WIPO Lex

Geographical Indications Act 2014 (Act No. 19 of 2014)

1 S 125/2019

First published in the Government Gazette, Electronic Edition, on 1 March 2019 at 5 pm.

No. S 125

GEOGRAPHICAL INDICATIONS ACT 2014 (ACT 19 OF 2014)

GEOGRAPHICAL INDICATIONS RULES 2019

ARRANGEMENT OF RULES

PART 1

PRELIMINARY

Rule

1. Citation and commencement 2. Definitions 3. Fees 4. Filing of documents 5. Forms 6. Practice directions 7. Size of documents 8. Signature on document 9. Service of documents

10. Providing address 11. Address for service 12. Agents

PART 2

REGISTRATION OF GEOGRAPHICAL INDICATION

Division 1 — Application for registration

13. Application for registration 14. Representation of geographical indications 15. Transliteration 16. Deficiencies in application 17. Withdrawal of application

Division 2 — Amendment of application

18. Amendment of application 19. Amendment of application after publication

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Rule

20. Objection to amendment of application after publication 21. Counter-statement 22. Further procedure, etc. 23. Extension of time for filing notice of objection or

counter-statement

Division 3 — Examination of application for registration

24. Examination

Division 4 — Publication

25. Publication of application

Division 5 — Registration of homonymous geographical indications

26. Registration of homonymous geographical indications and imposition of practical conditions

Division 6 — Opposition to registration

27. Notice of opposition and supporting evidence 28. Contents of notice of opposition 29. Counter-statement and supporting evidence 30. Extension of time for filing notice of opposition and supporting

evidence or counter-statement and supporting evidence 31. Evidence in reply by opponent 32. Further evidence 33. Change of commencement date of period for filing evidence 34. Exhibits 35. Pre-hearing review 36. Opposition hearing 37. Registrar’s decision in opposition proceedings 38. Costs in uncontested oppositions

Division 7 — Registration

39. Certificate of registration

PART 3

QUALIFICATION OF RIGHTS

40. Request for qualification of rights to be entered in register 41. Notice of opposition 42. Counter-statement

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Rule

43. Extension of time for filing notice of opposition or counter-statement

44. Rounds of evidence 45. Extension of time for filing of evidence 46. Application of evidence provisions 47. Application of opposition hearing provisions

PART 4

Division 1 — Entry of particulars

48. Entry in register of particulars of registered geographical indication

Division 2 — Rectification

49. Application for rectification 50. Notice of opposition 51. Counter-statement 52. Extension of time for filing notice of opposition or

counter-statement 53. Rounds of evidence 54. Extension of time for filing of evidence 55. Application of evidence provisions 56. Application of opposition hearing provisions

Division 3 — Miscellaneous

57. Application to change name, address or other particulars appearing in register

58. Application to transfer registration of registered geographical indication

59. Certificate of validity 60. Extract from register

PART 5

RENEWAL OF REGISTRATION OF GEOGRAPHICAL INDICATION

61. Renewal of registration 62. Notice of renewal 63. Notice of non-compliance 64. Removal of geographical indication from register

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PART 6

CANCELLATION

Rule

65. Application for cancellation 66. Notice of opposition 67. Counter-statement 68. Extension of time for filing notice of opposition or

counter-statement 69. Rounds of evidence 70. Extension of time for filing of evidence 71. Application of evidence provisions 72. Application of opposition hearing provisions

PART 7

EVIDENCE AND PROCEDURE

73. Registrar’s discretionary powers 74. Hearing before Registrar to be in public 75. Evidence in proceedings before Registrar 76. Statutory declarations 77. Notice of seal of officer taking declaration

PART 8

COSTS

78. Application for costs 79. Taxation of costs 80. Taxation proceedings 81. Scale of costs 82. Certificate

PART 9

EXTENSION OF TIME AND CONTINUED PROCESSING

83. Request for extension of time 84. Extension of time for other party to proceedings 85. Where non-compliance with time caused by act of employee in

Registry 86. Application for registration of geographical indication entitled

to continued processing in certain circumstances

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PART 10

HOURS OF BUSINESS AND EXCLUDED DAYS

Rule

87. Hours of business and excluded days 88. Extension of period where interruption in postal service, etc.

PART 11

MISCELLANEOUS

89. Case management conference 90. Production of documents, information or evidence 91. Appeal 92. Irregularities 93. Amendment of application, notice or other document 94. Application to Court 95. Order of Court 96. Geographical Indications Journal

The Schedules

In exercise of the powers conferred by sections 33, 36, 42(4), 45(4), 46(4) and (8), 47(3), 51(2), 52(4) and 84 of the Geographical Indications Act 2014, the Minister for Law makes the following Rules:

PART 1

PRELIMINARY

Citation and commencement

1. These Rules are the Geographical Indications Rules 2019 and come into operation on 1 April 2019.

Definitions

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

“excluded day”, in relation to any specific class of business, means any day on which the Registry is taken to be closed for

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the purposes of a transaction by the public in that class of business;

“folio” means 100 words, each figure being counted as one word;

“Geographical Indications Journal” means the journal by that name published under rule 96.

(2) Unless the context otherwise requires, “month”, wherever it occurs in any decision, direction or other document issued by the Registrar, means calendar month.

(3) Any period of time fixed by these Rules or by any decision, direction or other document for the doing of any act is to be reckoned in accordance with the following sub-paragraphs:

(a) where the act is required to be done within a specified period after a specified date, the specified period begins immediately after that date;

(b) where the act is required to be done within a specified period before a specified date, the period ends immediately before that date.

Fees

3.—(1) The fees specified in the First Schedule are payable to the Registrar in respect of the matters specified in that Schedule.

(2) Unless otherwise provided for in these Rules, or the Registrar permits or directs otherwise in any particular case —

(a) where a fee is specified in the First Schedule in respect of a matter, the fee is to be paid —

(i) at the same time as the filing of the form corresponding to the matter; or

(ii) at the time the request for the matter is made, if no form is prescribed for the matter; and

(b) if the fee is not paid, the form or request is treated as not filed or made.

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Filing of documents

4.—(1) The Registrar may refuse to accept or process any document filed at the Registry that fails to comply with the Act.

(2) Every document filed at the Registry —

(a) must be in English; or

(b) where the document is not in English, must be accompanied by an English translation of the document.

(3) Every document filed at the Registry —

(a) must be filed using durable paper; and

(b) must be in writing that is legible and permanent.

(4) Where the Registrar refuses to accept any document that does not comply with paragraph (2) or (3), the Registrar must give the person that filed the document a notice stating the manner in which the document does not comply with that paragraph.

(5) Where any document filed at the Registry is a copy, the Registrar may —

(a) decide whether to accept or process the document; and

(b) require the original to be filed with the Registry.

Forms

5.—(1) The Registrar must publish on the Office’s website at http://www.ipos.gov.sg the forms to be used for any purpose relating to the registration of a geographical indication or any other proceedings before the Registrar under the Act.

