PART II | INTERNATIONAL REGISTRATIONS DESIGNATING SINGAPORE |
| Entitlement to protection |
5.—(1) Subject to the provisions of rules 11 to 17, an international registration designating Singapore shall be entitled to become protected where, if the particulars of the international registration were comprised in an application for registration of a trade mark under the Act, such an application would satisfy the requirements for registration of a trade mark under the Act, including any imposed by the Trade Marks Rules.| (2) For the purpose of paragraph (1), sections 5 and 6 of the Act and rules 9, 15, 16, 18, 19(1), (2)(a) and (b)(i), (ii)(B) and (iii) and (3), 20 and 21 of the Trade Marks Rules shall be disregarded. [S 853/2005 wef 01/01/2006] [S162/2007 wef 02/07/2007] |
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| Request for division of international registration designating Singapore |
5A.—(1) Subject to the provisions of this rule, the holder of an international registration designating Singapore (called in this rule a principal registration) for 2 or more goods or services (called in this rule the subject goods or services) may make a request to the International Bureau through the Registrar, to divide the principal registration into 2 international registrations designating Singapore (called in this rule a divisional registration), each for —| (a) | one or more classes of goods or services to which the subject goods or services belong; or | | (b) | one or more of the subject goods or services. |
(2) A request made under paragraph (1) must —| (a) | be made before the date the principal registration becomes a protected international trade mark (Singapore); | | (b) | be made in Form MM 22(E); | | (c) | specify the name of the holder of the principal registration; | | (d) | specify the number of the principal registration given by the International Bureau; | | (e) | contain, for each divisional registration sought and each class of goods or services for which the divisional registration is sought, a specification in accordance with rule 19 of the Trade Marks Rules (R 1) (as applied under rule 5 of the principal Rules) setting out the goods or services to which that divisional registration relates; and | | (f) | be accompanied by the address for service in Singapore of the holder of the principal registration, if the address has not been furnished to the Registrar under rule 11(6) or filed with the Registrar under rule 14(1)(b). |
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| (3) The Registrar must notify the International Bureau of a request for a division of a principal registration that is made in accordance with paragraph (2). |
(4) Where the Registrar is notified by the International Bureau that the principal registration has been divided into 2 divisional registrations, the Registrar must —| (a) | record the details of each divisional registration in the register, and for this purpose, each divisional registration must be recorded in the register as having the same date as the principal registration; and | | (b) | inform the holder of the principal registration of the details of each divisional registration by notice in writing sent to the address —| (i) | furnished to the Registrar under rule 11(6) or filed with the Registrar under rule 14(1)(b) as the holder’s address for service in Singapore; or | | (ii) | accompanying the request made under paragraph (1) as the holder’s address for service in Singapore, |
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(5) Upon the division of the principal registration into 2 divisional registrations by the International Bureau —| (a) | any notice of opposition to the conferring of protection on the principal registration filed with the Registrar must —| (i) | if the notice relates only to some (but not all) of the goods or services to which the principal registration relates, be treated as having been given in relation only to the divisional registration for the goods or services to which the notice relates; or | | (ii) | if the notice relates to all of the goods or services to which the principal registration relates, be treated as having been given in relation to both of the divisional registrations, |
| and the opposition proceedings are to continue as if the notice had been so given; and |
| | (b) | any notice given to the Registrar under section 41(3) of the Act claiming an interest in or under the principal registration must —| (i) | if the notice relates only to some (but not all) of the goods or services to which the principal registration relates, be treated as having been given in relation only to the divisional registration for the goods or services to which the notice relates; or | | (ii) | if the notice relates to all of the goods or services to which the principal registration relates, be treated as having been given in relation to both of the divisional registrations. [S 128/2019 wef 01/04/2019] |
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| Effects of protected international trade mark (Singapore) |
