Division 6 — Opposition to Registration
Notice of opposition
29.—(1)  A person (referred to in this Division as the opponent) may, within 2 months after 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).
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(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.
(2A)  If the opponent does not comply with paragraph (2), his notice of opposition shall be treated as not having been filed.
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(3)  A request for an extension of time to file the notice of opposition —
(a)must be made by filing with the Registrar Form TM 48 within 2 months after the date of the publication of the application for registration; and
(b)must state —
(i)the reason for the extension; and
(ii)the name and address of every person likely to be affected by the extension.
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(3A)  The person requesting for the extension must, at the time the request mentioned in paragraph (3) is filed with the Registrar, serve on the applicant, and on each person likely to be affected by an extension of time to file the notice of opposition, a copy of that request.
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(4)  The total extension of time for which the Registrar may allow to file the notice of opposition shall not exceed 4 months after the date of the publication of the application for registration.
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(5)  The Registrar may refuse to grant an extension of time to file the notice of opposition if the person requesting for the extension —
(a)fails to show a good and sufficient reason for the extension; or
(b)fails to show to the Registrar’s satisfaction that the request mentioned in paragraph (3) has been served on the applicant and on each person likely to be affected by the extension.
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(6)  Upon granting an extension of time to file the notice of opposition, the Registrar must send a notification of the extension to the applicant and each person mentioned in paragraph (3)(b)(ii).
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(7)  The applicant or any person likely to be affected by an extension of time to file the notice of opposition may, not later than 2 weeks after the receipt of the Registrar’s notification of the extension, apply in writing to the Registrar for the revocation of the extension on the ground that the request mentioned in paragraph (3) had not been served on the applicant or on that person (as the case may be).
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(8)  [Deleted by S 22/2017 wef 31/01/2017]
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, 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.
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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 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.
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Counter-statement
31.—(1)  Within 2 months after 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 HC6 (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.
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(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 treated as having withdrawn his application.
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(4)  A request for an extension of time to file the counter‑statement —
(a)must be made by the applicant to the Registrar in Form HC3 within 2 months after the date of receipt of the notice of opposition from the opponent; and
(b)must state —
(i)the reason for the extension; and
(ii)the name and address of every person likely to be affected by the extension.
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(4A)  The applicant must, at the time the request mentioned in paragraph (4) is made to the Registrar, serve on the opponent, and on each person likely to be affected by an extension of time to file the counter‑statement, a copy of that request.
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(5)  The total extension of time which the Registrar may allow to file the counter-statement shall not exceed 4 months after the date of receipt by the applicant of the notice of opposition.
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(6)  The Registrar may refuse to grant an extension of time to file the counter‑statement if the applicant —
(a)fails to show a good and sufficient reason for the extension; or
(b)fails to show to the Registrar’s satisfaction that the request mentioned in paragraph (4) has been served on the opponent and on each person likely to be affected by the extension.
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(7)  Upon granting an extension of time to file the counter‑statement, the Registrar must send a notification of the extension to the opponent and each person mentioned in paragraph (4)(b)(ii).
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(8)  The opponent or any person likely to be affected by an extension of time to file the counter‑statement may, not later than 2 weeks after the receipt of the Registrar’s notification of the extension, apply in writing to the Registrar for the revocation of the extension on the ground that the request mentioned in paragraph (4) had not been served on the opponent or on that person (as the case may be).
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(9)  [Deleted by S 22/2017 wef 31/01/2017]
Rounds of evidence
31A.—(1)  Where the counter-statement has been filed, the Registrar must, after hearing the parties on the appropriate timelines, specify the periods within which the following evidence may be filed by the parties:
(a)statutory declaration setting out the evidence the opponent wishes to adduce in support of the opposition;
(b)statutory declaration setting out the evidence the applicant wishes to adduce in support of the application;
(c)statutory declaration setting out the opponent’s evidence in reply.
(1A)  Subject to paragraphs (1B) and (2), the Registrar may, in any case after specifying the periods within which the evidence mentioned in paragraph (1) may be filed by the parties, shorten any of those periods.
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(1B)  The Registrar may only exercise the Registrar’s power under paragraph (1A) after giving the parties an opportunity to be heard.
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(2)  Each period specified by the Registrar under paragraph (1), or as shortened by the Registrar under paragraph (1A) (if applicable), must not be shorter than 2 months.
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(3)  The opponent must file with the Registrar the statutory declaration mentioned in paragraph (1)(a) within —
(a)the period specified by the Registrar under paragraph (1), or as shortened by the Registrar under paragraph (1A) (if applicable), for that statutory declaration; or
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(b)that period as extended under rule 32.
(4)  The applicant must file with the Registrar the statutory declaration mentioned in paragraph (1)(b) within —
(a)the period specified by the Registrar under paragraph (1), or as shortened by the Registrar under paragraph (1A) (if applicable), for that statutory declaration; or
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(b)that period as extended under rule 32(7)(a) or 33.