(2) Any reference in these Rules to a numbered form is a reference to the current version of the form bearing the corresponding number as described in the Second Schedule and published on the website mentioned in paragraph (1).

Practice directions

6. All practice directions issued by the Registrar under the Act must be published by the Registrar on the Office’s website at http://www.ipos.gov.sg.

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Size of documents

7. Subject to any directions that may be given by the Registrar, every form, notice or other document required or authorised by the Act to be given or sent to, filed with or served on the Registrar must be in A4 size paper.

Signature on document

8.—(1) A document to be signed for or on behalf of a partnership must contain the full names of all the partners and must be signed by —

(a) all the partners;

(b) any partner who purports to sign on behalf of the partnership; or

(c) any other individual who satisfies the Registrar that the individual is authorised to sign the document on behalf of the partnership.

(2) A document to be signed for or on behalf of a body corporate must be signed by —

(a) a director;

(b) the secretary or any other principal officer of the body corporate; or

(c) any other individual who satisfies the Registrar that the individual is authorised to sign the document on behalf of the body corporate.

(3) A document to be signed by or on behalf of an unincorporated body or association of persons may be signed by any individual who appears to the Registrar to be qualified to so sign.

(4) In this rule, “document” means a document to be given or sent to, filed with or served on the Registrar in respect of any matter under the Act.

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Service of documents

9.—(1) Where the Act authorises or requires any document to be given or sent to, filed with or served on the Registrar, the document —

(a) may be sent to the Registrar by post;

(b) may be delivered to the Registrar by hand; or

(c) where there is no fee payable to the Registrar in respect of the document, may be sent to the Registrar by facsimile transmission.

(2) Where the Act authorises or requires any document to be given or sent to or served on any party other than the Registrar, the document may be sent to that party by post.

(3) Where the Act authorises or requires any notice or other document to be given or sent to or served on any party by the Registrar, the Registrar may send the notice or other document to that party —

(a) by post; or

(b) by facsimile transmission.

(4) Where any notice or other document is sent by post under paragraph (2) or (3), the giving, sending or service (as the case may be) of the notice or other document is treated (until the contrary is proved) as occurring at the time at which the notice or document would have been delivered in the ordinary course of post.

(5) For the purposes of paragraphs (2) and (3), a notice or other document is sent to a party by post if the notice or other document is sent by prepaid post to the party at the party’s address for service mentioned in rule 11 or 12.

(6) Where any person has attempted to send any document by facsimile transmission under paragraph (1) and —

(a) any part of the document received by the Registrar is illegible; or

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(b) any part of the document is not received by the Registrar,

the Registrar must reject the document.

(7) Paragraph (1)(c) does not apply to the filing of a statutory declaration —

(a) under rule 27(1), 29(1), 31(1), 44(1)(a), (b) or (c), 53(1)(a), (b) or (c), or 69(1)(a), (b) or (c);

(b) under rule 32, or rule 32 as applied by rule 46, 55 or 71; or

(8) This rule does not apply to notices and documents to be served in proceedings in the Court.

Providing address

10.—(1) Where any person is required by the Act to provide the Registrar with an address, the address provided must be as full as possible to enable any person to find easily the place whose address is given.

(2) The Registrar may require the address to include the name of the street, the number of the block of building, the number of the premises, the name of the premises (if any) and the postal code.

Address for service

11.—(1) For the purposes of any proceedings before the Registrar, an address for service in Singapore must be provided in accordance with paragraph (2) or (3) by or on behalf of —

(a) every applicant for registration of a geographical indication under section 39 of the Act;

(b) every registrant of a geographical indication;

(c) every person, not being the registrant, applying for the renewal of the registration of a registered geographical indication;

(d) every registrant applying under section 53 of the Act to transfer the registration of a registered geographical indication;

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(e) every person to whom the registration of a registered geographical indication is being transferred under section 53 of the Act (called in this rule a transferee);

(f) every person making a request under section 46 of the Act for an entry in the register of a qualification of the rights conferred under the Act in respect of a registered geographical indication;

(g) every applicant for the cancellation of the registration of a geographical indication under section 52 of the Act;

(h) every applicant for the rectification of an error or omission in the register under section 22 of the Act;

(i) every person opposing any of the following:

(i) an application under section 39 of the Act for registration of a geographical indication;

(ii) a request under section 46 of the Act for an entry in the register of a qualification of the rights conferred under the Act in respect of a registered geographical indication;

(iii) an application under section 52 of the Act for the cancellation of the registration of a geographical indication;

(iv) an application under section 22 of the Act for the rectification of an error or omission in the register;

(j) every person objecting to an application under section 47(2) of the Act for an amendment of an application for registration of a geographical indication which has been published; and

(k) every other party to any proceedings before the Registrar.

(2) Where the form for any application or request requires an address for service in Singapore, the address for service in Singapore must be provided in the form.

(3) In a case where paragraph (2) does not apply, the address for service must be given in writing.

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(4) The address for service provided in accordance with paragraph (2) or (3) is effective only in respect of the matter for which the address for service was provided.

(5) Despite paragraph (4) —

(a) except where an address for service is specifically provided for any particular proceedings, an address for service provided in Form GI1 by an applicant for registration of a geographical indication is effective for the purposes of all proceedings in respect of the application for registration of the geographical indication;

(b) an address for service provided in accordance with sub-paragraph (a) by a person as an applicant for registration of a geographical indication is, upon registration of the geographical indication, the address for service of that person as the registrant of that geographical indication, unless —

(i) the Registrar is notified of a change in the address for service in accordance with paragraph (11) or rule 57; or

(ii) the Registrar is notified of a transfer of registration of the geographical indication to another person in accordance with rule 58;

(c) an address for service for a transferee, that is provided in Form GI10 by the registrant with the transferee’s authority, is effective for all matters in respect of the registered geographical indication after the transfer;

(d) an address for service provided in Form GI13 by a person opposing any of the following applications or requests is effective for the purposes of the opposition proceedings, and any related proceedings under Part 8:

(i) an application under section 39 of the Act for the registration of a geographical indication;

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(ii) a request under section 46 of the Act for an entry in the register of a qualification of the rights conferred under the Act in respect of a registered geographical indication;

(iii) an application under section 52 of the Act for the cancellation of the registration of a geographical indication;

(iv) an application under section 22 of the Act for the rectification of an error or omission in the register;

(e) an address for service provided in Form GI13 by a person objecting to an application under section 47(2) of the Act for an amendment of an application for registration which has been published, is effective for the purposes of the objection proceedings, and any related proceedings under Part 8;

(f) an address for service provided in Form GI18 by a person replying to an opposition to any of the following is effective for the purposes of the opposition proceedings, and any related proceedings under Part 8:

(i) an application under section 39 of the Act for registration of a geographical indication;

(ii) a request under section 46 of the Act for an entry in the register of a qualification of the rights conferred under the Act in respect of a registered geographical indication;

(iii) an application under section 52 of the Act for the cancellation of the registration of a geographical indication;

(iv) an application under section 22 of the Act for the rectification of an error or omission in the register; and

(g) an address for service provided in Form GI18 by a person replying to an objection to an application under section 47(2) of the Act for an amendment of an

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application for registration of a geographical indication which has been published is effective for the purposes of the objection proceedings, and any related proceedings under Part 8.

