Reglamento sobre el Registro Internacional de Marcas (Edición Revisada de 2002), Singapur, WIPO Lex

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Inglés Trade Marks (International Registration) Rules (Revised Edition 2002)

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TRADE MARKS ACT (CHAPTER 332, SECTIONS 54 AND 108) TRADE MARKS (INTERNATIONAL REGISTRATION) RULES

TRADE MARKS ACT

(CHAPTER 332, SECTIONS 54 AND 108)

TRADE MARKS (INTERNATIONAL REGISTRATION) RULES

History

G.N. NO. S 490/2000

R3 2002 REVISED EDITION

[31st October 2000]

Arrangement of Provisions

PART I PRELIMINARY 1 Citation 2 Definitions 3 Fees 4 Forms

PART II INTERNATIONAL REGISTRATIONS DESIGNATING SINGAPORE 5 Entitlement to protection 5A No division of international registration designating Singapore 6 Effects of protected international trade mark (Singapore) 7 Protected international trade mark (Singapore) as object of property 8 Notification of transactions 9 Licensing 10 Priority 11 Examination 12 Publication 13 Notice of opposition 14 Counter-statement 15 Further procedures 16 Notifications of refusal 17 Protection 18 Revocation and invalidity 19 Effect of acquiescence 20 Certificate of validity of contested registration 21 Importation of infringing goods 22 Offences 23 Falsely representing trade mark as protected international trade mark (Singapore)

PART III TRANSFORMATION OF INTERNATIONAL REGISTRATION INTO NATIONAL APPLICATION 24 Transformation application 25 Procedure on transformation application

PART IV CONCURRENT REGISTRATIONS 26 Effects of international registration where trade mark is also registered under Act

PART V INTERNATIONAL APPLICATIONS ORIGINATING IN SINGAPORE APPLICATION FOR INTERNATIONAL REGISTRATION 27 Application for international registration 28 Notification to International Bureau

PART VI MISCELLANEOUS PROVISIONS 29 Evidence of certain matters relating to international registration 30 Agents 31 Burden of proving use of protected international trade mark (Singapore) 32 Communication of information to International Bureau 33 Transmission of fees to International Bureau 34 Application of Trade Marks Rules

FIRST SCHEDULE FEES

SECOND SCHEDULE DESCRIPTIONS OF FORMS

Actual Provisions

TRADE MARKS ACT

(CHAPTER 332, SECTIONS 54 AND 108)

TRADE MARKS (INTERNATIONAL REGISTRATION) RULES

[31st October 2000]

PART I

PRELIMINARY

Citation

1.—These Rules may be cited as the Trade Marks (International Registration) Rules.

Definitions

2.—In these Rules, unless the context otherwise requires —

"Common Regulations" means the regulations adopted under Article 10 of the Madrid Protocol, with effect from 1st April 1996, as replaced, revised or amended from time to time;

"international application" means an application to the International Bureau for registration of a trade mark in the International Register;

"International Bureau" means the International Bureau of the World Intellectual Property Organisation;

"International Register" means the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol;

"international registration" means the registration of a trade mark in the International Register;

"international registration designating Singapore" means an international registration in which a request has been made (either in the relevant international application or subsequently) for extension of protection to Singapore under Article 3ter (1) or (2) of the Madrid Protocol;

“protected international trade mark (Singapore)” has the meaning given by rule 17, and references to “protection” and “protected” shall be construed accordingly.

Fees

3.—(1) The fees set out in the First Schedule shall be payable to the Registrar in respect of the matters set out in that Schedule.

(2) In any case where a form specified in the First Schedule as the corresponding form in relation to any matter is required to be used, that form shall be accompanied by the fee specified in respect of that matter.

Forms

4.—(1) The Registrar shall publish in the Trade Marks Journal —

(a) the forms referred to in these Rules;

(b) the Registrar’s directions relating to the use of any form; and

(2) Any form may be modified on the direction of the Registrar for use in a case other than the case for which it is intended.

(3) The Registrar may accept, in lieu of any form, any document which is filed with the Registry for any purpose for which the form was published but which deviates from the form, if the document —

(a) complies with every direction of the Registrar relating to the use of the form; and

(b) is in a format that is acceptable to the Registrar.

