On 26/05/2013,
you requested for the version in force on 26/05/2013
incorporating all amendments published on or before 26/05/2013.
The closest version currently available is that of 02/07/2007.
THIRD SCHEDULE
Transitional Provisions
Introductory
1.—(1) In this Schedule, unless the context otherwise requires —
“existing registered mark” means a trade mark or certification trade mark registered under the Trade Marks Act (Cap. 332, 1992 Ed.) immediately before 15th January 1999;
“the old law” means the repealed Act and any other enactment or rule of law applying to existing registered marks immediately before 15th January 1999.
(2) For the purposes of this Schedule —
(a)
an application shall be treated as pending on 15th January 1999 if it was made but not finally determined before that date; and
(b)
the date on which it was made shall be the date of filing under the repealed Act.
Existing registered marks
2.—(1) Any existing registered mark, whether registered in Part A or B of the register kept under the repealed Act, is a registered trade mark for the purposes of this Act.
(2) Any existing registered mark registered as a certification trade mark in the register kept under the repealed Act is a registered certification mark for the purposes of this Act.
(3) Any existing registered mark registered as a series of trade marks in the register kept under the repealed Act is similarly registered in the new register for the purposes of this Act.
(4) In any other case, any note indicating that an existing registered mark is associated with any other mark shall cease to have effect on 15th January 1999.
3.—(1) A condition entered in the register kept under the repealed Act in relation to an existing registered mark immediately before 15th January 1999 shall cease to have effect on that date.
(2) Proceedings under section 39(3) of the repealed Act which are pending on 15th January 1999 shall be dealt with under the old law and any necessary alteration made to the new register.
(3) A disclaimer or limitation entered in the register kept under the repealed Act in relation to an existing registered mark immediately before 15th January 1999 shall be deemed to be transferred to the new register and have effect as if entered in the register in pursuance of section 30 of this Act.
Effects of registration: infringement
4.—(1) Sections 26 to 29 of this Act apply in relation to an existing registered mark as from 15th January 1999 and section 31 of this Act applies in relation to infringement of an existing registered mark committed after that date, subject to sub-paragraph (3).
(2) The old law continues to apply in relation to infringements committed before 15th January 1999.
(3) It is not an infringement of —
(a)
an existing registered mark; or
(b)
a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,
to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.
Infringing goods, material or articles
5. Section 33 of this Act shall apply to infringing goods, material or articles whether made before or after 15th January 1999.
Rights and remedies of licensee or authorised user
6.—(1) Section 44 of this Act shall apply to licences granted before 15th January 1999, but only in relation to infringements committed after that date.
(2) Paragraph 14 of the Second Schedule of this Act applies only in relation to infringements committed after 15th January 1999.
Co-ownership of registered mark
7.—(1) Subject to sub-paragraph (2), the provisions of section 37 of this Act apply as from 15th January 1999 to an existing registered mark of which 2 or more persons were immediately before that date registered as joint proprietors.
(2) So long as the relations between the joint proprietors remain such as are described in section 12(11) of the repealed Act, there shall be taken to be an agreement to exclude the operation of section 37(1) and (3) of this Act.
Assignment, etc., of registered mark
8.—(1) Section 38 of this Act shall apply to transactions and events occurring after 15th January 1999 in relation to an existing registered mark; and the old law continues to apply in relation to transactions and events occurring before that date.
(2) Entries in the register kept under the repealed Act relating to the assignment of registered trade marks and of the benefits of applications for registration of trade marks shall be deemed to be transferred on 15th January 1999 to the register kept under this Act and have effect as if made under section 39 of this Act.
(3) Provision may be made by rules for putting entries referred to in sub-paragraph (2) in the same form as is required for entries made under this Act.
(4) An application for registration of an assignment of a registered trade mark or of an assignment of the benefits of an application for registration of a trade mark, made to the Registrar before 15th January 1999, shall be treated as an application for registration under section 39 of this Act and shall proceed accordingly.
(5) The Registrar may require the applicant to amend his application so as to conform with the requirements of this Act.
(6) An application for registration under section 43 of the repealed Act which has been determined by the Registrar but not finally determined before 15th January 1999 shall be dealt with under the old law; and sub-paragraphs (2) and (3) shall apply in relation to any resulting entry in the register.
(7) Where before 15th January 1999 a person has become entitled by assignment or transmission to an existing registered mark but has not registered his title, any application for registration after that date shall be made under section 39 of this Act.
(8) In cases to which sub-paragraph (4) or (7) applies, section 43(2) of the repealed Act continues to apply (and section 39(3) and (4) of this Act do not apply) as regards the consequences of failing to register.
Licensing of registered mark
9.—(1) Sections 42 and 43(2) of this Act shall apply only in relation to licences granted after 15th January 1999; and the old law continues to apply in relation to licences granted before that date.
(2) Existing entries under section 30 of the repealed Act shall be deemed transferred on 15th January 1999 to the register kept under this Act and have effect as if made under section 39 of this Act.
(3) Provision may be made by rules for putting entries referred to in sub-paragraph (2) in the same form as is required for entries made under this Act.
(4) An application for registration as a registered user which is pending before the Registrar on 15th January 1999 shall be treated as an application for registration of a licence under section 39(1) of this Act and shall proceed accordingly.
(5) The Registrar may require the applicant to amend his application so as to conform with the requirements of this Act.
(6) An application for registration as a registered user which has been determined by the Registrar but not finally determined before 15th January 1999 shall be dealt with under the old law; and sub-paragraphs (2) and (3) shall apply in relation to any resulting entry in the register.
(7) Any proceedings pending on 15th January 1999 under section 30(9) or (10) of the repealed Act shall be dealt with under the old law and any necessary alteration made to the new register.
