Opposing an International Trade Mark Registration Designating Singapore
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 7 and 8 of the Trade Marks Act
- Rules 13 - 17 of the Trade Marks (International Registration) Rules
- Rules 72 - 76 of the Trade Marks Rules
1. An international trade mark registration which has been accepted for protection in Singapore shall be published in the Trade Marks Journal. Within 2 months after the date of publication, a person may oppose the protection of the trade mark by filing a notice of opposition in Form TM11. The procedure is as follows:
- File with us Form TM11 and a statement of grounds (together with payment of S$420 x number of opposed classes).
1a. The opponent may request for an extension of time to file the notice of opposition by filing Form HC3. The procedure is as follows:
- Within 2 months after the date of publication, file with us Form HC3.
- Send to the holder, 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.
1b. Upon receiving Form TM11, within 5 months after the date of publication, we will give notification of refusal to the International Bureau stating the matters relating to the opposition.
2. Within 4 months after the date of our notification of refusal based on opposition to the International Bureau, if the holder wishes to pursue the protection of the international registration in Singapore, he must file a counter-statement in Form HC6 that includes the grounds on which he relies as supporting his international registration designating Singapore; and the facts alleged in the notice of opposition which he admits, if any. The same Form HC6 must include an address for service in Singapore. The procedure is as follows:
- File with us Form HC6 (together with payment of S$360 x number of opposed classes).
- Send to the opponent a copy of the same Form HC6 at the same time that it is filed with us.
If these steps are not complied with, the holder’s request for protection in Singapore in respect of the opposed classes is treated as withdrawn.
2a. The holder may request for an extension of time to file the counter-statement by filing Form HC3. The procedure is as follows:
- Within 4 months after the date of our notification of refusal based on opposition to the International Bureau, file with us Form HC3.
- Send to the opponent, 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 opposition proceedings are suspended from the date that the counter-statement is filed. Parties will be encouraged to engage each other to explore dispute resolution options. Parties will receive the following documents:
- A Notification to Registrar form to be completed by each party and returned to us, copying the other party, within 1 month. The form includes a Request for WIPO Mediation form for parties' use if they wish to submit to mediation by the WIPO Arbitration and Mediation Center.
- An infosheet and Frequently Asked Questions on the Revised Enhanced Mediation Promotion Scheme by IPOS.
Parties may request for an extension of time to return the Notification to Registrar form to us by filing Form HC3. The procedure is as follows:
- Within 1 month after the date of our letter enclosing the Notification to Registrar form, 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 notice of opposition and counter-statement, in writing or in a Case Management Conference.
6. The opponent must file a statutory declaration setting out the evidence he wishes to adduce in support of the opposition. The procedure is as follows:
Counter-statement filed on or after
31 January 2017 | Counter-statement filed before
31 January 2017 |
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- Within the specified evidential deadline, file with us a statutory declaration in the Evidence by Initiator Form.
- Send to the holder a copy of the same statutory declaration at the same time that it is filed with us.
| - Within 3 months after the date of issuance of evidential timelines, file with us a statutory declaration in the Evidence by Initiator Form.
- Send to the holder a copy of the same statutory declaration at the same time that it is filed with us.
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If these steps are not complied with, the opponent is treated as having withdrawn the opposition.
6a. The opponent may request for an extension of time to file the statutory declaration by filing Form HC3. The procedure is as follows:
Counter-statement filed on or after
31 January 2017 | Counter-statement filed before
31 January 2017 |
|---|
- Within the specified evidential deadline, file with us Form HC3 (together with payment of S$120 x number of opposed classes).
- Send to the holder, 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.
| - Send a notice to the holder, and each person likely to be affected by the extension stating the intention to request for an extension of time, the amount of time requested for, and reason for the extension. In the same notice, seek the consent of the holder (and other person, if any) to the extension.
- Within 3 months after the date of issuance of evidential timelines, file with us Form HC3 (together with payment of S$120 x number of opposed classes, if it is not the first request). Attach a copy of the notice sent to the holder (and other person, if any), and the consent in writing, if given.