(4) Any reference in these Rules to a numbered form shall be construed as a reference to the current version of the form bearing the corresponding number which is —

(a) described —

(i) in the case of Forms MP 1, MP 2 and MP 3, in the Second Schedule; or

(ii) in the case of any other form, in the Second Schedule to the Trade Marks Rules (R 1); and

(b) published in the Trade Marks Journal.

PART II

INTERNATIONAL REGISTRATIONS DESIGNATING SINGAPORE

Entitlement to protection

5.—(1) Subject to the provisions of rules 11 to 17, an international registration designating Singapore shall be entitled to become protected where, if the particulars of the international registration were comprised in an application for registration of a trade mark under the Act, such an application would satisfy the requirements for registration of a trade mark under the Act, including any imposed by the Trade Marks Rules.

(2) For the purpose of paragraph (1), sections 5 and 6 of the Act and rules 9, 15, 16, 18, 19 (1), (2) (a) and (b) (i), (ii) (B) and (iii) and (3), 20 and 21 of the Trade Marks Rules shall be disregarded.

No division of international registration designating Singapore

5A.—Section 5A of the Act and rule 17 of the Trade Marks Rules (R 1) shall not apply to an international registration designating Singapore.

Effects of protected international trade mark (Singapore)

6.—(1) The proprietor of a protected international trade mark (Singapore) has, subject to the provisions of these Rules, the same rights and remedies as are given by or under sections 26 to 29 and 31 to 34 of the Act to the proprietor of a registered trade mark.

(2) Paragraph (1) is subject to the provisions relating to acts not amounting to infringement and exhaustion which are applicable to a registered trade mark by virtue of sections 28 and 29 of the Act, respectively.

(3) For the purposes of the application of section 26 of the Act —

(a) the rights of the proprietor shall have effect as of the date on which the protected international trade mark (Singapore) is to be treated as registered under rule 17 or 26; and

(b) a protected international trade mark (Singapore) shall be treated as being in fact registered when it becomes protected under rule 17.

(4) For the purposes of paragraph (1), references in sections 27 and 28 of the Act to goods or services in respect of which a trade mark is registered shall be treated as references to goods or services in respect of which a protected international trade mark (Singapore) confers protection in Singapore.

(5) Where the holder of an international registration designating Singapore, by notice in writing sent to the Registrar —

(a) disclaims any right to the exclusive use of any specified element of the trade mark; or

(b) agrees that the rights conferred in Singapore by the international registration shall be subject to a specified territorial or other limitation,

the Registrar shall enter the disclaimer or limitation in the register and shall publish the disclaimer or limitation.

(6) Where a protected international trade mark (Singapore) is subject to a disclaimer or limitation, the rights conferred in relation to it by the application of section 26 of the Act are restricted accordingly.

(7) The remedy for groundless threats of infringement proceedings given by section 35 of the Act applies to a protected international trade mark (Singapore) as it applies in relation to a registered trade mark.

(8) For the purpose of paragraph (7) —

(a) the reference in section 35 (4) of the Act to the registration of the trade mark shall be treated as a reference to the protection of a protected international trade mark (Singapore); and

(b) the reference in section 35 (5) of the Act to notification that a trade mark is registered, or that an application for registration has been made, shall be treated as a reference to notification that a trade mark is a protected international trade mark (Singapore) or is the subject of an international application or international registration designating Singapore.

Protected international trade mark (Singapore) as object of property

7.—The provisions of sections 36, 37, 38 and 40 of the Act shall, with the necessary modifications, apply in relation to a protected international trade mark (Singapore) as they apply in relation to a registered trade mark.

Notification of transactions

8.—(1) The following are notifiable transactions for the purpose of this rule:

(a) the grant of a licence under a protected international trade mark (Singapore);

(b) the granting of any security interest (whether fixed or floating) over a protected international trade mark (Singapore) and any right in or under it.

(2) On application being made to the Registrar by —

(a) a person claiming to be entitled to an interest in or under a protected international trade mark (Singapore) by virtue of a notifiable transaction; or

(b) any other person claiming to be affected by such a transaction,

the relevant particulars of the transaction shall be entered in the register.

(3) The following are relevant transactions for the purpose of this rule:

(a) Deleted by S 372/2004, wef 01/07/2004.

(b) an assignment of a protected international trade mark (Singapore) or any right in it;

(c) the making by personal representatives of an assent in relation to a protected international trade mark (Singapore) or any right in or under it;

(d) an order of the Court or other competent authority transferring a protected international trade mark (Singapore) or any right in or under it.

