to the Registrar to be entitled to give consent.| (2) The Registrar shall refuse to register the mark if no such consent is furnished within the time specified by the Registrar. |
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| Persons living or recently dead |
14.—(1) Where the name or representation of any person appears on a trade mark which is the subject of an application for registration, the Registrar may, before proceeding to register the mark, require the applicant to furnish the Registrar with the consent of the person or, in the case of a person recently dead, of his legal representatives.| (2) Where the consent referred to in paragraph (1) is not furnished within the time specified by the Registrar and the applicant fails to satisfy the Registrar that it is impossible or impracticable in the circumstances of the case to obtain the consent, the Registrar shall refuse to register the mark. |
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| Division 2 — Application for Registration |
| Application for registration |
15.—(1) An application for the registration of a trade mark shall be made on Form TM 4 (referred to in this Part as the application form).| (2) An application for the registration of a 3-dimensional shape as a trade mark shall not be treated as such unless the application form contains a statement to that effect. |
| (3) Where colour is claimed as a trade mark, it shall not be treated as such unless the application form contains a statement to that effect. |
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| Representation of trade marks |
16.—(1) The applicant shall provide a clear and durable representation of the mark in the space provided for that purpose in the application form.| (2) Where the representation exceeds the space in size, the representation shall be provided on a separate sheet of paper to be annexed to the application form. |
| (3) Where an application is for the registration of a series of trade marks, a representation of each trade mark in the series shall be provided in the application form. |
| (4) Subject to paragraph (5), in the case of an application for the registration of a 3-dimensional mark, the representation of the mark may, at the option of the applicant, consist of a single view of the mark or of several different views of the mark. |
(5) Where the applicant has provided a representation of a 3-dimensional mark consisting of a single view, or of several different views, of the mark, and the Registrar reasonably believes that the representation does not sufficiently show the particulars of the mark, or does not allow all features of the mark to be properly examined, the Registrar may, by notice in writing, require the applicant to provide, within such time as the Registrar may specify in the notice, either or both of the following:| (a) | another representation of the mark consisting of up to 6 different views of the mark; | | (b) | a description of the mark expressed in words. |
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| (6) The Registrar may at any time, if dissatisfied with any representation of a trade mark, require another representation satisfactory to him to be filed before proceeding with the application, and the applicant shall substitute the representation by filing with the Registrar Form TM 27B. |
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| Division of application for registration |
17.—(1) Subject to the provisions of this rule, an application for registration of a trade mark (referred to in this rule as the original application) made on or after 2nd July 2007 may, at the request of the applicant made on Form TM 8 at any time after the date of the original application but before the registration of the trade mark, be divided into 2 or more separate applications for registration of the trade mark.(2) Where the original application is made in respect of 2 or more goods or services, a request under paragraph (1) may be made to divide the original application into 2 or more separate applications, each in respect of —| (a) | one or more classes of those goods or services, being classes of goods or services to which the original application relates; or | | (b) | one or more of those goods or services included in one or more of the classes of goods or services to which the original application relates. |
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| (3) Where the applicant makes a request under paragraph (1), the request shall contain, for each separate application and each class of goods or services in respect of which that separate application is made, a specification in accordance with rule 19 setting out the goods or services to which that separate application relates. |
(4) Upon the division of the original application into 2 or more separate applications —| (a) | each separate application shall have the same date as the original application; | | (b) | any notice of opposition to the registration of any trade mark which is a subject of the original application shall —| (i) | if the notice relates only to some (but not all) of the goods or services in respect of which the original application is made, be treated as having been given in relation only to each separate application made in respect of any of the goods or services to which the notice relates; or | | (ii) | subject to sub-paragraph (i), be treated as having been given in relation to all of the separate applications, |
| and the opposition proceedings shall continue as if the notice had been so given; and |