(6) If —

(a) an address for service in Singapore was not provided by or on behalf of a person in accordance with paragraph (2) or (3) for any particular proceedings; and

(b) there is no address in Singapore that is treated as effective under paragraph (5) for that person for the purposes of those proceedings,

the Registrar may treat that person’s trade or business address in Singapore as that person’s address for service for those proceedings.

(7) If —

(a) an address for service in Singapore was not provided by or on behalf of a person in accordance with paragraph (2) or (3) for any particular proceedings;

(b) there is no address in Singapore that is treated as effective under paragraph (5) for that person for the purposes of those proceedings; and

the Registrar may send to any alternative address of the person notice to provide an address for service in Singapore within 2 months after the date of the notice.

(8) If —

(a) the Registrar does not have any alternative address of the person to which a notice may be sent under paragraph (7); or

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(b) the Registrar sends a notice under paragraph (7) to the person’s alternative address and no address for service is provided within 2 months after the date of the notice,

then —

(c) where the person is a person mentioned in paragraph (1)(a), (c), (d), (f), (g) or (h), the application or request (as the case may be) is treated as withdrawn;

(d) where the person is a person mentioned in paragraph (1)(i) or (j), the person is treated as having withdrawn from the proceedings in question; and

(e) where the person is a registrant mentioned in paragraph (1)(b) or a party mentioned in paragraph (1)(k), the registrant or party is not permitted to take part in the matter or proceedings in question.

(9) In paragraphs (7) and (8), “alternative address” means —

(a) any address (not being an email address) that was previously provided by the person to the Registrar in relation to a matter under these Rules concerning the person that is the same as the matter at hand; or

(b) any email address that was previously provided by the person to the Registrar in relation to a matter under these Rules that is the same as the matter at hand, where the person had given prior written consent for that address to be used for correspondence with the person for such matter.

(10) Anything sent to or served on a person at the person’s address for service is taken to have been duly sent to or served on the person.

(11) Where any person mentioned in paragraph (1)(a) to (k) has changed the person’s address for service in Singapore, the person must notify the Registrar of such change in Form GI6.

Agents

12.—(1) When dealing with any matter under the Act in respect of which a person has been authorised to act as an agent on behalf of

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another person, the Registrar may require the personal signature or presence of either of them.

(2) The Registrar may, by notice in writing sent to an agent, require the agent to produce evidence of the agent’s authority to act.

(3) Where an agent has been appointed by any person in connection with any matter, the agent’s address for service in Singapore is treated as the address for service of that person for the purposes of that matter.

(4) The appointment of an agent must be notified to the Registrar—

(a) in the form for the matter; or

(b) in Form GI5, if no form is prescribed for the matter.

(5) Any change of an agent for any matter must be notified to the Registrar in Form GI5.

(6) An agent may, by filing Form GI6 with the Registrar, apply for the agent’s name appearing in the register to be changed —

(a) to reflect a change in name; or

(b) to correct an error.

(7) Where an agent for a party to any matter intends to cease to so act, the agent —

(a) must file with the Registrar in Form GI5 —

(i) a notice of such intention;

(ii) the party’s latest address, including any email address, on the agent’s records; and

(iii) a statement that the agent has given reasonable notice to the party of such intention and informed the party of the consequences (set out in paragraph (10)) of the party not appointing a substitute agent or providing an address for service in accordance with rule 11; and

(b) must serve such form on the party at the same time the form is filed with the Registrar.

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(8) If the party mentioned in paragraph (7) does not, within 2 months after the day that Form GI5 is served on the party under paragraph (7)(b) —

(a) file with the Registrar Form GI5 to inform the Registrar of the appointment of another agent; or

(b) provide an address for service in Singapore in accordance with rule 11 for the matter,

the Registrar must send to the party a notice requesting the party to provide an address for service in Singapore within 2 months after the date of the notice.

(9) The notice in paragraph (8) must be sent to the address of the party filed under paragraph (7)(a)(ii) or any alternative address of the party.

(10) Rule 11(8)(c), (d) or (e) (whichever is applicable) applies with the necessary modifications, if —

(a) the Registrar does not have any alternative address of the party to which to send a notice under paragraph (8); or

(b) the Registrar sent a notice under paragraph (8) and no address for service was provided within 2 months after the date of the notice.

(11) In paragraphs (9) and (10), “alternative address” has the meaning given by rule 11.

(12) In this rule, “matter”means any act to be done by or to a person in connection with the registration of a geographical indication, or any procedure relating to a registered geographical indication.

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PART 2

REGISTRATION OF GEOGRAPHICAL INDICATION

Division 1 — Application for registration

Application for registration

13.—(1) An application under section 39(1) of the Act for registration of a geographical indication must be made in Form GI1 (called in this Part the application form).

(2) For the purpose of making an entry in the register of the registration of a geographical indication under rule 48, the date of the application for registration of the geographical indication is the date on which —

(a) the last of all the information required under section 39(1) of the Act to be provided to the Registrar, was so provided; or

(b) the last of all the fees payable under section 39(2) of the Act —

(i) were paid; or

(ii) were treated by the Registrar as paid,

whichever is the later.

Representation of geographical indications

14.—(1) An applicant for the registration of a geographical indication must provide to the Registrar, in the manner specified in the application form, a clear and durable representation of the geographical indication in the application form.

(2) The Registrar may at any time, if dissatisfied with any representation of the geographical indication, require another representation acceptable to the Registrar to be filed before the Registrar proceeds with the application, and the applicant must substitute the representation by filing with the Registrar Form GI2.

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Transliteration

15.—(1) Unless the Registrar otherwise directs, where the representation of a geographical indication contains or consists of a word or words that is or are not in Roman characters, there must be endorsed in the application form —

(a) a transliteration in English, to the satisfaction of the Registrar, of the word or words; and

(b) the language to which the word or words belong.

(2) The Registrar may at any time require a copy of the transliteration, certified or verified to the satisfaction of the Registrar, to be filed with the Registrar.

Deficiencies in application

16.—(1) Where an application for registration of a geographical indication does not satisfy a requirement under section 39(1) or (2) of the Act, the Registrar must send the applicant a notice requiring the applicant to remedy the deficiency.

(2) Upon receipt of the notice under paragraph (1), the applicant must remedy all deficiencies set out in the notice within such period as may be specified in the notice.