(4) Until —

(a) in the case of any notifiable transaction referred to in paragraph (1) (b), an application has been made for the registration of the relevant particulars of the transaction; or

(b) in the case of any relevant transaction, the transaction has been recorded in the International Register,

the transaction is ineffective as against a person acquiring an interest in or under the protected international trade mark (Singapore) in ignorance of it.

(5) A person who becomes the proprietor of a protected international trade mark (Singapore) by virtue of any notifiable transaction referred to in paragraph (1) (b) or relevant transaction is not entitled to damages, an account of profits or statutory damages under section 31 (5) (c) of the Act in respect of any infringement of the protected international trade mark (Singapore) occurring after the date of the transaction and before the transaction is recorded in the International Register.

(5A) For the avoidance of doubt, paragraph (4) shall not apply to any relevant transaction relating to —

(a) a licence under a protected international trade mark (Singapore); or

(b) any right in or under the licence.

(6) In this rule, “relevant particulars” means —

(a) in the case of the grant of a licence under a protected international trade mark (Singapore) —

(i) the name and address of the licensee;

(ii) where the licence is an exclusive licence, that fact;

(iii) where the licence is limited, a description of the limitation; and

(iv) the duration of the licence if the same is, or is ascertainable as, a definite period;

(b) in the case of the grant of any security interest over a protected international trade mark (Singapore) or any right in or under it —

(i) the name and address of the grantee;

(ii) the nature of the interest (whether fixed or floating); and

(iii) the extent of the security and the right in or under the trade mark secured.

Licensing

9.—(1) The provisions of sections 42 to 45 of the Act shall, with the necessary modifications, apply in relation to licences to use a protected international trade mark (Singapore) as they apply in relation to licences to use a registered trade mark.

(2) The reference in section 42 (2) of the Act to goods or services for which a trade mark is registered shall be treated as a reference to goods or services in respect of which a trade mark is protected in Singapore.

Priority

10.—(1) Subject to paragraph (2), the provisions of section 10 of the Act shall apply so as to confer a right of priority in relation to protection of an international registration designating Singapore, as they apply in relation to registering a trade mark under the Act.

(2) The manner of claiming priority shall be determined in accordance with the Madrid Protocol and the Common Regulations.

Examination

11.—(1) Upon receiving from the International Bureau notification of an international registration designating Singapore, the Registrar shall examine whether it satisfies the requirements of rule 5.

(2) For the purpose of paragraph (1), the Registrar may carry out a search, to such extent as he considers necessary, of earlier trade marks.

(2A) Where the mark to which the international registration relates contains or consists of a word or words in characters other than Roman or in a language other than English, the Registrar may require the holder to file with the Registrar a copy of a translation or, if the case requires, transliteration, of each word in English, certified or verified to the satisfaction of the Registrar.

(3) If it appears to the Registrar that the requirements of rule 5 are not met, or are met only in relation to some of the goods or services in respect of which protection in Singapore has been requested, he shall give notification of refusal to the International Bureau.

(4) The notification of refusal shall specify a period within which the holder may make representations.

(5) If the holder requires an extension of time to make representations, he shall file with the Registrar his request for an extension of time on Form TM 49 before the expiry of the period in question or any extended period previously granted by the Registrar.

(6) A holder making representations shall file with the Registrar an address for service in Singapore on Form TM 1.

(7) The request referred to in paragraph (5), and the address for service referred to in paragraph (6), may be filed using the electronic online system within the meaning of the Trade Marks Rules (R 1).

Publication

12.—Where following examination it appears to the Registrar that the requirements of rule 5 are met in relation to some or all of the goods or services comprised in the international registration, the Registrar shall publish the particulars of the international registration in the Trade Marks Journal.

Notice of opposition

13.—(1) A person (referred to in these Rules as the opponent) may, within 2 months from the date of the publication of the international registration in the Trade Marks Journal, file with the Registrar a notice opposing the conferring of protection on the international registration (referred to in these Rules as the notice of opposition) in Form TM 11.

(2) The opponent shall enter an address for service in Singapore in the form referred to in paragraph (1).

(3) Deleted by S 597/2008, wef 01/12/2008.