| | (c) | any notice given to the Registrar under section 41(3) of the Act shall —| (i) | if the notice relates only to some (but not all) of the goods or services in respect of which the original application is made, be treated as having been given in relation only to each separate application made in respect of any of the goods or services to which the notice relates; or | | (ii) | subject to sub-paragraph (i), be treated as having been given in relation to all of the separate applications. |
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18.—(1) Where a right of priority is claimed by reason of an application for the registration of a trade mark filed in a Convention country under section 10 of the Act or in another country or territory in respect of which provision corresponding to that set out in section 10 of the Act is made under section 11 of the Act (referred to in this rule as the priority application), particulars of that claim shall be included in the application form at the time of filing the application form.(2) The particulars referred to in paragraph (1) are —| (a) | the country or territory in which —| (i) | the priority application; or | | (ii) | where there is more than one priority application, each priority application, |
| | (b) | the date on which —| (i) | the priority application; or | | (ii) | where there is more than one priority application, each priority application, |
| | (c) | where the right of priority is claimed in respect of one or more, but not all, of the goods or services for which registration was sought in the priority application, the goods or services in respect of which the right of priority is claimed; and | | (d) | where the right of priority is claimed through more than one priority application, the goods or services in respect of which the right of priority is claimed through each priority application. |
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(3) The Registrar may at any time require the applicant to file a certificate by the registering or other competent authority of the country or territory concerned certifying or verifying to the satisfaction of the Registrar —| (a) | the date of filing of the priority application; | | (b) | the country or territory, or the registering or competent authority; | | (c) | the representation of the mark; and | | (d) | the goods and services covered by the priority application. |
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| (4) Where the certificate referred to in paragraph (3) is not in the English language, there shall be annexed to the certificate a translation in English of the contents of the certificate, certified or verified to the satisfaction of the Registrar. |
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19.—(1) Goods and services shall be classified for the purposes of the registration of trade marks in accordance with the Third Schedule.(2) Every application shall contain, for each class of goods or services to which the application relates —| (a) | the class number as set out in the Third Schedule; and | | (b) | a specification of those goods or services which —| (i) | is appropriate to that class; | | (ii) | is described in such a manner as to —| (A) | indicate clearly the nature of those goods or services; and | | (B) | allow those goods or services to be classified in accordance with the Third Schedule; and |
| | (iii) | complies with any other requirement of the Registrar. |
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| (3) An application may be made in respect of more than one class of goods or services in the Third Schedule, and in such a case, the specification shall set out the classes in consecutive numerical order and list under each class the goods or services to which the application relates. |
| (4) In the case of an application for registration in respect of all the goods or services included in a particular class in the Third Schedule, or of a large variety of goods or services, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made, or intends to make if and when it is registered. |
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| Translation and transliteration |
20.—(1) Where a trade mark contains or consists of a word or words in characters other than Roman or in a language other than English, there shall, unless the Registrar otherwise directs, be endorsed on the application form —| (a) | a translation and, if the case requires, a transliteration, in English, of each word and of the words taken together as a whole to the satisfaction of the Registrar; and | | (b) | the language to which each word belongs. |
| (2) The Registrar may at any time require a copy of the translation or transliteration, certified or verified to the satisfaction of the Registrar, to be filed with the Registrar. |
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| 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 shall 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. |
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| (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. |
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| Division 3 — Amendment of Application |
22.—(1) An application to amend an application for registration shall be made on —| (a) | Form TM 26, if it is made to correct or change the name or other particulars of the applicant, and the change does not affect the representation of the trade mark; | | (b) | Form TM 27A, if sub-paragraph (a) does not apply and the amendment, or any of the amendments, pertains to —| (i) | the class number or specification of any goods or services to which the application for registration relates; or | | (ii) | the particulars of any claim to a right of priority included in the application for registration; or |