6.—(1) The proprietor of a protected international trade mark (Singapore) has, subject to the provisions of these Rules, the same rights and remedies as are given by or under sections 26 to 29 and 31 to 34 of the Act to the proprietor of a registered trade mark.| (2) Paragraph (1) is subject to the provisions relating to acts not amounting to infringement and exhaustion which are applicable to a registered trade mark by virtue of sections 28 and 29 of the Act, respectively. |
(3) For the purposes of the application of section 26 of the Act —| (a) | the rights of the proprietor shall have effect as of the date on which the protected international trade mark (Singapore) is to be treated as registered under rule 17 or 26; and | | (b) | a protected international trade mark (Singapore) shall be treated as being in fact registered when it becomes protected under rule 17. |
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| (4) For the purposes of paragraph (1), references in sections 27 and 28 of the Act to goods or services in respect of which a trade mark is registered shall be treated as references to goods or services in respect of which a protected international trade mark (Singapore) confers protection in Singapore. |
(5) Where the holder of an international registration designating Singapore, by notice in writing sent to the Registrar —| (a) | disclaims any right to the exclusive use of any specified element of the trade mark; or | | (b) | agrees that the rights conferred in Singapore by the international registration shall be subject to a specified territorial or other limitation, |
| the Registrar shall enter the disclaimer or limitation in the register and shall publish the disclaimer or limitation. |
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| (6) Where a protected international trade mark (Singapore) is subject to a disclaimer or limitation, the rights conferred in relation to it by the application of section 26 of the Act are restricted accordingly. |
| (7) The remedy for groundless threats of infringement proceedings given by section 35 of the Act applies to a protected international trade mark (Singapore) as it applies in relation to a registered trade mark. |
(8) For the purpose of paragraph (7) —| (a) | the reference in section 35(4) of the Act to the registration of the trade mark shall be treated as a reference to the protection of a protected international trade mark (Singapore); and | | (b) | the reference in section 35(5) of the Act to notification that a trade mark is registered, or that an application for registration has been made, shall be treated as a reference to notification that a trade mark is a protected international trade mark (Singapore) or is the subject of an international application or international registration designating Singapore. |
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| Protected international trade mark (Singapore) and international registration designating Singapore as objects of property |
| 7. The provisions of sections 36, 37, 38, 40 and 41 of the Act apply, with the necessary modifications, in relation to a protected international trade mark (Singapore) or an international registration designating Singapore as they apply in relation to a registered trade mark or an application for the registration of a trade mark, as the case may be. [S 128/2019 wef 01/04/2019] |
| Notification of transactions |
8.—(1) The following are notifiable transactions for the purpose of this rule:| (a) | the grant of a licence under a protected international trade mark (Singapore) or an international registration designating Singapore; [S 128/2019 wef 01/04/2019] | | (b) | an order of the Court or other competent authority transferring —| (i) | a protected international trade mark (Singapore); | | (ii) | an international registration designating Singapore; or | | (iii) | any right in or under a protected international trade mark (Singapore) or an international registration designating Singapore; [S 128/2019 wef 01/04/2019] |
| | (c) | the making by personal representatives of an assent to a licence in relation to —| (i) | a protected international trade mark (Singapore); | | (ii) | an international registration designating Singapore; or | | (iii) | any right in or under a protected international trade mark (Singapore) or an international registration designating Singapore. [S 128/2019 wef 01/04/2019] |
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(2) On application being made to the Registrar by —| (a) | a person claiming to be entitled to an interest in or under a protected international trade mark (Singapore) or an international registration designating Singapore by virtue of a notifiable transaction; or [S 128/2019 wef 01/04/2019] | | (b) | any other person claiming to be affected by such a transaction, |
| the relevant particulars of the transaction shall be entered in the register. |