(4) Rules 29 (3) to (8) and 30 of the Trade Marks Rules (R 1) shall, with the necessary modifications, apply to the filing and contents of a notice of opposition.

(5) For the purposes of applying rule 29 (3) to (8) of the Trade Marks Rules —

(a) a reference in that rule to the date of the publication of the application for registration shall be treated as a reference to the date of publication of the international registration in the Trade Marks Journal; and

(b) a reference in that rule to the applicant shall be treated as a reference to the holder.

(6) Upon filing of a notice of opposition, the Registrar shall, within 5 months from the date of the publication of the international registration in the Trade Marks Journal, give notification of refusal to the International Bureau stating the matters relating to the opposition.

Counter-statement

14.—(1) Within 4 months from the date of the Registrar’s notification of refusal based on opposition to the International Bureau, the holder shall file with the Registrar —

(a) a counter-statement in Form TM 12 setting out the grounds on which he relies as supporting the international registration designating Singapore, and the facts alleged in the notice of opposition which he admits, if any (referred to in these Rules as a counter-statement); and

(b) an address for service in Singapore in Form TM 1.

(2) Deleted by S 597/2008, wef 01/12/2008.

(3) The holder shall at the same time serve on the opponent a copy of both documents

(4) A request for an extension of time to file the counter-statement shall be made to the Registrar in writing within 4 months from the date of the Registrar’s notification of refusal based on opposition to the International Bureau.

(5) The total extension of time for which the Registrar may allow to file the counter-statement shall not exceed 6 months from the date of the Registrar’s notification of refusal based on opposition to the International Bureau.

(6) Before making a request for an extension of time, the holder 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 holder'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 holder fails to show a good and sufficient reason for the extension; or

(b) if the holder 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, the Registrar may, if he is satisfied that a good and sufficient reason has been shown for the extension, grant the extension; and the Registrar may do so without having to conduct a hearing in accordance with rule 67 of the Trade Marks Rules (R 1).

(10) For the avoidance of doubt, if the holder fails to comply with paragraph (1) or (3) in relation to any class of goods or services in respect of which protection is opposed, the Registrar shall be entitled to treat the holder’s request for protection in Singapore in respect of those goods or services as withdrawn, and the refusal shall subsist in respect of those goods or services.

Further procedures

15.—(1) Upon the filing of a notice of opposition under rule 13 and a counter-statement under rule 14, rules 32 to 40 of the Trade Marks Rules shall, with the necessary modifications, apply to further proceedings thereon.

(2) For the purposes of applying rules 32 to 40 of the Trade Marks Rules —

(a) a reference in those rules to the applicant shall be treated as a reference to the holder; and

(b) a reference in those rules to the application shall be treated as a reference to the international registration designating Singapore.

Notifications of refusal

16.—(1) Except where refusal is based on an opposition, a notification of refusal shall not be given after the expiry of 18 months from the date on which the notification of the international registration designating Singapore was sent to the Registrar.

(2) Where there is a possibility that opposition may be filed after the expiry of the period of 18 months, the Registrar shall inform the International Bureau accordingly.

(3) A notification of refusal shall set out the matters required by Article 5 of the Madrid Protocol and Rule 17 of the Common Regulations.

(4) Where —

(a) after a notification of refusal has been given under rule 11 (3), the holder makes representations within the period specified in rule 11 (4) or any extended period; or

(b) after a notification of refusal based on opposition has been given under rule 13 (6), the holder files a counter-statement within the period specified in rule 14 (1) or any extended period,

the Registrar shall, upon a final decision being made in relation to the refusal, notify the International Bureau of that decision.

(5) For the purposes of paragraph (4), a final decision shall be regarded as being made where —

(a) the Registrar or the Court on appeal from the Registrar decides whether the refusal shall be upheld, in whole or in relation to only some of the goods or services in relation to which protection in Singapore is requested, and any right of appeal against that decision expires or is exhausted;

(b) the representations or counter-statement is withdrawn; or

Protection

17.—(1) Where —

(a) after examination and publication under rules 11 and 12 —

(i) the period of 18 months from the date on which the notification of the request for extension of protection to Singapore was sent to Singapore has not expired, but the period for giving notification of refusal based on an opposition in accordance with rule 13 (6) expires without a notification of refusal (whether based on opposition or otherwise) having been given;