| | (c) | Form TM 27B, if sub-paragraphs (a) and (b) do not apply. |
| (2) [Deleted by S 161/2007] |
| (3) [Deleted by S 370/2004] |
| (3A) [Deleted by S 852/2005] |
| (4) [Deleted by S 161/2007] |
| (5) Before acting on an application to amend an application for registration, the Registrar may require the applicant to furnish such proof as the Registrar thinks fit. |
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| Amendment of application after publication |
23.—(1) Where an application is made for an amendment of an application for registration which has been published, and the amendment affects the representation of the trade mark or the goods or services covered by the application for registration, the amendment or a statement of the effect of the amendment shall also be published.| (2) Any person who wishes to oppose the amendment shall, within 2 months from the date of publication of the amendment or statement referred to in paragraph (1), file with the Registrar a notice of opposition to the amendment in Form TM 11. |
| (3) The notice of opposition shall contain a statement of the grounds upon which the person opposes the amendment, including, where relevant, how the amendment would be contrary to section 14(3) of the Act. |
| (4) Rules 29 (2) to (8) and 31 to 40 shall apply, with the necessary modifications, to any proceedings arising from the notice of opposition. |
(5) For the purposes of the application of the rules referred to in paragraph (4) —| (a) | any reference to the application for registration shall be read as a reference to the application for amendment referred to in paragraph (1); | | (b) | any reference to the date of publication of the application for registration shall be read as a reference to the date of publication of the amendment or statement referred to in paragraph (1); | | (c) | any reference to the notice of opposition shall be read as a reference to the notice of opposition referred to in paragraphs (2) and (3); and | | (d) | any reference to the opponent shall be read as a reference to the person referred to in paragraphs (2) and (3). |
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| Division 4 — Examination of Application for Registration |
| Examination report and applicant’s response |
24.—(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. |
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(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, |
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| (3) If the applicant requests for a hearing to make representations, the Registrar shall give notice to the applicant of a date on which he will hear the applicant’s arguments. |
| (4) For the purposes of the hearing, the applicant shall file with the Registrar his written submissions and bundle of authorities at least 14 days before the date of the hearing. |
| (5) The decision of the Registrar, in respect of the representations of the applicant given either during the hearing or in writing, shall be communicated to the applicant in writing or in such other manner as the Registrar thinks fit. |
(6) Where the applicant wishes to appeal against the decision of the Registrar —| (a) | the applicant shall, within one month from the date of the decision, by filing Form TM 7 with the Registrar, request the Registrar to state the Registrar’s grounds of decision; and | | (b) | the Registrar shall, within 2 months from the date of the request, send the grounds of decision to the applicant. |
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| (7) [Deleted by S 370/2004] |
| (8) The date on which the Registrar’s grounds of decision are sent to the applicant shall be deemed to be the date of the Registrar’s decision for the purpose of an appeal. |
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| Acceptance of application |
| 25. [Deleted by S491/2000] |
| Publication of application |
26.—(1) An application which has been accepted for registration shall be published in the Trade Marks Journal during such times and in such manner as the Registrar may direct.| (2) In the case of an application with which the Registrar proceeds only after the applicant has lodged the written consent to the proposed registration of the proprietor of, or the applicant for the registration of, another trade mark, the words “By Consent” and the number of that other mark shall appear in the publication. |
| (3) In the case of an application for the registration of a series of trade marks, the Registrar may, if he thinks fit, publish, together with the publication of the application, a statement of the manner in which the several trade marks differ from one another. |
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| Photographs and artworks, etc. |
| 27. [Deleted by S 491/2000] |
| Publication of series of trade marks |
| 28. [Deleted by S 491/2000] |
| Division 6 — Opposition to Registration |
29.—(1) A person (referred to in this Division as the opponent) may, within 2 months from the date of publication of the application for registration, file with the Registrar a notice opposing the registration in Form TM 11 (referred to in this Division as a notice of opposition).| (2) The opponent shall serve on the applicant a copy of the notice of opposition at the same time as the notice is filed with the Registrar. |
| (3) A request for an extension of time to file the notice of opposition shall be made by filing with the Registrar Form TM 48 within 2 months from the date of the publication of the application for registration. |
| (4) The total extension of time for which the Registrar may allow to file the notice of opposition shall not exceed 4 months from the date of the publication of the application for registration. |