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(3) The following are relevant transactions for the purpose of this rule:| (a) | an assignment of —| (i) | a protected international trade mark (Singapore); | | (ii) | an international registration designating Singapore; or | | (iii) | any right in a protected international trade mark (Singapore) or an international registration designating Singapore; [S 128/2019 wef 01/04/2019] |
| | (b) | the making by personal representatives of an assent (other than an assent to a licence) in relation to —| (i) | a protected international trade mark (Singapore); | | (ii) | an international registration designating Singapore; or | | (iii) | any right in or under a protected international trade mark (Singapore) or an international registration designating Singapore; [S 128/2019 wef 01/04/2019] |
| | (c) | the granting of any security interest (whether fixed or floating) over —| (i) | a protected international trade mark (Singapore); | | (ii) | an international registration designating Singapore; or | | (iii) | any right in or under a protected international trade mark (Singapore) or an international registration designating Singapore. [S 128/2019 wef 01/04/2019] |
| | (d) | [Deleted by S 128/2019 wef 01/04/2019] |
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(4) Until —| (a) | in the case of any notifiable transaction referred to in paragraph (1)(b), an application has been made for the registration of the relevant particulars of the transaction; or | | (b) | in the case of any relevant transaction, the transaction has been recorded in the International Register, |
| the transaction is ineffective as against a person acquiring an interest in or under the protected international trade mark (Singapore) or the international registration designating Singapore in ignorance of the transaction. |
[S 372/2004 wef 01/07/2004] [S 128/2019 wef 01/04/2019] |
(5) A person who becomes the proprietor of a protected international trade mark (Singapore) or an international registration designating Singapore by virtue of a notifiable transaction mentioned in paragraph (1)(b) or a relevant transaction is not entitled to damages, an account of profits or statutory damages under section 31(5)(c) of the Act in respect of any infringement of the protected international trade mark (Singapore) or the international registration designating Singapore occurring —| (a) | after the date of the transaction and before the date of the application for the registration of the relevant particulars of the notifiable transaction; or [S 693/2021 wef 01/10/2021] | | (b) | after the date of the transaction and before the relevant transaction is recorded in the International Register, |
[S 128/2019 wef 01/04/2019] |
| (5A) [Deleted by S 128/2019 wef 01/04/2019] |
(6) In this rule, “relevant particulars” means —| (a) | in relation to a notifiable transaction mentioned in paragraph (1)(a) or (c) —| (i) | the name and address of the licensee; | | (ii) | where the licence is an exclusive licence — that fact; | | (iii) | where the licence is limited — a description of the limitation; and | | (iv) | the duration of the licence if the same is, or is ascertainable as, a definite period; and |
| | (b) | in relation to a notifiable transaction mentioned in paragraph (1)(b) —| (i) | the name and address of the transferee; | | (ii) | the date of the order; and | | (iii) | where the transfer is in respect of a right in or under a protected international trade mark (Singapore) or an international registration designating Singapore, a description of the right transferred. [S 128/2019 wef 01/04/2019] |
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9.—(1) The provisions of sections 42 to 45 of the Act shall, with the necessary modifications, apply in relation to licences to use a protected international trade mark (Singapore) as they apply in relation to licences to use a registered trade mark.| (2) The reference in section 42(2) of the Act to goods or services for which a trade mark is registered shall be treated as a reference to goods or services in respect of which a trade mark is protected in Singapore. |
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10.—(1) Subject to paragraph (2), the provisions of section 10 of the Act shall apply so as to confer a right of priority in relation to protection of an international registration designating Singapore, as they apply in relation to registering a trade mark under the Act.| (2) The manner of claiming priority shall be determined in accordance with the Madrid Protocol and the Common Regulations. |
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11.—(1) Upon receiving from the International Bureau notification of an international registration designating Singapore, the Registrar shall examine whether it satisfies the requirements of rule 5.| (2) For the purpose of paragraph (1), the Registrar may carry out a search, to such extent as he considers necessary, of earlier trade marks. |
(2A) Where the mark to which the international registration relates contains or consists of a word or words in characters other than Roman or in a language other than English, the Registrar may require the holder to —| (a) | file with the Registrar a translation in English to the satisfaction of the Registrar and, if the case requires, a transliteration in English to the satisfaction of the Registrar, of the word or words; and | | (b) | indicate on the translation and the transliteration (if any) the language to which the word or words belong. [S 740/2014 wef 13/11/2014] |