(ii) the period of 18 months from the date on which the notification of the request for extension of protection to Singapore was sent to Singapore has expired, and the period for giving notice of opposition specified in rule 13 (1) (including any extended period) expires without a notice of opposition having been given;

(iii) notification of refusal has been given in respect of only some of the goods or services in respect of which protection in Singapore has been requested and the holder has made no representations within the period specified in rule 11 (4) (including any extended period) or has filed no counter-statement within the period specified in rule 14 (1) (including any extended period), as the case may be; or that the holder has informed the Registrar that he does not intend to make such representations or file a counter-statement; or

(iv) notification of refusal has been given in respect of all or some of the goods or services in respect of which protection in Singapore has been requested and the Registrar notifies the International Bureau in accordance with rule 16 (4) that a final decision has been made that the refusal is withdrawn, or is withdrawn in respect of some of the goods or services in respect of which protection in Singapore has been requested; or

(b) the period of 18 months from the date on which the notification of the request for extension of protection to Singapore was sent to Singapore expires without any notification of refusal having been given and without the International Bureau having been informed that oppositions may be filed after the expiry of that period,

the trade mark which is the subject of the request for protection shall thereupon be protected as a protected international trade mark (Singapore); and in a case where a refusal subsists in respect of some of the goods or services in respect of which protection in Singapore has been requested, protection shall apply only as regards the remaining goods or services.

(2) For the purposes of the application by these Rules of the provisions of the Act, a trade mark so protected shall be treated as being registered under the Act as of —

(a) where the request for extension of protection to Singapore is mentioned in the international application, the date of the international registration; or

(b) where the request for such extension is made subsequently to the international registration, the date on which the request is recorded in the International Register.

(3) Paragraph (2) is subject to rule 26.

Revocation and invalidity

18.—(1) The provisions of sections 22 and 23 of the Act shall, with the necessary modifications, apply so as to permit the protection of a protected international trade mark (Singapore) to be revoked or declared invalid.

(2) For the purposes of applying sections 22 and 23 of the Act —

(a) the reference in section 22 (1) of the Act to the date of completion of the registration procedure shall be treated as a reference to the date the protected international trade mark (Singapore) became protected;

(b) the reference in section 22 (2) of the Act to the form in which a trade mark was registered shall be treated as a reference to the form in which it is protected;

(c) references in sections 22 (6) and 23 (9) of the Act to goods or services for which the trade mark is registered shall be treated as references to those in respect of which it is protected;

(d) references in section 22 of the Act to the registration of a trade mark being revoked shall be treated as references to the protection of a protected international trade mark (Singapore) being revoked; and

(e) references in section 23 of the Act to the registration of a trade mark being declared invalid shall be treated as references to the protection of a protected international trade mark (Singapore) being declared invalid.

(3) The provisions of rules 57 to 60 of the Trade Marks Rules (R 1) shall, with the necessary modifications, apply to the procedure upon an application for revocation or a declaration of invalidity of protection of a protected international trade mark (Singapore).

(4) Where the protection of a protected international trade mark (Singapore) is revoked or declared invalid to any extent, the Registrar shall notify the International Bureau and —

(a) in the case of a revocation, the rights of the proprietor shall be deemed to have ceased to exist to that extent as from the date of the application for revocation, or if the Registrar or the Court is satisfied that the grounds for revocation existed at an earlier date, that date;

(b) in the case of a declaration of invalidity, the trade mark shall to that extent be deemed never to have been a protected international trade mark (Singapore), but this shall not affect transactions past and closed as at the date when the invalidity is recorded in the International Register.

Effect of acquiescence

19.—(1) Section 24 of the Act applies where the proprietor of an earlier trade mark has acquiesced for a continuous period of 5 years in the use of a protected international trade mark (Singapore).

(2) For the purpose of applying section 24 of the Act —

(a) the reference in that section to a registered trade mark shall be treated as a reference to a protected international trade mark (Singapore); and

(b) references in that section to registration shall be treated as references to protection of a protected international trade mark (Singapore).

Certificate of validity of contested registration

20.—The provisions of section 102 of the Act shall, with the necessary modifications, apply in relation to proceedings before the Court in which the validity of the protection of a protected international trade mark (Singapore) is contested.

Importation of infringing goods

21.—(1) The provisions of Part X of the Act and the Trade Marks (Border Enforcement Measures) Rules (R 2) shall, with the necessary modifications, apply in relation to goods which are, in relation to a protected international trade mark (Singapore), infringing goods within the meaning of section 3 of the Act.

