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Amendments to Trade Marks Rules
Posted on Thursday, January 05, 2006 - 12:00 AM

The Notifications were gazetted on 28 December 2005 and it declared that the Trade Marks (Amendment) Rules 2005 and Trade Marks (International Registration) (Amendment) Rules 2005 would come into operation on 1 January 2006.

The following is a summary of some of the amendments which will come into force on 1 January 2006:

Trade Marks AAmendment) Rules 2005

(a) Rule 7 : Service of documents
Non-fee bearing documents (except documents pertaining to hearings) may be sent to the Registry by facsimile transmission. However, each facsimile transmitted document must be legible and the responsibility for ensuring legibility rests with the sender.

(b) Rule 9 : Address for service
An address for service indicated on Form TM 19 and Form TM 24 is effective only for renewal maters and does not become the proprietor’s address for service for all other matters pertaining to that trade mark.

(c) Rule 21 : Deficiencies in application
The amendment clarifies the actions that will be taken by the Registry if minimum filing requirements are not met.

(d) Rules 32, 33, 34 : Extension of time to file evidence by way of a statutory declaration in opposition/revocation/invalidation/rectification proceedings
The second and subsequent requests for extension of time to file evidence by way of a statutory declaration in opposition/revocation/invalidation/ rectification proceedings have to be made on Form TM 50, for which a fee will be imposed.

(e) Rule 50 : Notice of renewal
The Registrar’s notice to the proprietor informing him of the date of expiry of the trade mark registration will be sent to the proprietor’s address for service for renewal purposes, that is, the address for service indicated on Form TM 19 or Form TM 24, if one has been lodged, or if none, to the proprietor’s address for service.

(f) Rule 77B : Restoration of applications treated as withdrawn
Applications which are treated as withdrawn under the Act or Rules by reason that the applicant has failed to do any act on time may be restored by filing Form TM 40 with fee within three months from the date of the Registrar’s notice informing the applicant of that fact.

(g) Removal of Forms TM 9, TM 14, TM 15 and TM 16
Forms TM 9, TM 14, TM 15 and TM 16 have been removed and Forms TM 4, TM 11, TM 12 and TM 13 respectively will be used in their place.

Trade Marks (International Registration) (Amendment) Rules 2005

The following is a summary of some of the amendments in the Trade Marks (International Registration) (Amendment) Rules 2005 which will come into force on 1 January 2006:

(a) Rule 5 : Specification of Goods/Services
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.

(b) Rule 28 : Notification to International Bureau
The amendment clarifies that in relation to an international application, the Registry will notify the International Bureau where the basic application is treated as withdrawn and is not restored in accordance with the Trade Marks Rules.

Amendment of Trade Mark Forms

Some trade mark forms have been revised and the revised forms are to be used from 1 January 2006. A separate edition of the Trade Marks Journal containing a consolidation of forms to be used in proceedings before the Registrar will be available online at www.ipos.gov.sg from 30 December 2005.

The changes made to the forms are as follows:

(a) All forms have been amended to incorporate information on the estimated time needed to complete the form.

(b) Amendments have also been made to Forms TM 1, TM 4, TM 11, TM 12, TM 13, TM 19, TM 22, TM 24, TM 37 and MP 1.

(c) Form TM 4, TM 11, TM 12 and TM 13 will now be used in place of Forms TM 9, TM 14, TM 15 and TM 16 respectively.

(d) The Trade Marks (Amendment) Rules 2005 also introduce:
I. Form TM 40 for restoration of an application treated as withdrawn. The fee for this form is $130; and
II. Form TM 50 for second and subsequent requests for extension of time to file evidence by way of a statutory declaration in opposition/revocation/invalidation/rectification proceedings. The fee for this form is $100 in respect of each trade mark.

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