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| (3) If it appears to the Registrar that the requirements of rule 5 are not met, or are met only in relation to some of the goods or services in respect of which protection in Singapore has been requested, he shall give notification of refusal to the International Bureau. |
| (4) The notification of refusal shall specify a period within which the holder may make representations. |
| (5) If the holder requires an extension of time to make representations, he shall file with the Registrar his request for an extension of time in Form CM5 before the expiry of the period in question or any extended period previously granted by the Registrar. [S 740/2014 wef 13/11/2014] |
| (6) A holder making representations must furnish to the Registrar in writing an address for service in Singapore. [S 150/2017 wef 01/04/2017] |
| (7) A request by the holder to the Registrar to change an address for service shall be made in Form CM2. [S 740/2014 wef 13/11/2014] [S 404/2022 wef 26/05/2022] |
| (7A) A request by the holder to the Registrar to correct an address for service must be made in Form CM4. [S 404/2022 wef 26/05/2022] |
(8) The following shall be notified to the Registrar in Form CM1:| (a) | any appointment of an agent for a matter for which no form is prescribed; | | (b) | any change of an agent for a matter. [S 740/2014 wef 13/11/2014] |
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(9) Where an agent for a party to any proceedings intends to cease to act on the party’s behalf —| (a) | the agent shall file, and serve on the party and on the Registrar, a notice in Form CM1 of the intention to cease to act on the party’s behalf; and | | (b) | upon complying with sub‑paragraph (a), the agent shall cease to be the agent for the party. [S 740/2014 wef 13/11/2014] |
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| 12. Where following examination it appears to the Registrar that the requirements of rule 5 are met in relation to some or all of the goods or services comprised in the international registration, the Registrar shall publish the particulars of the international registration in the Trade Marks Journal. |
| 13.—(1) A person (referred to in these Rules as the opponent) may, within 2 months after the date of the publication of the international registration in the Trade Marks Journal, file with the Registrar a notice opposing the conferring of protection on the international registration (referred to in these Rules as the notice of opposition) in Form TM 11. [S 853/2005 wef 01/01/2006] [S 740/2014 wef 13/11/2014] | (2) The opponent shall enter an address for service in Singapore in the form referred to in paragraph (1). |
| (3) [Deleted by S 597/2008 wef 01/12/2008] |
| (4) Rules 29(3) to (7) and 30 of the Trade Marks Rules (R 1) shall, with the necessary modifications, apply to the filing and contents of a notice of opposition. [S 23/2017 wef 31/01/2017] |
(5) For the purposes of applying rule 29(3) to (7) of the Trade Marks Rules —| (a) | a reference in that rule to the date of the publication of the application for registration shall be treated as a reference to the date of publication of the international registration in the Trade Marks Journal; and | | (b) | a reference in that rule to the applicant shall be treated as a reference to the holder. [S 23/2017 wef 31/01/2017] |
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| (6) Upon filing of a notice of opposition, the Registrar shall, within 5 months after the date of the publication of the international registration in the Trade Marks Journal, give notification of refusal to the International Bureau stating the matters relating to the opposition. [S 740/2014 wef 13/11/2014] |
| (7) Despite paragraphs (4) and (5), rule 29(3) to (8) of the Trade Marks Rules as in force immediately before 31 January 2017 continues to apply, with the necessary modifications, to any notice of opposition to be filed in relation to an international registration designating Singapore the particulars of which were published in the Trade Marks Journal before that date. [S 23/2017 wef 31/01/2017] |
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14.—(1) Within 4 months after the date of the Registrar’s notification of refusal based on opposition to the International Bureau, the holder shall file with the Registrar —| (a) | a counter-statement in Form HC6 setting out the grounds on which he relies as supporting the international registration designating Singapore, and the facts alleged in the notice of opposition which he admits, if any (referred to in these Rules as a counter-statement); and [S 853/2005 wef 01/01/2006] [S 740/2014 wef 13/11/2014] | | (b) | an address for service in Singapore in the same Form HC6, unless an address for service has previously been filed. [S 23/2017 wef 31/01/2017] |