(2) For the purpose of paragraph (1), references in section 3 and Part X of the Act and in the Trade Marks (Border Enforcement Measures) Rules to a registered trade mark shall be treated as references to a protected international trade mark (Singapore).

Offences

22.—(1) The provisions of sections 46 to 49 and 53 of the Act shall, with the necessary modifications, apply in relation to a protected international trade mark (Singapore).

(2) For the purpose of the application of those provisions —

(a) references in those provisions to a registered trade mark shall be treated as references to a protected international trade mark (Singapore); and

(b) references in those provisions to goods or services for which a trade mark is registered shall be treated as references to goods or services in respect of which a protected international trade mark (Singapore) confers protection in Singapore.

Falsely representing trade mark as protected international trade mark (Singapore)

23.—Any person who —

(a) falsely represents that a mark is a protected international trade mark (Singapore); or

(b) makes a false representation as to the goods or services for which a protected international trade mark (Singapore) confers protection in Singapore,

knowing or having reason to believe that the representation is false shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000.

PART III

TRANSFORMATION OF INTERNATIONAL REGISTRATION INTO NATIONAL APPLICATION

Transformation application

24.—(1) The provisions of this rule shall apply where —

(a) an international registration designating Singapore is cancelled at the request of the Office of Origin under Article 6 (4) of the Madrid Protocol in respect of all or some of the goods or services listed in the registration;

(b) an application (referred to in this Part as a transformation application) is made to the Registrar, within 3 months from the date on which the international registration was cancelled, for registration in Singapore of a trade mark identical to that comprised in the international registration in respect of all or some of the goods or services in respect of which the international registration was cancelled; and

(c) the application is made by the person who was the holder of the international registration immediately before its cancellation.

(2) A transformation application shall be filed with the Registrar on Form MP 1.

(3) A trade mark registered pursuant to a transformation application shall be treated as if it were registered —

(a) on the date of the international registration in accordance with Article 3 (4) of the Madrid Protocol; or

(b) where the request for extension to Singapore was made subsequent to the international registration, on the date of recordal of that request in accordance with Article 3ter (2) of the Madrid Protocol,

and that date shall be deemed for the purposes of the Act to be the date of registration of the trade mark.

Procedure on transformation application

25.—(1) Where the protected international trade mark (Singapore) has become protected under rule 17 on or before the actual date on which the transformation application is made (referred to in this rule as the transformation date), the trade mark shall be registered under the Act.

(2) Where the international registration designating Singapore has not become protected under rule 17 by the transformation date and its particulars have been published under rule 12 —

(a) the Registrar shall treat the publication of its particulars as the publication of the transformation application under section 13 (1) of the Act; and

(b) the Registrar shall treat any opposition to its protection under rule 13 as an opposition to its registration under section 13 (2) of the Act, and rules 29 to 40 of the Trade Marks Rules (R 1) shall apply subject to such modifications as the Registrar may determine.

(3) Where particulars of the international registration designating Singapore have not yet been published under rule 12 by the transformation date and the Registrar has issued a notification of refusal under rule 11 (3), the Registrar shall for the purposes of the transformation application treat the notification of refusal as a notice issued by the Registrar to the applicant under section 12 (3) of the Act.

PART IV

CONCURRENT REGISTRATIONS

Effects of international registration where trade mark is also registered under Act

26.—(1) The provisions of this rule apply where —

(a) a registered trade mark is also a protected international trade mark (Singapore);

(b) the proprietor of the registered trade mark is the holder of the protected international trade mark (Singapore);

(c) all the goods or services in respect of which the registered trade mark is registered are protected under the protected international trade mark (Singapore); and

(d) the date of registration of the registered trade mark is earlier than the date specified in rule 17 (2) in relation to the protected international trade mark (Singapore).

(2) For the purposes of the application by these Rules of the provisions of the Act, the protected international trade mark (Singapore) shall, notwithstanding the provisions of rule 17 (2), be treated as being registered under the Act as of the date of registration of the registered trade mark as regards all the goods or services in respect of which the registered trade mark was registered.

(3) For the purposes of determining whether the protected international trade mark (Singapore) is an earlier trade mark, it shall be treated as having the date of application of the registered trade mark as regards all the goods or services in respect of which the registered trade mark was registered, taking account (where appropriate) of the priorities claimed in respect of the registered trade mark.

