Revoking or Invalidating a Registered Trade Mark

If you are facing the prospect of (or are currently involved in) a dispute and do not have legal representation, we strongly recommend that you seek legal assistance.

Key Legislative Provisions:

• Sections 22 and 23 of the Trade Marks Act

• Rules 57 - 60 and 72 - 76 of the Trade Marks Rules

1. A person may apply to revoke or invalidate a registered trade mark by filing an application for revocation or declaration of invalidity. The procedure is as follows:

• File with us Form TM28 and a statement of grounds (together with payment of S$420 x number of classes for which the revocation or declaration of invalidity is sought).

• Send to the proprietor a copy of the same Form TM28 and statement of grounds at the same time that they are filed with us.

2. Within 2 months after the date of receipt of the application for revocation or declaration of invalidity from the applicant, if the proprietor wishes to maintain the registration of the trade mark, he must file a counter-statement in Form HC6 that includes the grounds on which he relies as supporting his registration; and the facts alleged in the application which he admits, if any. The procedure is as follows:

• File with us Form HC6 (together with payment of S$360 x number of classes for which the revocation or declaration of invalidity is sought). In the case of an application for revocation based on grounds of non-use, a statutory declaration setting out evidence of the use by the proprietor must also be filed.

• Send to the applicant a copy of the same Form HC6 (and evidence of use, where applicable) at the same time that it is filed with us.

If these steps are not complied with, the application for revocation or declaration of invalidity shall be granted.

2a. The proprietor may request for an extension of time to file the counter-statement by filing Form HC3. The procedure is as follows:

• Within 2 months after the date of receipt of the application for revocation or declaration of invalidity from the applicant, file with us Form HC3.

• Send to the applicant, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.

3. The revocation or invalidation proceedings are suspended from the date that the counter-statement is filed. We will send a letter to encourage parties to engage each other to explore dispute resolution options. Each party is to complete and file a Notification to Registrar form, copying the other party, within 1 month after the date of our letter.

Parties may request for an extension of time to file the Notification to Registrar form. The procedure is as follows:

• Within 1 month after the date of our letter, file with us Form HC3 (together with payment of S$120).

• Send to the other party, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.

4. Click here to learn more about the mediation option for IPOS proceedings and the available funding under the Revised Enhanced Mediation Promotion Scheme. Once parties let us know of their intention to mediate, we will generally suspend the IPOS proceedings for mediation to take its course. The parties may set aside 30, 60 or 90 days for mediation. This period may be extended upon further request and justification by parties.

Notwithstanding the specific incorporation of the mediation option to the procedure after the counter-statement is filed, parties may request for mediation at any time before we decide on the outcome of the case.

4a. Within 2 weeks after the end of the mediation, parties should inform us in writing of the outcome of the mediation. If there are any remaining issues in the dispute to be heard by IPOS, we will give further directions on the conduct of the case in writing or in a Case Management Conference.

5. We will resume conduct of the proceedings. We will specify deadlines for the filing of evidence and raise any issues with the application for revocation or declaration of invalidity and counter-statement, in writing or in a Case Management Conference.

6. The applicant for declaration of invalidity must file a statutory declaration setting out the evidence he wishes to adduce in support of the application. This is optional for the applicant for revocation based on grounds of non-use. The procedure is as follows:

• Within the specified evidential deadline, file with us a statutory declaration in the Evidence by Initiator Form.

• Send to the proprietor a copy of the same statutory declaration at the same time that it is filed with us.

If these steps are not complied with, the applicant for declaration of invalidity is treated as having withdrawn the application.

6a. The applicant may request for an extension of time to file the statutory declaration by filing Form HC3. The procedure is as follows:

• Within the specified evidential deadline, file with us Form HC3 (together with payment of S$120 x number of classes for which the revocation or declaration of invalidity is sought).

• Send to the proprietor, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.

7. After receipt of the applicant’s statutory declaration, the proprietor may file a statutory declaration setting out the evidence he wishes to adduce in support of his case. The procedure is as follows:

• Within the specified evidential deadline, file with us a statutory declaration in the Evidence by Respondent Form.

• Send to the applicant a copy of the same statutory declaration at the same time that it is filed with us.

If these steps are not complied with, the proprietor is deemed to have admitted to the facts alleged by the applicant in his application for declaration of invalidity. We will direct parties to inform us in writing how they intend to proceed.

7a. The proprietor may request for an extension of time to file the statutory declaration by filing Form HC3. The procedure is as follows:

• Within the specified evidential deadline, file with us Form HC3 (together with payment of S$120 x number of classes for which the revocation or declaration of invalidity is sought).

• Send to the applicant, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.

8. Optionally, after receipt of the proprietor’s statutory declaration, the applicant may file a statutory declaration setting out the applicant’s evidence in reply to the proprietor’s statutory declaration. The procedure is as follows:

• Within the specified evidential deadline, file with us a statutory declaration in the Evidence in reply by Initiator Form.

• Send to the proprietor a copy of the same statutory declaration at the same time that it is filed with us.

After this stage, no further evidence may be filed unless we specifically allow.

8a. The applicant may request for an extension of time to file the statutory declaration in reply by filing Form HC3. The procedure is as follows:

• Within the specified evidential deadline, file with us Form HC3 (together with payment of S$120 x number of classes for which the revocation or declaration of invalidity is sought).

• Send to the proprietor, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.

9. At any time after the completion of the filing of evidence by the parties, we may direct the parties to attend a pre-hearing review. We 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 us information.

10. We will notify the parties of a date on which we will hear arguments on the case. The parties shall file with us their written submissions and bundles of authorities at least 1 month before the date of hearing and shall at the same time exchange with one another their respective written submissions and bundles of authorities. The parties shall also make brief submissions on costs in their written submissions, in order to facilitate a summary assessment of costs. Any party who intends to appear at the hearing shall file with us Form HC1 (together with payment of S$1,000 for the first class and S$800 for each subsequent class) before the hearing.

11. After the hearing, we will inform the parties of our grounds of decision as soon as practicable. We will reflect the summary assessment of costs in the grounds of decision and make the Registrar's certificate for the amount of the assessed costs.

12. The parties can appeal our decision within 28 days after the date of our decision. An appeal should be filed at the General Division of the High Court. The appellant shall serve a copy of the notice of appeal on us and on the respondent within 7 days after filing the notice of appeal.