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 must be made in Form TM 4 (called in this Part the application form).| (2) The application must contain a clear indication of the nature of the mark. [S 692/2021 wef 01/10/2021] |
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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) [Deleted by S 692/2021 wef 01/10/2021] |
| (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) Where the Registrar reasonably believes that the representation provided by the applicant 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, any or all of the following:| (a) | another representation of the mark consisting of a single view of the mark or of several different views of the mark; | | (b) | a description of the mark expressed in words; | | (c) | such other information as the Registrar may require. [S 588/2011 wef 01/11/2011] |
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| (5) [Deleted by S 588/2011 wef 01/11/2011] |
| (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 27. [S 743/2014 wef 13/11/2014] |
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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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| (2A) For the purposes of section 10(1)(d) of the Act, a person who claims a right of priority for the registration of a trade mark must provide the application number (where available) within 3 months after the date of the application for the registration of the trade mark. [S 403/2022 wef 26/05/2022] |
(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; [S 403/2022 wef 26/05/2022] | | (d) | the goods and services covered by the priority application; and [S 403/2022 wef 26/05/2022] | | (e) | the application number of the priority application, where available. [S 403/2022 wef 26/05/2022] |
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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) For the purposes of the registration of a trade mark, goods and services are classified according to the Nice Classification as in force on the date of the application for registration of the trade mark. [S 739/2015 wef 01/01/2016] (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 Nice Classification as in force on the date of that application; and [S 739/2015 wef 01/01/2016] | | (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 Nice Classification as in force on the date of that application; and [S 739/2015 wef 01/01/2016] |
| | (iii) | complies with any other requirement of the Registrar. |
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| (2A) For the purpose of paragraph (2)(b), the applicant may adopt a specification set out in an approved list of goods or services contained in a practice direction issued by the Registrar. [S 149/2017 wef 01/04/2017] |
| (3) An application may be made in respect of more than one class of goods or services in the Nice Classification as in force on the date of that application, and in such a case, the specification shall set out the classes and list under each class the goods or services to which the application relates. [S 743/2014 wef 13/11/2014] [S 739/2015 wef 01/01/2016] |
| (4) In the case of an application for registration in respect of all the goods or services included in a particular class in the Nice Classification as in force on the date of that application, or of a large variety of goods or services, the Registrar may refuse to accept the application (whether for all or some of those goods or services), 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. [S 739/2015 wef 01/01/2016] [S 403/2022 wef 26/05/2022] |
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| Translation and transliteration |
20. Where a trade mark contains or consists of a word or words in characters other than Roman or in a language other than English, the Registrar may at any time require any of the following documents to be filed with the Registry:| (a) | a copy of the translation in English and, if the case requires, transliteration in English, of the word or words; | | (b) | any supporting document certifying or verifying, to the satisfaction of the Registrar, the accuracy of the translation and transliteration (if any) in English of the word or words. [S 692/2021 wef 01/10/2021] |
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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 after the date of the notice. [S 743/2014 wef 13/11/2014] |
(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 after the date of the notice, the application shall be treated as withdrawn. [S 743/2014 wef 13/11/2014] |
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| Withdrawal of application |
21A. A notice of withdrawal of an application for registration of a trade mark referred to in section 5 of the Act may be made in either of the following ways:| (a) | by way of a written request; | | (b) | in Form CM9. [S 743/2014 wef 13/11/2014] |
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| Division 3 — Amendment of Application |
22.—(1) An application to amend an application for registration must be made —| (a) | if it is to change the name or other particular of the applicant — in Form CM2; | | (b) | if it is to correct the name or other particular of the applicant — in Form CM4; or | | (c) | if it is for any other purpose — in Form TM 27. [S 403/2022 wef 26/05/2022] |
| (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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| Publication of and opposition to application for correction |
22A.—(1) This rule applies where a person (X) makes an application under rule 22 on or after 26 May 2022 for the correction in an application of an error or a mistake in —| (a) | the name or other particular of an applicant of an application for registration; or | | (b) | any information pertaining to a priority application. |
| (2) If the Registrar determines that the interests of any person may be affected by the proposed correction, the Registrar may publish the application and the nature of the proposed correction in the Trade Marks Journal and in any other manner that the Registrar determines. |