(4) Where the conditions specified in paragraph (1) are satisfied in relation to a trade mark, the provisions of paragraphs (2) and (3) shall —

(a) continue to apply in respect of the relevant protected international trade mark (Singapore) notwithstanding that the relevant registered trade mark lapses or is cancelled; but

(b) cease to apply if it is revoked or declared invalid.

(5) On the application of the holder of the protected international trade mark (Singapore) on Form MP 2, the Registrar shall note in the register that the international registration replaces the registered trade mark as regards the goods or services in respect of which the registered trade mark was registered.

(6) The provisions of this rule are without prejudice to any right or remedy conferred on any person in respect of the registered trade mark.

PART V

INTERNATIONAL APPLICATIONS ORIGINATING IN SINGAPORE APPLICATION FOR INTERNATIONAL REGISTRATION

Application for international registration

27.—(1) An applicant for the registration of a trade mark, or the proprietor of a registered trade mark may, subject to the provisions of this rule, apply through the Registrar for the international registration of the trade mark.

(2) An application for international registration shall be filed in English and may be made only where the applicant for such registration is —

(a) a citizen of Singapore;

(b) a body or corporation incorporated or constituted under the law of Singapore;

(d) a person who has a real and effective industrial or commercial establishment in Singapore.

(3) The particulars appearing in the application shall correspond with the particulars appearing at that time in the basic application or basic registration, as the case may be.

(4) The applicant shall provide at the request of the Registrar such evidence as may be necessary to satisfy him that the applicant is eligible to make the application in accordance with paragraph (2).

(5) The applicant shall, at the time of filing his application, file with the Registrar an address for service in Singapore on Form MP 3.

(6) If the international application complies with the requirements set out in this rule, the Registrar shall submit the international application to the International Bureau.

(7) In this rule and rule 28 —

"basic application", in relation to an application for international registration, means an application for registration of a trade mark in Singapore in respect of which the application for international registration is made;

"basic registration", in relation to an application for international registration, means a trade mark registered in Singapore in respect of which the application for international registration is made.

Notification to International Bureau

28.—(1) Where the Registrar has submitted an application for international registration, he shall notify the International Bureau of the occurrence of any of the events specified in paragraph (2), and shall request the International Bureau to cancel the international registration as regards those goods or services covered by the international application in respect of which the basic application or basic registration has ceased to subsist by reason of that event.

(2) The events referred to in paragraph (1) are as follows:

(a) before the expiry of the period of 5 years from the date of the international registration, the Registrar —

(i) refuses to accept the basic application as regards some or all of the goods or services covered by the international registration; or

(ii) after accepting the application, refuses to register the trade mark as regards some or all of those goods or services, having regard to matters coming to his notice since he accepted the application,

and in either case that decision becomes a final decision, whether before or after the expiry of that period of 5 years;

(aa) the basic application —

(i) is, before the expiry of the period of 5 years from the date of the international registration, treated as withdrawn under —

(A) rule 9 (6) (a), 21 (5) or 24 (2) of the Trade Marks Rules (R 1);

(B) paragraph 6 (3) or 7 (3A) of the First Schedule to the Act; or

(ii) is not reinstated under rule 77B of the Trade Marks Rules, whether before or after the expiry of that period of 5 years.

(b) opposition proceedings begun before the expiry of the period of 5 years from the date of the international registration resulting in a final decision not to register the trade mark as regards some or all of the goods or services covered by the international registration;

(c) the basic application is withdrawn, or is restricted as regards goods or services covered by the international registration, as a result of a request by the applicant made —

(i) before the expiry of the period of 5 years from the date of the international registration; or

(ii) subsequently when the basic application was at the time of the request subject to an appeal against refusal of registration or to opposition proceedings, begun in either case before the expiry of the period of 5 years;

(d) the registration resulting from the basic application or the basic registration expires without renewal and is removed from the register before the expiry of the period of 5 years from the date of the international registration, and no request for its restoration is made within the period specified in rule 53 of the Trade Marks Rules (R 1); or such a request is made and a final decision is made refusing the request;

(e) a final decision is made to revoke or declare invalid the registration resulting from the basic application or the basic registration, as a result of proceedings begun before the expiry of the period of 5 years from the date of the international registration;

(f) the registration resulting from the basic application or the basic registration is cancelled as a result of a request by the proprietor made before the expiry of the period of 5 years from the date of the international registration, or made subsequently where, at the time of the request —

(i) the registration resulting from the basic application or the basic registration was subject to proceedings for revocation or invalidation; and

(ii) such proceedings were begun before the expiry of the period of 5 years from the date of the international registration.

