58.—(1) Within 2 months after the date of receipt of the copies of the application and statement from the applicant, the proprietor may file with the Registrar a counter-statement in Form HC6 setting out —
(a)
the grounds on which he relies as supporting his registration; and
(b)
the facts alleged in the application which he admits, if any.
[S 743/2014 wef 13/11/2014]
(2) The proprietor shall serve on the applicant a copy of the counter-statement at the same time as he files the counter-statement with the Registrar.
(3) In the case of an application for revocation of the registration of a trade mark on the ground referred to in section 22(1)(a) or (b) of the Act, the proprietor shall —
(a)
file, together with the counter‑statement, a statutory declaration setting out —
(i)
evidence of the use by the proprietor of the trade mark in relation to the goods or services for which it is registered during the period of non‑use alleged by the applicant in Form TM 28;
(ii)
evidence supporting proper reasons for non‑use during the period of non‑use alleged by the applicant in Form TM 28;
(iii)
evidence of commencement or resumption of use of the trade mark in relation to the goods or services for which it is registered on a date which falls after the period of non‑use alleged by the applicant in Form TM 28, and before the 3‑month period immediately preceding the date of the application; or
(iv)
evidence of —
(A)
commencement or resumption of use of the trade mark in relation to the goods or services for which it is registered on a date which falls after the period of non‑use alleged by the applicant in Form TM 28, and within the 3‑month period immediately preceding the date of the application; and
(B)
the fact that the proprietor was unaware that the application might be made when the preparations for the commencement or resumption of use of the trade mark began; and
(b)
serve a copy of the statutory declaration on the applicant at the same time.
[S 743/2014 wef 13/11/2014]
(4) A request for an extension of time to file the counter‑statement —
(a)
must be made by the proprietor to the Registrar in Form HC3 within 2 months after the date of receipt of the copies of the application and statement from the applicant; 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.
[S 22/2017 wef 31/01/2017]
(4A) The proprietor must, at the time the request mentioned in paragraph (4) is made to the Registrar, serve on the applicant, and on each person likely to be affected by an extension of time to file the counter‑statement, a copy of that request.
[S 22/2017 wef 31/01/2017]
(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 proprietor of the copies of the application and statement.
[S 743/2014 wef 13/11/2014]
(6) The Registrar may refuse to grant an extension of time to file the counter‑statement if the proprietor —
(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 applicant and on each person likely to be affected by the extension.
[S 22/2017 wef 31/01/2017]
(7) Upon granting an extension of time to file the counter-statement, the Registrar must send a notification of the extension to the applicant and each person mentioned in paragraph (4)(b)(ii).
[S 22/2017 wef 31/01/2017]
(8) The applicant or any person likely to be affected by the extension of time to file the counter‑statement 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 (4) had not been served on the applicant or on that person (as the case may be).
[S 22/2017 wef 31/01/2017]
(9) [Deleted by S 22/2017 wef 31/01/2017]
(10) In the case of an application for revocation on the ground referred to in section 22(1)(a) or (b) of the Act, the application shall be granted where no counter‑statement or statutory declaration referred to in paragraph (3) has been filed or served on the applicant within the time allowed.
[S 743/2014 wef 13/11/2014]
(11) In the case of an application for revocation on the ground referred to in section 22(1)(c) or (d) of the Act, the application shall be granted where no counter‑statement has been filed or served on the applicant within the time allowed.
[S 743/2014 wef 13/11/2014]
(12) In the case of an application for a declaration of invalidity, the application shall be granted where no counter‑statement has been filed or served on the applicant within the time allowed.
[S 743/2014 wef 13/11/2014]
(13) In the case of an application for the rectification of an error or omission in the register by a person, other than the proprietor of a registered trade mark, the application shall be granted where no counter‑statement has been filed or served on the applicant within the time allowed.