Withdrawal of application

17. A notice of withdrawal under section 47(1) of the Act of an application for registration of a geographical indication may be made —

(a) by way of a written request; or

(b) in Form GI12.

Division 2 — Amendment of application

Amendment of application

18.—(1) An application to amend an application for registration of a geographical indication must be made in —

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(a) Form GI6, if the amendment is to change the name or address of the applicant; or

(b) Form GI2, if the amendment is for any other purpose.

(2) Before acting on an application mentioned in paragraph (1), the Registrar may require the applicant to provide such evidence as the Registrar thinks fit.

Amendment of application after publication

19.—(1) Where an application is made to amend an application for registration of a geographical indication which has been published (called in this Division the rule 19 amendment), and the amendment affects the representation of the geographical indication or the goods covered by the application for registration of the geographical indication, the amendment must be published in the Geographical Indications Journal.

(2) Before publishing the amendment, the Registrar may require the applicant to provide such evidence as the Registrar thinks fit.

Objection to amendment of application after publication

20.—(1) A person who claims the person’s interests will be affected by a rule 19 amendment (called in this Division the objector) may, within 6 weeks (or such longer period as may be granted under rule 23) after the date of the publication mentioned in rule 19(1), file with the Registrar a notice objecting to the rule 19 amendment in Form GI13 (called in this Division the notice of objection).

(2) The notice of objection must —

(a) specify how the objector is affected by the rule 19 amendment; and

(b) state the reason why the rule 19 amendment does not comply with section 47(2) of the Act.

(3) The objector must serve on the applicant a copy of the notice of objection at the same time the notice of objection is filed with the Registrar.

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(4) If the objector does not comply with paragraph (1), (2) or (3), the notice of objection is treated as if it had not been filed.

(5) If —

(a) no notice of objection is filed within the period mentioned in paragraph (1); or

(b) the objector does not comply with paragraph (1), (2) or (3),

the Registrar must cause the application to be corrected in accordance with section 47(2) of the Act.

Counter-statement

21.—(1) Within 6 weeks (or such longer period as may be granted under rule 23) after the date on which the applicant receives from the objector a copy of the notice of objection, the applicant must file with the Registrar a counter-statement in Form GI18 (called in this Division the counter-statement).

(2) The counter-statement must set out —

(a) the grounds on which the applicant relies as supporting the application; and

(b) the facts alleged in the notice of objection which the applicant admits, if any.

(3) The applicant must serve on the objector a copy of the counter-statement at the same time the counter-statement is filed with the Registrar.

(4) If the applicant does not comply with paragraph (1), (2) or (3), the application for the rule 19 amendment is treated as withdrawn.

Further procedure, etc.

22.—(1) If the Registrar is satisfied that the applicant has complied with rule 21(1), (2) and (3), the Registrar may give such directions as the Registrar thinks fit with regard to any further procedure for the conduct of the objection proceedings.

(2) Rule 37 applies, with the necessary modifications, to objection proceedings under this rule.

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(3) Where an objection is uncontested by the applicant, the Registrar, in deciding whether costs should be awarded to the objector, must consider whether objection proceedings might have been avoided if reasonable notice had been given by the objector to the applicant before the notice of objection was filed.

Extension of time for filing notice of objection or counter-statement

23.—(1) A party may request to extend the period for the filing of a notice of objection or a counter-statement by filing with the Registrar Form GI17 —

(a) where the request is for an extension of time to file a notice of objection, within 6 weeks after the date of publication of the amendment in rule 19(1); or

(b) where the request is for an extension of time to file a counter-statement, within 6 weeks after the date of receipt of a copy of the notice of objection.

(2) The request for an extension of time must state —

(a) the length of the extension; and

(b) the reason for the extension.

(3) The party requesting an extension of time under paragraph (1) must serve on the other party a copy of the request at the same time the request is filed with the Registrar.

(4) The other party may object to a request under paragraph (1) not later than 2 weeks after the date of receipt of a copy of the request.

(5) The Registrar may refuse to grant a request under paragraph (1) if the party who requested an extension of time —

(a) fails to show a good and sufficient reason for the extension; or

(b) fails to show to the Registrar’s satisfaction that a copy of the request has been served on the other party.

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(6) The Registrar may grant or refuse to grant the request without a hearing unless it appears to the Registrar that a hearing in accordance with rule 73(1) is required.

(7) The Registrar must, by notice in writing, inform the party who requested an extension of time —

(a) whether the request is granted; and

(b) if the request is granted, the length of the extension granted.

(8) If the request under paragraph (1) is granted, the Registrar must, by notice in writing, inform the other party of the length of the extension granted to the party who requested an extension of time.

(9) The other party may, not later than 2 weeks after receiving the notice in paragraph (8), apply in writing to the Registrar to revoke the extension on the ground that the party had not been served a copy of the request under paragraph (1).

Division 3 — Examination of application for registration

Examination

24.—(1) Where section 43(3) of the Act applies, the Registrar must by notice in writing to the applicant for the registration of a geographical indication —

(a) inform the applicant that it appears to the Registrar that the requirements for registration are not met or that additional information or evidence is required to meet those requirements; and

(b) state that the applicant must do one or more of the following within 2 months after the receipt of the notice:

(i) make representations in writing;

(ii) apply to amend the application;

(iii) provide the additional or any other information or evidence.

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(2) Where the Registrar refuses under section 43(4) of the Act to accept an application for registration, the Registrar must notify the applicant of the Registrar’s decision in writing.

Division 4 — Publication

Publication of application

25.—(1) An application for registration of a geographical indication that has been accepted must be published in the Geographical Indications Journal during such time as the Registrar may direct.

(2) In the case of an application for registration of a geographical indication mentioned in section 41(4) or (6) of the Act that is to be registered with the consent of the proprietor of a trade mark, the publication of the application in the Geographical Indications Journal must include the words “By Consent” and the registration number of that trade mark, where applicable.

(3) The publication of an application for registration of a homonymous geographical indication in the Geographical Indications Journal must include —

(a) the practical conditions that are to be imposed under section 42(2) of the Act to differentiate the homonymous geographical indication from the earlier geographical indication; and

(b) details of the earlier geographical indication.

(4) If, as at the date of the publication mentioned in paragraph (3), the application for registration of the earlier geographical indication has been published in the Geographical Indications Journal but the earlier geographical indication has not been registered, the entry in the Geographical Indications Journal for the application for registration of the earlier geographical indication must be amended to include —

(a) the practical conditions that are to be imposed under section 42(2) of the Act to differentiate the earlier geographical indication from the homonymous geographical indication; and

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(b) details of the homonymous geographical indication.

(5) If, as at the date of the publication mentioned in paragraph (3), the application for registration of the earlier geographical indication has not been published in the Geographical Indications Journal, the entry in the Geographical Indications Journal for the application for registration of the earlier geographical indication must include —

(a) the practical conditions that are to be imposed under section 42(2) of the Act to differentiate the earlier geographical indication from the homonymous geographical indication; and

(b) details of the homonymous geographical indication.