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7. After receipt of the opponent’s statutory declaration, if the holder wishes to pursue the protection of the international registration in Singapore, he must file a statutory declaration setting out the evidence he wishes to adduce in support of the application. The procedure is as follows:
Counter-statement filed on or after
31 January 2017 | Counter-statement filed before
31 January 2017 |
|---|
- Within the specified evidential deadline, file with us a statutory declaration in the Evidence by Respondent Form.
- Send to the opponent a copy of the same statutory declaration at the same time that it is filed with us.
| - Within 3 months after the date of receipt of the opponent’s statutory declaration, file with us a statutory declaration in the Evidence by Respondent Form.
- Send to the opponent a copy of the same statutory declaration at the same time that it is filed with us.
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If these steps are not complied with, the holder’s request for protection in Singapore in respect of the opposed classes is treated as withdrawn.
7a. The holder may request for an extension of time to file the statutory declaration by filing Form HC3. The procedure is as follows:
Counter-statement filed on or after
31 January 2017 | Counter-statement filed before
31 January 2017 |
|---|
- Within the specified evidential deadline, file with us Form HC3 (together with payment of S$120 x number of opposed classes).
- Send to the opponent, 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.
| - Send a notice to the opponent, and each person likely to be affected by the extension stating the intention to request for an extension of time, the amount of time requested for, and reason for the extension. In the same notice, seek the consent of the opponent (and other person, if any) to the extension.
- Within 3 months after the date of receipt of the opponent’s statutory declaration, file with us Form HC3 (together with payment of S$120 x number of opposed classes, if it is not the first request). Attach a copy of the notice sent to the opponent (and other person, if any), and the consent in writing, if given.
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8. Optionally, after receipt of the holder’s statutory declaration, the opponent may file a statutory declaration setting out the opponent’s evidence in reply to the holder’s statutory declaration. The procedure is as follows:
Counter-statement filed on or after
31 January 2017 | Counter-statement filed before
31 January 2017 |
|---|
- Within the specified evidential deadline, file with us a statutory declaration in the Evidence in reply by Initiator Form.
- Send to the holder a copy of the same statutory declaration at the same time that it is filed with us.
| - Within 3 months after the date of receipt of the holder’s statutory declaration, file with us a statutory declaration in the Evidence in reply by Initiator Form.
- Send to the holder a copy of the same statutory declaration at the same time that it is filed with us.
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After this stage, no further evidence may be filed unless we specifically allow.
8a. The opponent may request for an extension of time to file the statutory declaration in reply by filing Form HC3. The procedure is as follows:
Counter-statement filed on or after
31 January 2017 | Counter-statement filed before
31 January 2017 |
|---|
- Within the specified evidential deadline, file with us Form HC3 (together with payment of S$120 x number of opposed classes).
- Send to the holder, 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.
| - Send a notice to the holder, and each person likely to be affected by the extension stating the intention to request for an extension of time, the amount of time requested for, and reason for the extension. In the same notice, seek the consent of the holder (and other person, if any) to the extension.
- Within 3 months after the date of receipt of the holder’s statutory declaration, file with us Form HC3 (together with payment of S$120 x number of opposed classes, if it is not the first request). Attach a copy of the notice sent to the applicant (and other person, if any), and the consent in writing, if given.
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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. 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.
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.
13. After we issue a decision, costs will usually be awarded to the winning party. The parties should try to agree on the sum for these costs between themselves. If the parties cannot agree on the sum to be paid to the winning party, the winning party can apply for an assessment of costs. This is done by filing with us a bill of costs within 6 weeks after the date of our decision. Send to the other party a copy of the same bill of costs at the same time that it is filed with us.
The paying party can object to any of the itemised costs by marking the bill of costs with “Agree” or “Disagree” against each itemised cost. This is done by filing with us a marked bill of costs within 1 month after receipt of the bill of costs. Send to the other party a copy of the same marked bill of costs at the same time that it is filed with us.
The matter will be fixed for an assessment of costs. We will award costs according to the Scale of Costs in the Fourth Schedule of the Trade Marks Rules, which sets out the range of costs a party may be awarded for each particularised item. It should be noted that the costs awarded are not intended to compensate parties for their expense. We will make the Registrar's certificate for the amount of the assessed costs.