Pending applications for registration
10.—(1) Subject to paragraph 11, an application for registration of a mark under the old law which is pending on 15th January 1999 shall be dealt with under the old law, and if registered the mark shall be treated for the purposes of this Schedule as an existing registered mark.
(2) The power of the Minister under section 108 of this Act to make rules regulating practice and procedure, and as to the matters mentioned in subsection (2) of that section, is exercisable in relation to such an application; and different provision may be made for such applications from that made for other applications.
(3) Section 26 of the repealed Act shall be disregarded in dealing after 15th January 1999 with an application for registration.
(4) Subject to sub-paragraph (6), a mark shall not be registered under this paragraph if it contains or consists of a geographical indication in respect of a wine or spirit and the mark is used or intended to be used in relation to a wine or spirit not originating from the geographical origin indicated by the geographical indication.
(5) Sub-paragraph (4) shall apply whether or not the mark has, or is accompanied by, an indication of the true geographical origin of the wine or spirit (as the case may be) or an expression such as “kind”, “type”, “style”, “imitation” or the like, and irrespective of the language the geographical indication is expressed in that trade mark.
(6) A mark shall not be refused registration by virtue of sub-paragraph (4) if the application had been made in good faith, or if it had been used continuously in good faith in the course of trade by the applicant for its registration or his predecessor in title, either —
(a)
before 15th January 1999; or
(b)
before the geographical indication concerned is protected in its country of origin.
(7) A mark shall not be refused registration by virtue of sub-paragraph (4) if the geographical indication in question —
(a)
has ceased to be protected; or
(b)
has fallen into disuse,
in its country of origin.
Conversion of pending application
11.—(1) In the case of a pending application for registration which has not been advertised under section 18 of the repealed Act before 15th January 1999, the applicant may give notice to the Registrar claiming to have the registrability of the mark determined in accordance with the provisions of this Act.
(2) The notice must be in the relevant form published by the Registrar under section 76 of this Act, be accompanied by the appropriate fee and be given no later than 6 months after 15th January 1999.
(3) Notice duly given is irrevocable and has the effect that the application shall be treated as if made immediately after 15th January 1999.
Claim to priority from overseas application
12. Section 10 of this Act shall apply to an application for registration under this Act made after 15th January 1999 notwithstanding that the Convention application was made before that date.
13.—(1) Where, before 15th January 1999, a person has duly filed an application for protection of a trade mark in a foreign state to which section 75 of the repealed Act applies which is not a Convention country (referred to in this paragraph as a “relevant overseas application”), he, or his successor in title, has a right to priority, for the purposes of registering the same trade mark under this Act for some or all of the same goods or services, for a period of 6 months from the date of filing of the relevant overseas application.
(2) If the application for registration under this Act is made within that 6 month period —
(a)
the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the relevant overseas application; and
(b)
the registrability of the trade mark shall not be affected by any use of the mark in Singapore in the period between that date and the date of the application under this Act.
(3) Any filing which in a foreign state referred to in sub-paragraph (1) is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be deemed to give rise to the right of priority.
(4) For the purposes of sub-paragraph (3), a “regular national filing” means a filing which is adequate to establish the date on which the application was filed in that country, whatever may be the subsequent fate of the application.
(5) A subsequent application concerning the same subject as the relevant overseas application, filed in the same country, shall be considered the relevant overseas application (of which the filing date is the starting date of the period of priority), if at the time of the subsequent application —
(a)
the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and
(b)
it has not yet served as a basis for claiming a right of priority,
and the previous application may not thereafter serve as a basis for claiming a right of priority.
(6) The Minister may make rules to provide for the manner of claiming a right to priority on the basis of a relevant overseas application.
(7) A right to priority arising as a result of a relevant overseas application may be assigned or otherwise transmitted, either with the application or independently, and the reference in sub-paragraph (1) to the applicant’s “successor in title” shall be construed accordingly.
(8) Nothing in this paragraph shall affect proceedings on an application for registration under the repealed Act made before 15th January 1999.
Renewal of registration
14. Section 19 of this Act applies where the renewal of an existing registered mark falls due on or after 15th January 1999; and the old law continues to apply in any other case.
Pending application for alteration of registered mark
15. An application under section 38 of the repealed Act which is pending on 15th January 1999 shall be dealt with under the old law and any necessary alteration made to the new register.
REVOCATION FOR NON-use
16.—(1) An application under section 40 of the repealed Act which is pending on 15th January 1999 shall be dealt with under the old law and any necessary alteration made to the new register.
(2) An application under section 22(1) (a) or (b) of this Act may be made in relation to an existing registered mark at any time after 15th January 1999.
(3) However, no application referred to in sub-paragraph (2) for the revocation of the registration of an existing registered mark registered by virtue of section 41 of the repealed Act may be made until more than 5 years after 15th January 1999.
Application for rectification, etc.
17.—(1) An application under section 37 or 39 of the repealed Act which is pending on 15th January 1999 shall be dealt with under the old law and any necessary alteration made to the new register.
(2) For the purposes of proceedings under section 23 of this Act as it applies in relation to an existing registered mark, the provisions of this Act shall be deemed to have been in force at all material times, except that no objection to the validity of the registration of an existing registered mark may be taken on the ground specified in section 8(3) of this Act.
Regulations governing use of certification mark
18.—(1) Regulations governing the use of an existing registered certification mark transmitted to the Registrar in pursuance of section 68 of the repealed Act shall be treated after 15th January 1999 as if filed under paragraph 6 of the Second Schedule to this Act.
(2) Any request for amendment of the regulations which was pending on 15th January 1999 shall be dealt with under the old law.
Certificate of validity of contested registration
19. A certificate given before 15th January 1999 under section 54 of the repealed Act shall have effect as if given under section 102 of this Act.