Division 5 — Registration of homonymous geographical indications

Registration of homonymous geographical indications and imposition of practical conditions

26.—(1) Where an application is made for the registration of a geographical indication that is a homonymous geographical indication in relation to an earlier geographical indication, the Registrar must, by notice in writing, require the applicant for the registration to consult with the applicant for registration or registrant (as the case may be) of the earlier geographical indication, on the possibility of agreement to the practical conditions to be imposed under section 42(2) of the Act differentiating the homonymous geographical indication from the earlier geographical indication.

(2) The notice mentioned in paragraph (1) must be sent to both the applicant for registration of the homonymous geographical indication and the applicant for registration or registrant (as the case may be) of the earlier geographical indication (called in this rule the parties), and must specify —

(a) the period within which the parties are to consult with each other;

(b) the period within which the applicant is to carry out the step mentioned in paragraph (3); and

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(3) If the parties reach an agreement on the practical conditions to be imposed within the period specified under paragraph (2)(a), the applicant for registration of the homonymous geographical indication must, within the period specified under paragraph (2)(b), file with the Registrar a copy of the agreement, including the details of the practical conditions proposed by the parties.

(4) If no agreement is reached between the parties on the practical conditions to be imposed within the period specified under paragraph (2)(a), each party must, within the period specified under paragraph (2)(c), file with the Registrar a submission —

(a) containing that party’s proposal for the practical conditions to be imposed; and

(b) identifying the areas for which an agreement could not be reached.

(5) The Registrar must inform the parties in writing of the Registrar’s decision on the practical conditions to be imposed with the registration of their geographical indications.

(6) If —

(a) at the expiry of the period specified under paragraph (2)(b) for the carrying out of the step in paragraph (3); or

(b) at the expiry of the period specified under paragraph (2)(c) for the carrying out of the step in paragraph (4),

the applicant for registration of the homonymous geographical indication has not carried out the step applicable to the applicant, the application for registration of the homonymous geographical indication is treated as abandoned.

Division 6 — Opposition to registration

Notice of opposition and supporting evidence

27.—(1) A person (called in this Division the opponent) may, within 6 weeks (or such longer period as may be granted under

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rule 30) after the date of publication of an application for registration of a geographical indication mentioned in rule 25, file with the Registrar —

(a) a notice opposing the registration in Form GI13 (called in this Division a notice of opposition); and

(b) a statutory declaration setting out the evidence the opponent wishes to adduce in support of the notice of opposition.

(2) The opponent must serve on the applicant a copy of the notice of opposition and a copy of the opponent’s statutory declaration at the same time the notice of opposition and the statutory declaration are filed with the Registrar.

(3) If the opponent does not comply with paragraph (1) or (2), the notice of opposition is treated as if it had not been filed.

Contents of notice of opposition

28.—(1) The notice of opposition must contain a statement of the grounds upon which the opponent opposes the registration of the geographical indication.

(2) The grounds in paragraph (1) must be one of the grounds specified in section 41 of the Act.

(3) If registration is opposed on the ground that there exists a likelihood of confusion on the part of the public because the geographical indication is identical with or similar to, and has the same geographical origin as, an earlier geographical indication, the following must be included in the statement for the purpose of determining whether the ground is established:

(a) a representation of the earlier geographical indication;

(b) a statement on the geographical origin of the earlier geographical indication;

(i) if the earlier geographical indication is registered —

(A) its registration number; and

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(B) the goods in respect of which the earlier geographical indication is registered;

(ii) if an application to register the earlier geographical indication is pending —

(A) the number accorded by the Registrar to the application; and

(B) the goods in respect of which the earlier geographical indication is sought to be registered.

(4) If registration is opposed on the ground that there exists a likelihood of confusion on the part of the public because —

(a) the geographical indication is identical with or similar to a trade mark; and

(b) the trade mark fulfils either or both of the conditions specified in section 41(5) of the Act,

the following must be included in the statement for the purpose of determining whether the ground is established:

(d) if the trade mark is a registered trade mark or an international trade mark (Singapore) mentioned in section 41(5)(a) of the Act —

(i) its registration number; and

(ii) the class number and specification of the goods or services in respect of which the trade mark is registered;

(e) if the trade mark is a trade mark mentioned in section 41(5)(b) of the Act, the specification of the goods and services in respect of which the trade mark is used.

(5) If registration is opposed on the ground that —

(a) the geographical indication is identical with or similar to a trade mark that is, before the date of application for

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registration of the geographical indication, a well known trade mark in Singapore; and

(b) the registration of the geographical indication is liable to mislead consumers as to the true identity of the goods identified by the geographical indication,

the following additional information must be included in the statement for the purpose of determining whether the ground is established:

(d) information on the use of the trade mark;

(e) information on any promotion undertaken for the trade mark.

Counter-statement and supporting evidence

29.—(1) Within 6 weeks (or such longer period as may be granted under rule 30) after the date on which the applicant receives from the opponent the copies of the notice of opposition and the statutory declaration mentioned in rule 27(1)(b), the applicant must file with the Registrar —

(a) a counter-statement in Form GI18 (called in this Division the counter-statement); and

(b) a statutory declaration setting out the evidence the applicant wishes to adduce in support of the application.

(2) The counter-statement must set out —

(a) the grounds on which the applicant relies as supporting the application; and

(b) the facts alleged in the notice of opposition which the applicant admits, if any.

(3) The applicant must serve on the opponent a copy of the counter-statement and the applicant’s statutory declaration at the same time the counter-statement and the statutory declaration are filed with the Registrar.

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(4) If the applicant does not comply with paragraph (1), (2) or (3), the application for registration is treated as withdrawn.

Extension of time for filing notice of opposition and supporting evidence or counter-statement and supporting evidence

30.—(1) A party may request to extend the period for the filing of a notice of opposition and the statutory declaration mentioned in rule 27(1)(b) or a counter-statement and the statutory declaration mentioned in rule 29(1) by filing with the Registrar Form GI17 —

(a) where the request is for an extension of time to file a notice of opposition and the statutory declaration mentioned in rule 27(1)(b), within 6 weeks after the date of the publication of the application for registration of a geographical indication mentioned in rule 25; or

(b) where the request is for an extension of time to file a counter-statement and the statutory declaration mentioned in rule 29(1), within 6 weeks after the date of receipt of a copy of the notice of opposition and its supporting statutory declaration mentioned in rule 27(1)(b).

(2) The request for an extension of time must state —

(a) the length of the extension; and

(b) the reason for the extension.

(3) The party requesting an extension of time under paragraph (1) must serve on the other party a copy of the request at the same time the request is filed with the Registrar.

(4) The other party may object to a request under paragraph (1) not later than 2 weeks after the date of receipt of a copy of the request.