| (3) Any person (Y) may, at any time within 2 months after the date of the publication, give a written notice to the Registrar of opposition to the application in Form TM 11. |
| (4) The notice of opposition must be accompanied by a supporting statement setting out fully the facts on which Y relies. |
| (5) Y must, at the time the notice and the statement are filed, serve on X a copy of the notice and a copy of the statement. |
| (6) If Y does not comply with paragraph (5), Y’s notice of opposition is treated as not having been filed. |
(7) If X desires to proceed with the application, X must —| (a) | within 2 months after the date on which X is served the copies of the notice and the statement, file a counter-statement in Form HC6 setting out fully the grounds on which X contests the opposition; and | | (b) | at the time the counter-statement is filed, serve on Y a copy of the counter-statement. |
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| (8) If X does not comply with paragraph (7), X’s application under rule 22 is treated as withdrawn. |
| (9) The Registrar may give such directions as the Registrar thinks fit with regard to any aspect of the procedure for the application or the opposition to the application. |
| (10) The Registrar must consider the opposition in deciding whether to grant the application. [S 403/2022 wef 26/05/2022] |
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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 shall also be published. [S 743/2014 wef 13/11/2014] | (2) Any person who wishes to oppose the amendment shall, within 2 months after the date of publication of the amendment, file with the Registrar a notice of opposition to the amendment in Form TM 11. [S 743/2014 wef 13/11/2014] |
| (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 (7) and 31 to 40 shall apply, with the necessary modifications, to any proceedings arising from the notice of opposition. [S 22/2017 wef 31/01/2017] |
(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; [S 743/2014 wef 13/11/2014] | | (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 after the date of the written notice of the Registrar, the applicant fails to —| (a) | make representations in writing; | | (b) | apply to the Registrar in Form HC4 for a hearing; [S 743/2014 wef 13/11/2014] | | (c) | apply to amend the application; or | | (d) | furnish the additional or any other information or evidence, |
| the application, or the application insofar as it relates to those goods or services for which registration is sought but the requirements for registration have not been met, is treated as withdrawn. |
[S 743/2014 wef 13/11/2014] [S 403/2022 wef 26/05/2022] |
| (2A) [Deleted by S 743/2014 wef 13/11/2014] |
| (3) Where the applicant has applied to the Registrar in Form HC4 for a hearing, the Registrar shall give notice to the applicant of a date on which the Registrar will hear the applicant’s arguments. [S 743/2014 wef 13/11/2014] |
| (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. |
| (5A) For the purpose of paragraph (5), the Registrar may, on the Registrar’s own accord, send to the applicant the Registrar’s grounds of decision for the decision in respect of the representations of the applicant. [S 692/2021 wef 01/10/2021] |
(6) Where the Registrar’s grounds of decision are not sent to the applicant under paragraph (5A), and the applicant wishes to have the Registrar’s grounds of decision —| (a) | the applicant shall, within one month after the date of the Registrar’s decision, file a request in Form HC5 for the Registrar to state the Registrar’s grounds of decision; and | | (b) | the Registrar shall, within 2 months after the date of the request, send the grounds of decision to the applicant. [S 743/2014 wef 13/11/2014] [S 692/2021 wef 01/10/2021] |
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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 under paragraph (5A) or (6)(b) shall be deemed to be the date of the Registrar’s decision for the purpose of an appeal. [S 692/2021 wef 01/10/2021] |
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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 this rule, a reference to an application for the registration of a trade mark that has been accepted includes an application that is accepted under section 12(4) or (5) of the Act only in relation to some of the goods or services for which the registration is sought. [S 403/2022 wef 26/05/2022] |
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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 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). [S 743/2014 wef 13/11/2014] | (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. [S 743/2014 wef 13/11/2014] |
(3) A request for an extension of time to file the notice of opposition —| (a) | must be made by filing with the Registrar Form HC3 within 2 months after the date of the publication of the application for registration; and [S 403/2022 wef 26/05/2022] | | (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] |
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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. [S 22/2017 wef 31/01/2017] |
| (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. [S 743/2014 wef 13/11/2014] |
(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. [S 22/2017 wef 31/01/2017] |
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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). [S 22/2017 wef 31/01/2017] |
| (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). [S 22/2017 wef 31/01/2017] |
| (8) [Deleted by S 22/2017 wef 31/01/2017] |
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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, 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. [S 743/2014 wef 13/11/2014] |
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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. [S 743/2014 wef 13/11/2014] |
