On 25/05/2013,
you requested for the version in force on 25/05/2013
incorporating all amendments published on or before 25/05/2013.
The closest version currently available is that of 01/01/2012.
29.
—(1) A person (referred to in this Division as the opponent) may, within 2 months from 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).
(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.
(3) A request for an extension of time to file the notice of opposition shall be made by filing with the Registrar Form TM 48 within 2 months from the date of the publication of the application for registration.
(4) The total extension of time for which the Registrar may allow to file the notice of opposition shall not exceed 4 months from the date of the publication of the application for registration.
(5) Before making a request for an extension of time, the person seeking the extension shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —
(a)
a statement of the person’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)
a request for the consent of the applicant or other person to the extension.
(6) The request for the extension shall be supported by a copy of the notice referred to in paragraph (5) and the consent in writing, if this is given.
(7) The Registrar may refuse to grant the extension —
(a)
if the person requesting for it fails to show a good and sufficient reason for the extension; or
(b)
if that person fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (5) has been served on the applicant and every person likely to be affected by the extension.
(8) Where a person on whom a notice referred to in paragraph (5) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —
(a)
the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and
(b)
the Registrar may do so without having to conduct a hearing in accordance with rule 67.
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 —
(a)
a representation of the earlier trade mark;
(b)
the registration number of the earlier trade mark, if registered, or the number accorded by the Registrar to the application for registration of the earlier trade mark, if pending registration; and
(c)
the class number and specification of the goods or services in respect of which the mark is registered or for which registration is sought or, if the mark is neither registered nor pending registration, in respect of which the mark is used,
shall be included in the notice for the purpose of determining if the mark is identical or similar to the earlier trade mark.
(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 notice shall, in addition to the information referred to in paragraph (2), include the following information for the purpose of determining if 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.
31.
—(1) Within 2 months from 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 TM 12 (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.
(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 deemed to have withdrawn his application.
(4) A request for an extension of time to file the counter-statement shall be made by the applicant to the Registrar in writing within 2 months from the date of receipt of the notice of opposition from the opponent.
(5) The total extension of time which the Registrar may allow to file the counter-statement shall not exceed 4 months from the date of receipt by the applicant of the notice of opposition.
(6) Before making a request for an extension of time, the applicant shall serve a notice on the opponent and every other person likely to be affected by the extension, which shall contain —
(a)
a statement of the applicant’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)
a request for the consent of the opponent or other person to the extension.
(7) The request for the extension shall be supported by a copy of the notice referred to in paragraph (6) and the consent in writing, if this is given.
(8) The Registrar may refuse to grant the extension —
(a)
if the applicant fails to show a good and sufficient reason for the extension; or
(b)
if the applicant fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (6) has been served on the opponent and every person likely to be affected by the extension.
(9) Where a person on whom a notice referred to in paragraph (6) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —
(a)
the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and
(b)
the Registrar may do so without having to conduct a hearing in accordance with rule 67.
32.
—(1) Within 2 months from the date of receipt of the counter-statement from the applicant, the opponent shall file with the Registrar a statutory declaration setting out the evidence he wishes to adduce in support of his opposition.
(2) When the opponent files his statutory declaration with the Registrar, the opponent shall, at the same time, send to the applicant a copy of the statutory declaration.
(3) If the opponent fails to comply with paragraph (1) or (2), he shall be treated as having withdrawn his opposition.
(4) Subject to paragraph (6), a request by the opponent for an extension of time to file his statutory declaration shall be made to the Registrar in writing within 2 months from the date of receipt of the counter-statement from the applicant.
(5) The extension of time which the Registrar may allow to file the opponent’s statutory declaration pursuant to a request under paragraph (4) shall not exceed 6 months from the date of receipt by the opponent of the counter-statement from the applicant.
(6) A request by the opponent for a further extension of time to file the statutory declaration shall be made to the Registrar by filing Form TM 50 before the expiry of the last extended period allowed by the Registrar under this rule.
(7) Before making any request for an extension of time under paragraph (4) or (6), the opponent shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —
(a)
a statement of the opponent’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)
a request for the consent of the applicant or other person to the extension.
(8) A request for an extension of time under paragraph (4) or (6) shall be supported by a copy of the notice referred to in paragraph (7) and the consent in writing, if this is given.
(9) The Registrar may refuse to grant the extension —
(a)
if the opponent fails to show a good and sufficient reason for the extension; or
(b)
if the opponent fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (7) has been served on the applicant and every person likely to be affected by the extension.
(10) Where a person on whom a notice referred to in paragraph (7) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —
(a)
the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and
(b)
the Registrar may do so without having to conduct a hearing in accordance with rule 67.
33.
—(1) Within 2 months from the date of receipt by the applicant of the copy of the opponent’s statutory declaration referred to in rule 32, the applicant shall file with the Registrar a statutory declaration setting out the evidence he wishes to adduce in support of his application.
(2) When the applicant files his statutory declaration with the Registrar, the applicant shall, at the same time, send to the opponent a copy of the statutory declaration.
(3) If the applicant fails to comply with paragraph (1) or (2), he shall be treated as having withdrawn his application.