(5) The Registrar may refuse to grant a request under paragraph (1) if the party who requested an extension of time —

(a) fails to show a good and sufficient reason for the extension; or

(b) fails to show to the Registrar’s satisfaction that a copy of the request has been served on the other party.

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(6) The Registrar may grant or refuse to grant a request under paragraph (1) without a hearing unless it appears to the Registrar that a hearing in accordance with rule 73(1) is required.

(7) The Registrar must, by notice in writing, inform the party who requested an extension of time —

(a) whether the request is granted; and

(b) if the request is granted, the length of the extension granted.

Evidence in reply by opponent

31.—(1) Within one month (or such longer period as may be granted under this rule) after the date on which the opponent receives from the applicant the copies of the counter-statement and the statutory declaration mentioned in rule 29(1), the opponent may file with the Registrar a statutory declaration setting out the opponent’s evidence in reply.

(2) If the opponent files with the Registrar the opponent’s statutory declaration mentioned in paragraph (1), the opponent must serve on the applicant a copy of the statutory declaration at the same time the same declaration is filed with the Registrar.

(3) The opponent’s statutory declaration mentioned in paragraph (1) must be confined strictly to matters in response to the applicant’s statutory declaration mentioned in rule 29(1)(b).

(4) The opponent may request for an extension of time to file the statutory declaration under paragraph (1) by filing with the Registrar Form GI17 before the expiry of the period (including any extension previously granted under this rule) specified in paragraph (1).

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(5) The request for the extension of time must state —

(a) the length of the extension; and

(b) the reason for the extension.

(6) The opponent must serve on the applicant a copy of the request under paragraph (4) at the same time the request is filed with the Registrar.

(7) The applicant may object to the request under paragraph (4) not later than 2 weeks after the date of receipt of a copy of the request.

(8) The Registrar may refuse to grant the request under paragraph (4) if the opponent —

(a) fails to show a good and sufficient reason for the extension; or

(b) fails to show to the Registrar’s satisfaction that a copy of the request has been served on the applicant.

(9) The Registrar may grant or refuse to grant the request under paragraph (4) without a hearing unless it appears to the Registrar that a hearing in accordance with rule 73(1) is required.

(10) The Registrar must, by notice in writing, inform the opponent —

(a) whether the request under paragraph (4) is granted; and

(b) if the request is granted, the length of the extension granted.

(11) If the request under paragraph (4) is granted, the Registrar must, by notice in writing, inform the applicant of the length of the extension granted to the opponent.

(12) The applicant may, not later than 2 weeks after receiving the notice in paragraph (11), apply in writing to the Registrar to revoke the extension on the ground that the applicant had not been served a copy of the request under paragraph (4).

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Further evidence

32.—(1) Subject to paragraph (2), no further evidence may be filed by any party upon the expiry of the period for the opponent to file the opponent’s evidence in reply.

(2) In any opposition proceedings before the Registrar, the Registrar may at any time, if the Registrar thinks fit, give leave to either party to file further evidence upon such terms as to costs or otherwise as the Registrar thinks fit.

Change of commencement date of period for filing evidence

33. Where the period within which a party to the opposition proceedings may file evidence is to begin upon the expiry of any period in which any other party may file evidence, and that other party notifies the Registrar that that other party does not wish to file any (or any further) evidence, the Registrar —

(a) may direct that the period within which the firstmentioned party may file evidence begins on such date as may be specified in the direction; and

(b) must notify all parties to the opposition proceedings of the date mentioned in paragraph (a).

Exhibits

34.—(1) In any opposition proceedings, a party who relies on an exhibit in support of that party’s case must send a copy of that exhibit to the other party.

(2) If a copy of an exhibit cannot conveniently be sent under paragraph (1), the original exhibit must be filed with the Registrar.

(3) The original exhibit must be produced at the opposition hearing unless the Registrar otherwise directs.

Pre-hearing review

35.—(1) At any time after the filing of the statutory declaration mentioned in rule 31(1), or the expiry of the period specified in that rule for the filing of the statutory declaration, the Registrar may direct the parties to attend a pre-hearing review at which the Registrar may

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give such directions as the Registrar considers necessary or desirable for securing the just, expeditious and economical disposal of the proceedings.

(2) At the pre-hearing review, the Registrar may consider any matter including the possibility of settlement of all or any of the matters in dispute in the application or the proceedings, and may require the parties to provide the Registrar with such information as the Registrar may require.

(3) If any party fails to comply with any direction given under paragraph (1) or any requirement imposed under paragraph (2), the Registrar may —

(a) where that direction was given or requirement was imposed in relation to the application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be; or

(b) make such other order as the Registrar thinks fit.

(4) Any direction or order by the Registrar may be set aside or varied by the Registrar on such terms as the Registrar thinks fit.

(5) If, during or pursuant to a pre-hearing review, the parties are agreeable to a settlement of all or any of the matters in dispute in any application or proceedings, the Registrar may —

(a) give the Registrar’s decision in relation to the application or proceedings; or

(b) make such order as the Registrar thinks just to give effect to the settlement.

(6) If a party does not appear at a pre-hearing review, the Registrar may —

(a) where the pre-hearing review pertains to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be;

(b) make such other order as the Registrar thinks fit; or

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(7) An order made by the Registrar in the absence of a party may be set aside by the Registrar, on the application of that party, on such terms as the Registrar thinks fit.

Opposition hearing

36.—(1) At any time after the filing of the statutory declaration mentioned in rule 31(1), or the expiry of the period specified in that rule for the filing of the statutory declaration, the Registrar must give notice to the parties of a date on which the Registrar will hear arguments on the case.

(2) The parties must file with the Registrar their written submissions and bundles of authorities at least 2 weeks before the date of hearing, and must at the same time exchange with one another their respective written submissions and bundles of authorities.

(3) A party who intends to appear at the hearing must file with the Registrar Form GI15 before the hearing.

(4) A party who does not file with the Registrar Form GI15 before the hearing may be treated as not desiring to be heard, and the Registrar may —

(a) proceed with the hearing in the absence of that party;

(b) without proceeding with the hearing, give the Registrar’s decision or dismiss the proceedings; or

(5) If, after filing with the Registrar Form GI15, a party does not appear at the hearing, the Registrar may —

(a) proceed with the hearing in the absence of that party;

(b) without proceeding with the hearing, give the Registrar’s decision or dismiss the proceedings; or

(6) Rule 37 applies after the Registrar gives a decision or order under paragraph (4) or (5) in relation to the proceedings, whether the hearing was proceeded with or not.

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(7) If neither party appears at the hearing, the Registrar may dismiss the proceedings.

(8) Uponmaking any decision or order under paragraph (4) or (5) or dismissing any proceedings under paragraph (4), (5) or (7), the Registrar must notify every party of the decision, order or dismissal (as the case may be) in writing.

(9) Any decision or order made by the Registrar under paragraph (4) or (5) in the absence of any party may, on the application of that party, be set aside by the Registrar on such terms as the Registrar thinks fit.