(5) Before making a request for an extension of time, the person seeking the extension shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —| (a) | a statement of the person’s intention to request for the extension, the extension requested for, and the reason for the extension; and | | (b) | a request for the consent of the applicant or other person to the extension. |
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| (6) The request for the extension shall be supported by a copy of the notice referred to in paragraph (5) and the consent in writing, if this is given. |
(7) The Registrar may refuse to grant the extension —| (a) | if the person requesting for it fails to show a good and sufficient reason for the extension; or | | (b) | if that person fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (5) has been served on the applicant and every person likely to be affected by the extension. |
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(8) Where a person on whom a notice referred to in paragraph (5) is served fails or refuses to give his consent to the extension 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. |
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| Contents of notice of opposition |
30.—(1) The notice of opposition shall contain a statement of the grounds upon which the opponent opposes the registration.(2) If registration is opposed on the ground that the mark is identical or similar to an earlier trade mark —| (a) | a representation of the earlier trade mark; | | (b) | the registration number of the earlier trade mark, if registered, or the number accorded by the Registrar to the application for registration of the earlier trade mark, if pending registration; and | | (c) | the class number and specification of the goods or services in respect of which the mark is registered or for which registration is sought or, if the mark is neither registered nor pending registration, in respect of which the mark is used, |
| shall be included in the notice for the purpose of determining if the mark is identical or similar to the earlier trade mark. |
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(3) If registration is opposed on the ground that the mark is identical or similar to an earlier trade mark which is well known in Singapore, the notice shall, in addition to the information referred to in paragraph (2), include the following information for the purpose of determining if the trade mark is well known in Singapore:| (a) | information on the use of the earlier trade mark; and | | (b) | information on any promotion undertaken for the earlier trade mark. |
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31.—(1) Within 2 months from the date of receipt of the copy of the notice of opposition from the opponent, the applicant shall file with the Registrar a counter-statement in Form TM 12 (referred to in this Division as the counter-statement) setting out —| (a) | the grounds on which he relies as supporting his application; and | | (b) | the facts alleged in the notice of opposition which he admits, if any. |
| (2) The applicant shall serve a copy of the counter-statement on the opponent at the same time as the counter-statement is filed with the Registrar. |
| (3) If the applicant does not comply with paragraph (1) or (2), he shall be deemed to have withdrawn his application. |
| (4) A request for an extension of time to file the counter-statement shall be made by the applicant to the Registrar in writing within 2 months from the date of receipt of the notice of opposition from the opponent. |
| (5) The total extension of time which the Registrar may allow to file the counter-statement shall not exceed 4 months from the date of receipt by the applicant of the notice of opposition. |
(6) Before making a request for an extension of time, the applicant shall serve a notice on the opponent and every other person likely to be affected by the extension, which shall contain —| (a) | a statement of the applicant’s intention to request for the extension, the extension requested for, and the reason for the extension; and | | (b) | a request for the consent of the opponent or other person to the extension. |
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| (7) The request for the extension shall be supported by a copy of the notice referred to in paragraph (6) and the consent in writing, if this is given. |
(8) The Registrar may refuse to grant the extension —| (a) | if the applicant fails to show a good and sufficient reason for the extension; or | | (b) | if the applicant fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (6) has been served on the opponent and every person likely to be affected by the extension. |
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(9) Where a person on whom a notice referred to in paragraph (6) is served fails or refuses to give his consent to the extension 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. |
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| 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 his 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 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 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. |
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| (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. |
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(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. |
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| 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. |