(3) For the purposes of this rule —

(a) a final decision shall be regarded as made where —

(i) any right of appeal against the decision expires or is exhausted; or

(ii) proceedings relating to an application or registration are discontinued or abandoned; and

(b) a reference to an application being withdrawn includes its being deemed withdrawn, abandoned, or never to have been made.

PART VI

MISCELLANEOUS PROVISIONS

Evidence of certain matters relating to international registration

29.—(1) In all legal proceedings relating to a protected international trade mark (Singapore), the registration of a person as the holder of a protected international trade mark (Singapore) shall be prima facie evidence of the validity of the original international registration and of any subsequent assignment or other transmission of it.

(2) Judicial notice shall be taken of the following:

(a) the Madrid Protocol and the Common Regulations;

(b) a copy of an entry in the International Register issued by the International Bureau;

(3) Any document mentioned in paragraph (2) (b) or (c) shall be admissible as evidence of any instrument or other act of the International Bureau thereby communicated.

(4) Evidence of any instrument issued by the International Bureau or any entry in or extract from such a document may be given in any such proceedings by production of a copy; and such document purporting to be such a copy shall be received in evidence.

(5) In this rule, “legal proceedings” include proceedings before the Registrar.

Agents

30.—Any act required or authorised by these Rules to be done by or to a person in connection with a request for protection of an international registration as a protected international trade mark (Singapore), or any procedure relating to a protected international trade mark (Singapore), may be done by or to an agent authorised by that person orally or in writing.

Burden of proving use of protected international trade mark (Singapore)

31.—If in any civil proceedings relating to a protected international trade mark (Singapore), a question arises as to the use to which the trade mark has been put, it is for the holder to show what use has been made of it.

Communication of information to International Bureau

32.—Notwithstanding any enactment or rule of law, the Registrar may communicate to the International Bureau any information which Singapore is required to communicate by virtue of these Rules or pursuant to the Madrid Protocol or the Common Regulations.

Transmission of fees to International Bureau

33.—The Registrar may accept for transmission to the International Bureau fees payable to the International Bureau in respect of an application for international registration originating in Singapore or a renewal of such an international registration, subject to such terms and conditions as he may specify either —

(a) generally by published notice; or

(b) in any particular case, by written notice to the applicant desiring to make payment by such means.

Application of Trade Marks Rules

34.—(1) Except as otherwise provided in these Rules, the Trade Marks Rules (R 1) shall, with the necessary modifications, apply in relation to an international registration designating Singapore and to a protected international trade mark (Singapore) as they apply in relation to an application for registration of a trade mark and to a registered trade mark.

(2) The provisions of rules under the Trade Marks Rules relating to costs and security for costs and to evidence before the Registrar shall apply in relation to proceedings under these Rules in the same manner as they apply in relation to proceedings relating to a registered trade mark or application for registration of a trade mark.

FIRST SCHEDULE

Rule 3

FEES

Matter	Corresponding Rule(s)	Fee	Corresponding Form(s)
1. Filing of a transformation application	24 (2)	$306 per class of goods or services	MP 1
2. Application to record replacement of registered trade mark with international registration	26 (5)	$65 per class of goods or services	MP 2
3. Filing of address for service in Singapore	27 (5)	$8	MP 3
4. Application for international registration through Registrar	27 (1)	$250*	—
5. Request for handling a request for renewal of international registration or fee thereof payable to International Bureau	—	$85*	—
*This fee does not include any fee payable to the International Bureau for that application or request.

SECOND SCHEDULE

Rule 4 (4)

DESCRIPTIONS OF FORMS

Form		Description of Form
MP 1		Request to transform an international registration into national application(s)
MP 2		Request to replace Singapore national registration with international registration
MP 3		Address for service/Agent

[G.N. Nos. S 490/2000;S 662/2001]

Reglamento sobre el Registro Internacional de Marcas (Edición Revisada de 2002), Singapur

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