| (2) [Deleted by S 597/2008 wef 01/12/2008] |
| (3) The holder shall at the same time serve on the opponent a copy of both documents. |
(4) A request for an extension of time to file the counter‑statement —| (a) | must be made to the Registrar in Form HC3 within 4 months after the date of the Registrar’s notification of refusal based on opposition to the International Bureau; 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 23/2017 wef 31/01/2017] |
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| (4A) The holder must, at the time the request mentioned in paragraph (4) is filed with 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 23/2017 wef 31/01/2017] |
| (5) The total extension of time for which the Registrar may allow to file the counter-statement shall not exceed 6 months after the date of the Registrar’s notification of refusal based on opposition to the International Bureau. [S 740/2014 wef 13/11/2014] |
(6) The Registrar may refuse to grant an extension of time to file the counter‑statement if the holder —| (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 23/2017 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 23/2017 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 23/2017 wef 31/01/2017] |
| (9) [Deleted by S 23/2017 wef 31/01/2017] |
| (10) For the avoidance of doubt, if the holder fails to comply with paragraph (1) or (3) in relation to any class of goods or services in respect of which protection is opposed, the Registrar shall be entitled to treat the holder’s request for protection in Singapore in respect of those goods or services as withdrawn, and the refusal shall subsist in respect of those goods or services. [S 372/2004 wef 01/07/2004] [S 597/2008 wef 01/12/2008] |
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| 15.—(1) Upon the filing of a notice of opposition under rule 13 and a counter-statement under rule 14, rules 31A to 40 of the Trade Marks Rules shall, with the necessary modifications, apply to further proceedings thereon. [S 23/2017 wef 31/01/2017] (2) For the purposes of applying rules 31A to 40 of the Trade Marks Rules —| (a) | a reference in those rules to the applicant shall be treated as a reference to the holder; and | | (b) | a reference in those rules to the application shall be treated as a reference to the international registration designating Singapore. [S 23/2017 wef 31/01/2017] |
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(3) Despite paragraphs (1) and (2) —| (a) | rules 31A to 34 of the Trade Marks Rules do not apply to any evidence to be adduced in any further proceedings mentioned in paragraph (1) where a counter‑statement is filed before 31 January 2017 under rule 14; and | | (b) | rules 32, 33 and 34 of the Trade Marks Rules as in force immediately before that date continue to apply, with the necessary modifications, to any such evidence. [S 23/2017 wef 31/01/2017] |
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| (4) Despite paragraphs (1) and (2), rule 38 of the Trade Marks Rules as in force immediately before 31 January 2017 continues to apply to or in relation to any opposition hearing under rule 37 of the Trade Marks Rules, arising from any further proceedings mentioned in paragraph (1), that ended before that date. [S 23/2017 wef 31/01/2017] |
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| 16.—(1) Except where refusal is based on an opposition, a notification of refusal shall not be given after the expiry of 18 months after the date on which the notification of the international registration designating Singapore was sent to the Registrar. [S 740/2014 wef 13/11/2014] | (2) Where there is a possibility that opposition may be filed after the expiry of the period of 18 months, the Registrar shall inform the International Bureau accordingly. |
| (3) A notification of refusal shall set out the matters required by Article 5 of the Madrid Protocol and Rule 17 of the Common Regulations. |
(4) Where —| (a) | after a notification of refusal has been given under rule 11(3), the holder makes representations within the period specified in rule 11(4) or any extended period; or | | (b) | after a notification of refusal based on opposition has been given under rule 13(6), the holder files a counter-statement within the period specified in rule 14(1) or any extended period, |
| the Registrar shall, upon a final decision being made in relation to the refusal, notify the International Bureau of that decision. |
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(5) For the purposes of paragraph (4), a final decision shall be regarded as being made where —| (a) | the Registrar or the Court on appeal from the Registrar decides whether the refusal shall be upheld, in whole or in relation to only some of the goods or services in relation to which protection in Singapore is requested, and any right of appeal against that decision expires or is exhausted; | | (b) | the representations or counter-statement is withdrawn; or | | (c) | the proceedings relating to the refusal are discontinued or abandoned. |