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| (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. |
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(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. |
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| 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. |
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| (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. |
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(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. |
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| 35. No further evidence may be filed by either party except that, in any proceedings before the Registrar, the Registrar may at any time, if he thinks fit, give leave to either party to file further evidence upon such terms as to costs or otherwise as the Registrar may think fit. |
36.—(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 shall, at the request of the other party and at that other party’s expense, send a copy of each exhibit to that other party.| (2) If such copy cannot conveniently be furnished, the originals shall be filed with the Registrar in order that they may be open to inspection. |
| (3) The original exhibits shall be produced at the opposition hearing unless the Registrar otherwise directs. |
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36A.—(1) At any time after the completion of the filing of evidence by the parties, the Registrar may direct the parties to attend a pre-hearing review at which he may give such directions as he considers necessary or desirable for securing the just, expeditious and economical disposal of the proceedings.| (2) At the pre-hearing review, the Registrar may consider any matter including the possibility of settlement of any or all of the issues in the proceedings and may require the parties to furnish him with such information as he may require. |
| (3) If any party fails to comply with any direction given under paragraph (1) or (2), the Registrar may dismiss the proceedings or make such other order as he thinks fit. |
| (4) Any direction or order by the Registrar may be set aside or varied by him on such terms as he thinks fit. |
| (5) If, at any time during the pre-hearing review, the parties are agreeable to a settlement of all or some of the matters in dispute in the proceedings, the Registrar may give his decision in relation to the proceedings or make such order as he thinks just to give effect to the settlement. |
| (6) If a party does not appear at the pre-hearing review, the Registrar may dismiss the proceedings or make such other order as the Registrar thinks fit, or he may adjourn the review. |
| (7) An order made by the Registrar in the absence of a party may be set aside by the Registrar, on the application of that party, on such terms as the Registrar thinks fit. |
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37.—(1) Upon completion of the filing of evidence by the parties, the Registrar shall give notice to the parties of a date on which he will hear arguments on the case.| (2) The parties shall file with the Registrar their written submissions and bundles of authorities at least one month before the date of hearing, and shall at the same time exchange with one another their respective written submissions and bundles of authorities. |
| (3) Any party who intends to appear at the hearing shall file with the Registrar Form TM 13 before the hearing. |
| (4) Any party who does not file with the Registrar Form TM 13 before the hearing may be treated as not desiring to be heard, and the Registrar may proceed with the hearing in the absence of that party or may, without proceeding with the hearing, give his decision or dismiss the proceedings, or make such other order as he thinks fit. |
| (5) If, after filing with the Registrar Form TM 13, a party does not appear at the hearing, the Registrar may proceed with the hearing in the absence of that party, or may, without proceeding with the hearing, give his decision or dismiss the proceedings, or make such other order as he thinks fit. |
| (6) If neither party appears at the hearing, the proceedings may be struck out of the list except that it may thereafter be restored on the direction of the Registrar. |
| (7) Any decision made by the Registrar pursuant to a hearing in which any party does not appear may, on the application of that party, be set aside by the Registrar on such terms as he thinks fit. |
| (8) An application under this rule to restore any proceedings or to set aside any decision under paragraph (6) or (7) shall be made within 7 days after the proceedings have been struck out of the list or after the hearing, as the case may be. |
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| Registrar’s decision in opposition proceedings |
| 38. The Registrar shall, within 3 months from the date of the hearing, inform the parties of his decision and the grounds thereof. |
| Extension of time in opposition proceedings |
| 39. Where any extension of time is granted to any party, the Registrar may, if he thinks fit, without giving the party a hearing, grant a reasonable extension of time to the other party in which to take any subsequent step. |
| Costs in uncontested oppositions |
| 40. Where an opposition is uncontested by the applicant, the Registrar, in deciding whether costs should be awarded to the opponent, shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was filed. |
| Division 7 — Registration |
| Certificate of registration |
| 41. Upon the registration of a trade mark, the Registrar shall issue to the applicant a certificate of registration. |
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