(10) Any proceedings dismissed under paragraph (4), (5) or (7) may, on the application of any party, be restored on the direction of the Registrar.

(11) An application under paragraph (9) or (10) must be made within 14 days after the date of the Registrar’s notification under paragraph (8).

Registrar’s decision in opposition proceedings

37.—(1) Subject to paragraph (2), the Registrar must inform the parties of the Registrar’s decision —

(a) in a case where the duration of the hearing is one day or less, within one month after the date of the hearing; or

(b) in any other case, within one month after the last day of the hearing.

(2) Where the Registrar grants leave to one or more parties to file closing submissions on a date which is after the last day of the hearing, the Registrar must inform all parties of the Registrar’s decision within one month after the date of filing of those submissions.

(3) Where a party wishes to have the Registrar’s grounds of decision, the party must, within one month after the date of the Registrar’s decision, file with the Registrar a request in Form GI14 for the Registrar to state the grounds of decision.

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(4) The Registrar must, within 3 months after the date of filing of the request mentioned in paragraph (3), serve the grounds of decision on the party who made the request.

(5) The date on which the Registrar’s grounds of decision is served on the party under paragraph (4) is considered the date of the Registrar’s decision for the purpose of an appeal.

Costs in uncontested oppositions

38. Where an opposition under these Rules is uncontested by the applicant, the Registrar, in deciding whether costs should be awarded to the opponent, must consider whether opposition proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was filed.

Division 7 — Registration

Certificate of registration

39. Upon registration of a geographical indication under section 48(1) of the Act, the Registrar must issue to the applicant a certificate of registration.

PART 3

QUALIFICATION OF RIGHTS

Request for qualification of rights to be entered in register

40.—(1) A person (called in this Part the requestor) desiring to request for a qualification of the rights conferred under the Act (called in this Part a qualification of rights) to be entered in the register under section 46(1) of the Act, may make the request to the Registrar in Form GI2.

(2) The requestor must provide to the Registrar such evidence in respect of the request as the Registrar may require.

(3) Except where the request is made by an applicant for the registration of the geographical indication or a registrant (as the case may be), the requestor must serve on the applicant or the registrant, as the case may be —

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(a) a copy of the request in Form GI2; and

(b) where evidence is required by the Registrar under paragraph (2), such evidence,

at the same time those documents are filed with the Registrar.

(4) Where the Registrar proposes to allow the request, the Registrar must publish the proposed qualification of rights in the Geographical Indications Journal.

(5) Where no notice of opposition has been filed within the period mentioned in rule 41(1), and the Registrar is satisfied that either or both of the grounds in section 46(2) of the Act is or are made out, the Registrar must (subject to section 46(6) of the Act) enter the qualification of rights in the register.

Notice of opposition

41.—(1) A person who claims the person’s interests will be affected by a proposed qualification of rights (called in this Part the opponent) may, within 2 months (or such longer period as may be granted under rule 43) after the date of publication mentioned in rule 40(4), file with the Registrar a notice opposing the qualification of rights in Form GI13 (called in this Part the notice of opposition).

(2) The notice of opposition must contain a statement of the grounds upon which the opponent opposes the proposed qualification of rights, which must relate to either or both of the grounds specified in section 46(2) of the Act.

(3) The opponent must serve on the requestor a copy of the notice of opposition at the same time the notice is filed with the Registrar.

(4) If the opponent does not comply with paragraph (3), the notice of opposition is treated as not having been filed.

Counter-statement

42.—(1) Within 2 months (or such longer period as may be granted under rule 43) after the date of receipt of the copy of the notice of opposition, the requestor must file with the Registrar a counter-statement in Form GI18 (called in this Part the counter-statement) setting out —

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(a) the grounds on which the requestor relies as supporting the request; and

(b) the facts alleged in the notice of opposition which the requestor admits, if any.

(2) The requestor must serve a copy of the counter-statement on the opponent at the same time the counter-statement is filed with the Registrar.

(3) If the requestor does not comply with paragraph (1) or (2), the requestor is treated as having withdrawn the request.

Extension of time for filing notice of opposition or counter-statement

43.—(1) Subject to paragraphs (4) and (5), a party may apply to extend the period for the filing of a notice of opposition or a counter-statement by filing with the Registrar Form GI17 —

(a) where the application is for an extension of time to file a notice of opposition, within 2 months after the date of publication of the qualification of rights in rule 40(4); or

(b) where the application is for an extension of time to file a counter-statement, within 2 months after the date of receipt of a copy of the notice of opposition.

(2) The party applying for an extension of time under paragraph (1) —

(a) must state the reason for the extension in the application; and

(b) must, at the time of the application, serve on the other party a copy of the application.

(3) The Registrar may refuse to grant an application under paragraph (1) if the party who applied for an extension of time —

(a) fails to show a good and sufficient reason for the extension; or

(b) fails to show to the Registrar’s satisfaction that a copy of the application has been served on the other party.

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(4) The total period starting on the day after the publication of the qualification of rights and ending on the date by which the notice of opposition must be filed (together with any extension granted under this rule) must not in any case exceed 4 months.

(5) The total period starting on the day after the receipt of the notice of opposition and ending on the date by which the counter-statement must be filed (together with any extension granted under this rule) must not in any case exceed 4 months.

(6) The Registrar must, by notice in writing, inform the party who applied for an extension of time —

(a) whether the application is granted; and

(b) if the application is granted, the length of the extension granted.

(7) If the application under paragraph (1) is granted, the Registrar must, by notice in writing, inform the other party of the length of the extension granted to the party who applied for an extension of time.

(8) The other party may, not later than 2 weeks after receiving the notice in paragraph (7), apply in writing to the Registrar for the revocation of the extension on the ground that the party had not been served a copy of the application under paragraph (1).

Rounds of evidence

44.—(1) Where the counter-statement has been filed, the Registrar, after hearing the parties on the appropriate timelines, must make all of the following directions:

(a) the opponent must, within a specified period (including any extension under rule 45), file with the Registrar a statutory declaration setting out the evidence the opponent wishes to adduce in support of the opposition to the qualification of rights, and serve on the requestor a copy of the same declaration;

(b) the requestor must, within a specified period (including any extension under rule 45), file with the Registrar a statutory declaration setting out the evidence the requestor

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wishes to adduce in support of the request, and serve on the opponent a copy of the same declaration;

(c) the opponent may, within a specified period after the service of the declaration in sub-paragraph (b) (including any extension under rule 45), file with the Registrar a statutory declaration setting out the opponent’s evidence in reply, and serve on the requestor a copy of the same declaration.

(2) Each period specified by the Registrar under paragraph (1) must be 2 months or more.

(3) The opponent’s statutory declaration mentioned in paragraph (1)(c) must be confined to matters that are strictly in reply to the requestor’s statutory declaration mentioned in paragraph (1)(b).