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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. [S 743/2014 wef 13/11/2014] |
| (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. [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 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. [S 22/2017 wef 31/01/2017] |
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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. [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 applicant of the notice of opposition. [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 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. [S 22/2017 wef 31/01/2017] |
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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). [S 22/2017 wef 31/01/2017] |
| (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). [S 22/2017 wef 31/01/2017] |
| (9) [Deleted by S 22/2017 wef 31/01/2017] |
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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. [S 692/2021 wef 01/10/2021] |
| (1B) The Registrar may only exercise the Registrar’s power under paragraph (1A) after giving the parties an opportunity to be heard. [S 692/2021 wef 01/10/2021] |
| (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. [S 692/2021 wef 01/10/2021] |
(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 [S 692/2021 wef 01/10/2021] | | (b) | that period as extended under rule 32. |
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(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 [S 692/2021 wef 01/10/2021] | | (b) | that period as extended under rule 32(7)(a) or 33. |
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(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 [S 692/2021 wef 01/10/2021] | | (b) | that period as extended under rule 32(7)(a), 33(7)(a) or 34. |
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| (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). [S 22/2017 wef 31/01/2017] |
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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 [S 692/2021 wef 01/10/2021] | | (b) | that period as extended under paragraph (6). [S 692/2021 wef 01/10/2021] |
(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. |
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| (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. |
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| (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). |
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| (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). [S 22/2017 wef 31/01/2017] |
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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; [S 692/2021 wef 01/10/2021] | | (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. |
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| (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. |
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| (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). |
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| (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). [S 22/2017 wef 31/01/2017] |
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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; [S 692/2021 wef 01/10/2021] | | (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. |
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| (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. |
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| (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). [S 22/2017 wef 31/01/2017] |
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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 permission to either party to file further evidence upon such terms as to costs or otherwise as the Registrar may think fit. [S 263/2022 wef 01/04/2022] |
| 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. [S 743/2014 wef 13/11/2014] | (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 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. [S 743/2014 wef 13/11/2014] |
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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. [S 743/2014 wef 13/11/2014] |
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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. [S 743/2014 wef 13/11/2014] [S 692/2021 wef 01/10/2021] |
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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. [S 692/2021 wef 01/10/2021] |
(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. [S 692/2021 wef 01/10/2021] |
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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. [S 692/2021 wef 01/10/2021] |
| (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. [S 692/2021 wef 01/10/2021] |
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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 HC1 before the hearing. [S 743/2014 wef 13/11/2014] |
| (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. [S 743/2014 wef 13/11/2014] |
| (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. [S 743/2014 wef 13/11/2014] |
| (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. [S 743/2014 wef 13/11/2014] |
| (7) If neither party appears at the hearing, the Registrar may dismiss the proceedings. [S 743/2014 wef 13/11/2014] |
| (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. [S 743/2014 wef 13/11/2014] |
| (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. [S 743/2014 wef 13/11/2014] |
| (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. [S 743/2014 wef 13/11/2014] |
| (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). [S 743/2014 wef 13/11/2014] |
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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 permission 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] [S 263/2022 wef 01/04/2022] |
| 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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