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Amendments To The Trademark Act And Rules In Singapore

The Trade Marks Rules and Act have been recently amended and have come into force on the 1st of January 2006.

The following concerns the main amendments that are the most likely to interest you.

An application for registration will be treated as withdrawn if the applicant fails to respond to the Registrar’s queries or objections regarding the registrability of the trademark, within the period specified by the Registrar (Article 12 and Rule 77B). Previously, failure to do so will be treated as “abandoned”. Therefore, IPOS will inform the applicant of the withdrawal of the application in order to give him/her a chance to restore the application. Once the 3-month period for restoration has expired and if no request for restoration (form TM 40 together with a payment of a fee of S$130) has been made, the status of the trademark will be updated as “abandoned”. IPOS will only apply this new provision to deadlines issued by IPOS on or after the 1st of January 2006.

Concerning late renewal of registrations, there is a separate procedure for restoration of registrations that have been removed due of non-removal. In fact, 3 kinds of trademark applications can be restored via form TM 40: applications for trademark registration, applications for collective or certification marks and renewal applications that have been treated as withdrawn due to non-response or inadequate response to issues raised in the renewal applications within the given deadline.

As an illustration, a first examination report has been sent to the applicant on 5 January 2006. There is no reply by 5 May 2006. IPOS therefore sends out a letter to the applicant to let him/her know that his/her application is treated as withdrawn. If he/she did not have the intention to withdraw the application, he/she should lodge form TM 40 (with payment) within a non-extendible 3 months from the date of the Registrar’s notice. If the form is lodged in the specified time, it will most likely be restored. If the form TM 40 was not lodged, the application will be abandoned.

Rule 21, being entitled “deficiencies in application”, clarifies the actions that will be taken by the Registry if minimum filing requirements are not met. If all the requirements are met, the filing date is the date of receipt of the application. If not, it will be the date on which the Registry receives the missing document(s), which put finally the application in order. IPOS will send a letter to the applicant/agent if the application is deficient, which has to be replied within a 2 month non-extendible period.

The second and subsequent requests for extension of time to file evidence by way of a statutory declaration in opposition/revocation/invalidation/rectification proceedings in Rules 32, 33 and 34 have to be made on form TM 50, for which a fee of S$100 will be paid for each trademark. Therefore, the first extension of time (EOT) is free of charge, but not the subsequent EOTs.

Some of the Trade Marks (International Registration) Rules have been amended as well. The amendment clarifies that the Registrar is entitled to raise an objection against vague terms in the specification of goods/services of an International registration designating Singapore (Rule 5) and that in relation of an International application, the Registry will notify the International Bureau where the basic application is treated as withdrawn and is not restored according to the Trade Marks Rules (Rule 28).

Changes in fees (for form TM 4: S$340 per number of class with manual submission and S$310 for online submission ; for form TM 10: S$340; form TM 13: S$650; for form TM 22: S$88 in respect of each trademark; for form TM 27: S$44, for form TM 42: S$32) have been also decided as well as amendments and removal of some forms, such forms TM 9, 14, 15 and 16.

Forms TM 4, 11, 12 and 13 respectively will be used in their place.

Now, collective and certification marks are to be filed on the same form as ordinary trademarks (Rules 65 and 66A), which is form TM 4 (application to register a trade mark, collective mark or certification mark).