(4) Subject to paragraph (6), a request by the applicant for an extension of time to file his statutory declaration shall be made to the Registrar in writing within 2 months from the date of receipt by the applicant of the copy of the opponent’s statutory declaration referred to in rule 32.
(5) The extension of time which the Registrar may allow to file the applicant’s statutory declaration pursuant to a request under paragraph (4) shall not exceed 6 months from the date of receipt by the applicant of the copy of the opponent’s statutory declaration.
(6) A request by the applicant for a further extension of time to file his statutory declaration shall be made to the Registrar by filing Form TM 50 before the expiry of the last extended period allowed by the Registrar under this rule.
(7) Before making any request for an extension of time under paragraph (4) or (6), the applicant shall serve a notice on the opponent and every other person likely to be affected by the extension, which shall contain —
(a)
a statement of the applicant’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)
a request for the consent of the opponent or other person to the extension.
(8) A request for an extension of time under paragraph (4) or (6) shall be supported by a copy of the notice referred to in paragraph (7) and the consent in writing, if this is given.
(9) The Registrar may refuse to grant the extension —
(a)
if the applicant fails to show a good and sufficient reason for the extension; or
(b)
if the applicant fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (7) has been served on the opponent and every person likely to be affected by the extension.
(10) Where a person on whom a notice referred to in paragraph (7) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —
(a)
the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and
(b)
the Registrar may do so without having to conduct a hearing in accordance with rule 67.
34.
—(1) Within 2 months from the date of receipt by the opponent of the copy of the applicant’s statutory declaration referred to in rule 33, the opponent shall file with the Registrar a statutory declaration setting out his evidence in reply.
(2) If the opponent files a statutory declaration setting out his evidence in reply with the Registrar, the opponent shall, at the same time, send to the applicant a copy of the statutory declaration.
(3) The opponent’s statutory declaration under paragraph (1) shall be confined to matters strictly in reply to the applicant’s statutory declaration referred to in rule 33.
(4) Subject to paragraph (6), a request by the opponent for an extension of time to file his statutory declaration setting out his evidence in reply shall be made to the Registrar in writing within 2 months from the date of receipt by the opponent of the copy of the applicant’s statutory declaration referred to in rule 33.
(5) The extension of time which the Registrar may allow to file the opponent’s statutory declaration pursuant to a request under paragraph (4) shall not exceed 6 months from the date of receipt by the opponent of the copy of the applicant’s statutory declaration.
(6) A request by the opponent for a further extension of time to file his statutory declaration setting out his evidence in reply shall be made to the Registrar by filing Form TM 50 before the expiry of the last extended period allowed by the Registrar under this rule.
(7) Before making any request for an extension of time under paragraph (4) or (6), the opponent shall serve a notice on the applicant and every other person likely to be affected by the extension, which shall contain —
(a)
a statement of the opponent’s intention to request for the extension, the extension requested for, and the reason for the extension; and
(b)
a request for the consent of the applicant or other person to the extension.
(8) A request for an extension of time under paragraph (4) or (6) shall be supported by a copy of the notice referred to in paragraph (7) and the consent in writing, if this is given.
(9) The Registrar may refuse to grant the extension —
(a)
if the opponent fails to show a good and sufficient reason for the extension; or
(b)
if the opponent fails to show to the Registrar’s satisfaction that a notice referred to in paragraph (7) has been served on the applicant and every person likely to be affected by the extension.
(10) Where a person on whom a notice referred to in paragraph (7) is served fails or refuses to give his consent to the extension within 2 weeks from the date of the notice —
(a)
the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and
(b)
the Registrar may do so without having to conduct a hearing in accordance with rule 67.
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 leave to either party to file further evidence upon such terms as to costs or otherwise as the Registrar may think fit.
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 shall, at the request of the other party and at that other party’s expense, send a copy of each exhibit to that other party.
(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.
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 under paragraph (1) or (2), the Registrar may dismiss the proceedings or make such other order as he thinks fit.
(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, at any time during the pre-hearing review, the parties are agreeable to a settlement of all or some of the matters in dispute in the proceedings, the Registrar may give his decision in relation to the proceedings or make such order as he thinks just to give effect to the settlement.
(6) If a party does not appear at the pre-hearing review, the Registrar may dismiss the proceedings or make such other order as the Registrar thinks fit, or he may adjourn the review.
(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.
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 TM 13 before the hearing.
(4) Any party who does not file with the Registrar Form TM 13 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.
(5) If, after filing with the Registrar Form TM 13, 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.
(6) If neither party appears at the hearing, the proceedings may be struck out of the list except that it may thereafter be restored on the direction of the Registrar.
(7) Any decision made by the Registrar pursuant to a hearing in which any party does not appear may, on the application of that party, be set aside by the Registrar on such terms as he thinks fit.
(8) An application under this rule to restore any proceedings or to set aside any decision under paragraph (6) or (7) shall be made within 7 days after the proceedings have been struck out of the list or after the hearing, as the case may be.
38. The Registrar shall, within 3 months from the date of the hearing, inform the parties of his decision and the grounds thereof.
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.
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.