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Singapore-registered design subsidiary amendments

Published by the Intellectual Property of Singapore (IPOS) on September 10, 2021, amendments have been made on the Registered Designs Rules (“RD Rules”) and the Registered Designs (International Registration) Rules (“RD(IR) Rules”), which took effect from October 1, 2021.

A summary of several key amendments is highlighted below

Electronic online system

IPOS has always advocated digitalization of their operations and the default mode of service, communication and transaction of relevant documents/notifications with the Registrar are through their electronic online system, IP2SG.

The Covid-19 pandemic has accelerated the digitalization process, and with effect from October 1, 2021, IPOS will no longer accept alternative filing modes if these actions can be done through their electronic online system for the filing and/or servicing of documents. The registrar has also removed the option of “Filing Documents via the Service Bureau” (deletion of Rule 58H), and this new practice is updated with two new Practice Directions, IP2SG Practice Direction (No. 1 of 2021) and Registries Practice Direction (No. 1 of 2021). Forms or services which are unavailable on IP2SG may still be submitted via FormSG.

Certificate of taxation: Removal of Form HC2 and fee

Amendments on Rule 56E for the certificate of taxation has been made, wherein previously, when a party who applied for the costs to be taxed needs to file Form HC2, followed by the payment of the required official fees (S$80) for the issuance of the certificate of taxation.

To aid in streamlining the operational process and reduce taxation-related costs, moving forward, the filing of HC2 and payment of fees is no longer necessary. The Registrar will issue the certificate of taxation accordingly.

Taxation of cost: Extension period for submission of bill of cost

Where an awarded party who wishes to have the party costs taxed by the Registrar for the costs awarded during proceedings before the Registrar, the party shall, within six weeks, instead of one month previously, apply for the cost to be taxed by filing and sending a copy of the bill of costs with the Registrar and to every other person having an interest in the taxation proceedings (Amendments on Rule 56B).

Certificate of contested validity of registration: Clarity amendments

Clarity amendments have been made on Rule 62 with clearer elaboration on the filing or servicing of the relevant documents. When the court has certified that the registration of the design is found to be valid during the proceedings before the court, and that the validity of the registration was contested in the proceedings before the court, a written request with the certificate of contested validity of registration may be filed by the registered owner with the Registrar to allow the Registrar to add a note of entry of the registered design in the Register.

This article was first published in the IP Analysts column of Asia IP.