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17.—(1) Where —| (a) | after examination and publication under rules 11 and 12 —| (i) | the period of 18 months after the date on which the notification of the request for extension of protection to Singapore was sent to Singapore has not expired, but the period for giving notification of refusal based on an opposition in accordance with rule 13(6) expires without a notification of refusal (whether based on opposition or otherwise) having been given; [S 740/2014 wef 13/11/2014] | | (ii) | the period of 18 months after the date on which the notification of the request for extension of protection to Singapore was sent to Singapore has expired, and the period for giving notice of opposition specified in rule 13(1) (including any extended period) expires without a notice of opposition having been given; [S 740/2014 wef 13/11/2014] | | (iii) | notification of refusal has been given in respect of only some of the goods or services in respect of which protection in Singapore has been requested and the holder has made no representations within the period specified in rule 11(4) (including any extended period) or has filed no counter-statement within the period specified in rule 14(1) (including any extended period), as the case may be; or that the holder has informed the Registrar that he does not intend to make such representations or file a counter-statement; or | | (iv) | notification of refusal has been given in respect of all or some of the goods or services in respect of which protection in Singapore has been requested and the Registrar notifies the International Bureau in accordance with rule 16(4) that a final decision has been made that the refusal is withdrawn, or is withdrawn in respect of some of the goods or services in respect of which protection in Singapore has been requested; or |
| | (b) | the period of 18 months after the date on which the notification of the request for extension of protection to Singapore was sent to Singapore expires without any notification of refusal having been given and without the International Bureau having been informed that oppositions may be filed after the expiry of that period, [S 740/2014 wef 13/11/2014] |
| the trade mark which is the subject of the request for protection shall thereupon be protected as a protected international trade mark (Singapore); and in a case where a refusal subsists in respect of some of the goods or services in respect of which protection in Singapore has been requested, protection shall apply only as regards the remaining goods or services. |
(2) For the purposes of the application by these Rules of the provisions of the Act, a trade mark so protected shall be treated as being registered under the Act as of —| (a) | where the request for extension of protection to Singapore is mentioned in the international application, the date of the international registration; or | | (b) | where the request for such extension is made subsequently to the international registration, the date on which the request is recorded in the International Register. |
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| (3) Paragraph (2) is subject to rule 26. |
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| 17A. For the purposes of section 8(14) of the Act, the prescribed notice of non-renewal in respect of an international trade mark (Singapore) is the notification given by the International Bureau under Rule 31(4) of the Common Regulations in a case where the international registration of the international trade mark (Singapore) is not renewed. [S 404/2022 wef 26/05/2022] |
| Revocation and invalidity |
18.—(1) The provisions of sections 22 and 23 of the Act shall, with the necessary modifications, apply so as to permit the protection of a protected international trade mark (Singapore) to be revoked or declared invalid.(2) For the purposes of applying sections 22 and 23 of the Act —| (a) | the reference in section 22(1) of the Act to the date of completion of the registration procedure shall be treated as a reference to the date the protected international trade mark (Singapore) became protected; | | (b) | the reference in section 22(2) of the Act to the form in which a trade mark was registered shall be treated as a reference to the form in which it is protected; | | (c) | references in sections 22(6) and 23(9) of the Act to goods or services for which the trade mark is registered shall be treated as references to those in respect of which it is protected; [S 162/2007 wef 02/07/2007] | | (d) | references in section 22 of the Act to the registration of a trade mark being revoked shall be treated as references to the protection of a protected international trade mark (Singapore) being revoked; and | | (e) | references in section 23 of the Act to the registration of a trade mark being declared invalid shall be treated as references to the protection of a protected international trade mark (Singapore) being declared invalid. |