(5)  The opponent may file with the Registrar the statutory declaration mentioned in paragraph (1)(c) within —
(a)the period specified by the Registrar under paragraph (1), or as shortened by the Registrar under paragraph (1A) (if applicable), for that statutory declaration; or
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(b)that period as extended under rule 32(7)(a), 33(7)(a) or 34.
(6)  When the opponent files the statutory declaration mentioned in paragraph (1)(a) or (c), the opponent must, at the same time, serve a copy of the statutory declaration on the applicant.
(7)  When the applicant files the statutory declaration mentioned in paragraph (1)(b), the applicant must, at the same time, serve a copy of the statutory declaration on the opponent.
(8)  If the opponent fails to comply with paragraph (3) or (6) in respect of the statutory declaration mentioned in paragraph (1)(a), the opponent is treated as having withdrawn the opposition.
(9)  If the applicant fails to comply with paragraph (4) or (7), the applicant is treated as having withdrawn the application for registration.
(10)  The opponent’s statutory declaration in reply mentioned in paragraph (1)(c) must be confined to matters strictly in reply to the applicant’s statutory declaration mentioned in paragraph (1)(b).
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Extension of time for evidence in support of opposition
32.—(1)  A request by the opponent for an extension of time to file the statutory declaration mentioned in rule 31A(1)(a) must be made by filing with the Registrar Form HC3 within —
(a)the period specified by the Registrar under rule 31A(1), or as shortened by the Registrar under rule 31A(1A) (if applicable), for that statutory declaration; or
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(b)that period as extended under paragraph (6).
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(2)  A request mentioned in paragraph (1) must state —
(a)the period of extension requested;
(b)the reason for the extension; and
(c)the name and address of every person likely to be affected by the extension.
(3)  The opponent must serve a copy of the request mentioned in paragraph (1) on the applicant, and on each person likely to be affected by an extension of time, at the time the request is filed with the Registrar.
(4)  The applicant or any person likely to be affected by the extension of time may submit an objection to the request for extension of time not later than 2 weeks after the receipt of a copy of the request mentioned in paragraph (1).
(5)  The Registrar may refuse to grant an extension of time to file the statutory declaration mentioned in rule 31A(1)(a) if the opponent —
(a)fails to show a good and sufficient reason for the extension; or
(b)fails to show to the Registrar’s satisfaction that the request for extension has been served on the applicant and on each person likely to be affected by the extension.
(6)  The Registrar may grant or refuse an extension of time to file the statutory declaration mentioned in rule 31A(1)(a) without having to conduct a hearing in accordance with rule 67A.
(7)  Upon granting an extension of time for the filing of the statutory declaration mentioned in rule 31A(1)(a), the Registrar —
(a)may extend the periods within which the statutory declarations mentioned in rule 31A(1)(b) and (c) are to be filed; and
(b)must send a notification of the extension to the applicant and each person mentioned in paragraph (2)(c).
(8)  The applicant or any person likely to be affected by the extension of time for the filing of the statutory declaration mentioned in rule 31A(1)(a) may, not later than 2 weeks after receiving the Registrar’s notification of the extension, apply in writing to the Registrar to revoke the extension on the ground that the request mentioned in paragraph (1) had not been served on the applicant or on that person (as the case may be).
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Extension of time for evidence in support of application
33.—(1)  A request by the applicant for an extension of time to file the statutory declaration mentioned in rule 31A(1)(b) must be made by filing with the Registrar Form HC3 before the expiry of the latest of the following periods:
(a)the period specified by the Registrar under rule 31A(1), or as shortened by the Registrar under rule 31A(1A) (if applicable), for that statutory declaration;
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(b)the period mentioned in sub-paragraph (a) as extended under rule 32(7)(a);
(c)the period mentioned in sub-paragraph (a) as extended under paragraph (6).
(2)  A request mentioned in paragraph (1) must state —
(a)the period of extension requested;
(b)the reason for the extension; and
(c)the name and address of every person likely to be affected by the extension.
(3)  The applicant must serve a copy of the request mentioned in paragraph (1) on the opponent, and on each person likely to be affected by an extension of time, at the time the request is filed with the Registrar.
(4)  The opponent or any person likely to be affected by the extension of time may submit an objection to the request for extension of time not later than 2 weeks after the receipt of a copy of the request mentioned in paragraph (1).
(5)  The Registrar may refuse to grant an extension of time to file the statutory declaration mentioned in rule 31A(1)(b) if the applicant —
(a)fails to show a good and sufficient reason for the extension; or
(b)fails to show to the Registrar’s satisfaction that the request for extension has been served on the opponent and on each person likely to be affected by the extension.
(6)  The Registrar may grant or refuse an extension of time to file the statutory declaration mentioned in rule 31A(1)(b) without having to conduct a hearing in accordance with rule 67A.