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| (3) The provisions of rules 57 to 60 of the Trade Marks Rules (R 1) shall, with the necessary modifications, apply to the procedure upon an application for revocation or a declaration of invalidity of protection of a protected international trade mark (Singapore). |
(4) Where the protection of a protected international trade mark (Singapore) is revoked or declared invalid to any extent, the Registrar shall notify the International Bureau and —| (a) | in the case of a revocation, the rights of the proprietor shall be deemed to have ceased to exist to that extent as from the date of the application for revocation, or if the Registrar or the Court is satisfied that the grounds for revocation existed at an earlier date, that date; | | (b) | in the case of a declaration of invalidity, the trade mark shall to that extent be deemed never to have been a protected international trade mark (Singapore), but this shall not affect transactions past and closed as at the date when the invalidity is recorded in the International Register. |
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(5) Despite paragraph (3), rule 58 of the Trade Marks Rules as in force immediately before 31 January 2017 continues to apply, with the necessary modifications, to the procedure relating to any counter‑statement filed or to be filed in relation to any of the following:| (a) | an application filed before that date for revocation of the protection of a protected international trade mark (Singapore); | | (b) | an application filed before that date for a declaration of invalidity of the protection of a protected international trade mark (Singapore). [S 23/2017 wef 31/01/2017] |
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(6) Despite paragraph (3), rule 59 of the Trade Marks Rules as in force immediately before 31 January 2017 continues to apply, with the necessary modifications, to the procedure relating to any further proceedings on any of the following applications where a counter‑statement is filed before that date:| (a) | an application for revocation of the protection of a protected international trade mark (Singapore); | | (b) | an application for a declaration of invalidity of the protection of a protected international trade mark (Singapore). [S 23/2017 wef 31/01/2017] |
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19.—(1) Section 24 of the Act applies where the proprietor of an earlier trade mark has acquiesced for a continuous period of 5 years in the use of a protected international trade mark (Singapore).(2) For the purpose of applying section 24 of the Act —| (a) | the reference in that section to a registered trade mark shall be treated as a reference to a protected international trade mark (Singapore); and | | (b) | references in that section to registration shall be treated as references to protection of a protected international trade mark (Singapore). |
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| Certificate of validity of contested registration |
| 20. The provisions of section 102 of the Act shall, with the necessary modifications, apply in relation to proceedings before the Court in which the validity of the protection of a protected international trade mark (Singapore) is contested. |
| Importation of infringing goods |
21.—(1) The provisions of Part X of the Act and the Trade Marks (Border Enforcement Measures) Rules (R 2) shall, with the necessary modifications, apply in relation to goods which are, in relation to a protected international trade mark (Singapore), infringing goods within the meaning of section 3 of the Act.| (2) For the purpose of paragraph (1), references in section 3 and Part X of the Act and in the Trade Marks (Border Enforcement Measures) Rules to a registered trade mark shall be treated as references to a protected international trade mark (Singapore). |
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22.—(1) The provisions of sections 46 to 49 and 53 of the Act shall, with the necessary modifications, apply in relation to a protected international trade mark (Singapore).(2) For the purpose of the application of those provisions —| (a) | references in those provisions to a registered trade mark shall be treated as references to a protected international trade mark (Singapore); and | | (b) | references in those provisions to goods or services for which a trade mark is registered shall be treated as references to goods or services in respect of which a protected international trade mark (Singapore) confers protection in Singapore. |
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| Falsely representing trade mark as protected international trade mark (Singapore) |
23. Any person who —| (a) | falsely represents that a mark is a protected international trade mark (Singapore); or | | (b) | makes a false representation as to the goods or services for which a protected international trade mark (Singapore) confers protection in Singapore, |
| knowing or having reason to believe that the representation is false shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000. |
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