(7)  Upon granting an extension of time for the filing of the statutory declaration mentioned in rule 31A(1)(b), the Registrar —
(a)may extend the period within which the statutory declaration mentioned in rule 31A(1)(c) is to be filed; and
(b)must send a notification of the extension to the opponent and each person mentioned in paragraph (2)(c).
(8)  The opponent or any person likely to be affected by the extension of time for the filing of the statutory declaration mentioned in rule 31A(1)(b) may, not later than 2 weeks after receiving the Registrar’s notification of the extension, apply in writing to the Registrar to revoke the extension on the ground that the request mentioned in paragraph (1) had not been served on the opponent or on that person (as the case may be).
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Extension of time for evidence in reply by opponent
34.—(1)  A request by the opponent for an extension of time to file the statutory declaration in reply mentioned in rule 31A(1)(c) must be made by filing with the Registrar Form HC3 before the expiry of the latest of the following periods:
(a)the period specified by the Registrar under rule 31A(1), or as shortened by the Registrar under rule 31A(1A) (if applicable), for that statutory declaration;
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(b)the period mentioned in sub-paragraph (a) as extended under rule 32(7)(a) or 33(7)(a);
(c)the period mentioned in sub-paragraph (a) as extended under paragraph (6).
(2)  A request mentioned in paragraph (1) must state —
(a)the period of extension requested;
(b)the reason for the extension; and
(c)the name and address of every person likely to be affected by the extension.
(3)  The opponent must serve a copy of the request mentioned in paragraph (1) on the applicant, and on each person likely to be affected by an extension of time, at the time the request is filed with the Registrar.
(4)  The applicant or any person likely to be affected by the extension of time may submit an objection to the request for extension of time not later than 2 weeks after the receipt of a copy of the request mentioned in paragraph (1).
(5)  The Registrar may refuse to grant an extension of time to file the statutory declaration in reply mentioned in rule 31A(1)(c) if the opponent —
(a)fails to show a good and sufficient reason for the extension; or
(b)fails to show to the Registrar’s satisfaction that the request for extension has been served on the applicant and on each person likely to be affected by the extension.
(6)  The Registrar may grant or refuse an extension of time to file the statutory declaration in reply mentioned in rule 31A(1)(c) without having to conduct a hearing in accordance with rule 67A.
(7)  Upon granting an extension of time for the filing of the statutory declaration in reply mentioned in rule 31A(1)(c), the Registrar must send a notification of the extension to the applicant and each person mentioned in paragraph (2)(c).
(8)  The applicant or any person likely to be affected by the extension of time for the filing of the statutory declaration in reply mentioned in rule 31A(1)(c) may, not later than 2 weeks after receiving the Registrar’s notification of the extension, apply in writing to the Registrar to revoke the extension on the ground that the request mentioned in paragraph (1) had not been served on the applicant or on that person (as the case may be).
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Further evidence
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.
Exhibits
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 must send a copy of each exhibit to the other party.
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(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.
Pre-hearing review
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 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.
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(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, 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.
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(6)  If any party does not attend 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.
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(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.
(8)  Despite paragraphs (1) and (2) but subject to paragraphs (9), (10) and (11), the Registrar may direct that a pre-hearing review be held in an asynchronous manner by exchange of written correspondence with the parties, and the Registrar may exercise any power conferred on the Registrar under this rule for the purpose of securing the just, expeditious and economical disposal of the proceedings.
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(9)  Where a pre-hearing review is held under paragraph (8), the Registrar must —
(a)before giving any direction or imposing any requirement on the parties on any matter, give each party an opportunity to address the Registrar on the intended direction or requirement; and
(b)before giving any direction or imposing any requirement on a party that affects a party’s rights or interests, give that party an opportunity to address the Registrar and respond to any submission made by the other party on the intended direction or requirement.
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(10)  For the purpose of exercising the Registrar’s powers under paragraph (6) or (7) in a pre-hearing review held under paragraph (8), the references to the non-attendance of a party in paragraph (6) and the absence of a party in paragraph (7) are each to be read as a reference to the failure of a party to respond to the Registrar’s written correspondence relating to the pre-hearing review within the time specified in the written correspondence.
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(11)  The Registrar must not hold a pre-hearing review in an asynchronous manner under paragraph (8) if any party requests that the pre-hearing review be held in accordance with paragraph (1) instead.
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Opposition hearing
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 HC1 before the hearing.
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(4)  Any party who does not file with the Registrar Form HC1 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.
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(5)  If, after filing with the Registrar Form HC1, 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.
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(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.
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(7)  If neither party appears at the hearing, the Registrar may dismiss the proceedings.
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(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.
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(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.
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(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.
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(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).
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Registrar’s decision in opposition proceedings
38.  After the end of the hearing mentioned in rule 37, and the filing of the closing submissions (if the Registrar grants leave for closing submissions to be filed after the last day of the hearing), the Registrar must inform the parties of the Registrar’s decision and the grounds of the decision as soon as practicable.
[S 22/2017 wef 31/01/2017]
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.