(4) If the opponent does not comply with a direction made under paragraph (1)(a), the opponent is treated as having withdrawn the opposition.

(5) If the requestor does not comply with a direction made under paragraph (1)(b), the requestor is treated as having withdrawn the request.

Extension of time for filing of evidence

45.—(1) A party may apply for an extension of time to file the statutory declaration mentioned in rule 44(1)(a), (b) or (c) by filing with the Registrar Form GI17 before the expiry of the period (including any extension previously granted under this rule) specified by the Registrar for the filing of that statutory declaration.

(2) The application for an extension of time must state —

(a) the length of the extension; and

(b) the reason for the extension.

(3) The party applying for an extension of time under paragraph (1) must serve on the other party a copy of the application at the same time the application is filed with the Registrar.

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(4) The other party may object to an application under paragraph (1) not later than 2 weeks after the date of receipt of a copy of the application.

(5) The Registrar may refuse to grant an application under paragraph (1) if the party who applied for an extension of time —

(a) fails to show a good and sufficient reason for the extension; or

(b) fails to show to the Registrar’s satisfaction that a copy of the application has been served on the other party.

(6) The Registrar may grant or refuse to grant an application under paragraph (1) without a hearing unless it appears to the Registrar that a hearing in accordance with rule 73(1) is required.

(7) If the Registrar grants an application under paragraph (1), the Registrar may also —

(a) extend the period within which the statutory declarations mentioned in rule 44(1)(b) and (c) are to be filed, where the application is for an extension of time to file a statutory declaration mentioned in rule 44(1)(a); or

(b) extend the period within which the statutory declaration mentioned in rule 44(1)(c) is to be filed, where the application is for an extension of time to file a statutory declaration mentioned in rule 44(1)(b).

(8) The Registrar must, by notice in writing, inform the party who applied for the extension of time —

(a) whether the application is granted; and

(b) if the application is granted, the length of the extension granted.

(9) If the application under paragraph (1) is granted, the Registrar must, by notice in writing, inform the other party of —

(a) the extension of time mentioned in paragraph (8)(b); and

(b) any extension of time granted under paragraph (7).

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(10) The other party may, not later than 2 weeks after receiving the notice in paragraph (9), apply in writing to the Registrar to revoke the extension on the ground that the party had not been served a copy of the application under paragraph (1).

Application of evidence provisions

46. Rules 32, 33 and 34 apply to any proceedings arising from a notice of opposition mentioned in rule 41(1), with the following modifications:

(a) the reference in rule 32(1) to the period for the filing of the opponent’s evidence in reply is a reference to the period mentioned in rule 44(1)(c);

(b) a reference to a party is a reference to the requestor or the opponent, as applicable;

(c) a reference to the opposition proceedings is a reference to the proceedings that arise from the filing of a notice of opposition under rule 41(1);

(d) the reference in rule 34(3) to the opposition hearing is a reference to the hearing in rule 36, as applied by rule 47.

Application of opposition hearing provisions

47. Rules 35 to 38 apply to any proceedings arising from a notice of opposition mentioned in rule 41(1), with the following modifications:

(a) a reference in rules 35(1) and 36(1) to the filing of the statutory declaration mentioned in rule 31(1) is a reference to the filing of a statutory declaration mentioned in rule 44(1)(c);

(b) a reference in rules 35(1) and 36(1) to the period specified in rule 31(1) for the filing of the statutory declaration is a reference to the period mentioned in rule 44(1)(c) for the filing of the statutory declaration in rule 44(1)(c);

(c) a reference to the application for the registration of a geographical indication is a reference to the request under rule 40(1);

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(d) a reference to the notice of opposition is a reference to the notice of opposition mentioned in rule 41(1);

(e) a reference to the opponent is a reference to the opponent mentioned in rule 41(1);

(f) a reference to the applicant is a reference to the requestor mentioned in rule 40(1);

(g) the period for the filing of written submissions and bundles of authorities before the hearing mentioned in rule 36(2) is one month.

PART 4

Division 1 — Entry of particulars

Entry in register of particulars of registered geographical indication

48.—(1) There must be entered in the register in respect of each registered geographical indication the following particulars:

(a) the date of the application for registration;

(b) the date of registration;

(d) the nationality of the registrant;

(e) the address for service of the registrant or the registrant’s agent, as the case may be;

(f) the representation of the geographical indication;

(g) the country of origin of the geographical indication;

(h) the goods in respect of which the geographical indication is registered;

(i) any qualification of the rights conferred under the Act in respect of the geographical indication;

(j) where the geographical indication is registered with the consent of the proprietor of a trade mark, that fact;

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(k) where the geographical indication is a homonymous geographical indication, any practical conditions imposed by the Registrar.

(2) Where the Registrar has registered a homonymous geographical indication, the entry in the register in respect of the earlier geographical indication must be amended to include any practical conditions imposed by the Registrar.

(3) Where the registration of a homonymous geographical indication lapses or is cancelled, the registrant of the other homonymous geographical indication may notify the Registrar to remove the practical conditions imposed on its registration.

Division 2 — Rectification

Application for rectification

49.—(1) An application under section 22 of the Act to rectify an error or omission in the register must be made —

(a) where the application is by the registrant of a registered geographical indication:

(i) in Form GI6, if the proposed rectification is to the name, address or other particulars of the registrant; or

(ii) in Form GI2, if the proposed rectification is for any other purpose; or

(b) where the application is by any other person:

(i) in Form GI6, if the proposed rectification is to the name, address or other particulars of that person; or

(ii) in Form GI4, if the proposed rectification is for any other purpose.

(2) An applicant making the application mentioned in paragraph (1)(a)(ii) or (b)(ii) must —

(a) append to the application a statement of the grounds being relied upon; and

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(b) provide to the Registrar such evidence in respect of the application as the Registrar may require.

(3) An applicant making the application mentioned in paragraph (1)(b)(ii) must serve on the registrant —

(a) a copy of the application; and

(b) where evidence is required by the Registrar under paragraph (2)(b), such evidence,

at the same time those documents are filed with the Registrar.

(4) Where the Registrar proposes to allow an application under paragraph (1)(a)(ii) or (b)(ii), the Registrar must publish the proposed rectification of the register in the Geographical Indications Journal.

(5) Where no notice of opposition has been filed within the period specified in rule 50(1), and the Registrar is satisfied that the entry sought to be rectified is an error or omission, the Registrar must make that rectification to the register.

Notice of opposition

50.—(1) A person who claims that the person’s interests will be affected by a proposed rectification of the register made under rule 49(1)(a)(ii) or (b)(ii) (called in this Division the opponent) may, within 2 months (or such longer period as may be granted under rule 52) after the date of publication of the proposed rectification mentioned in rule 49(4), file with the Registrar a notice opposing the proposed rectification in FormGI13 (called in this Division the notice of opposition).

(2) The notice of opposition must contain a statement of the grounds upon which the opponent opposes the proposed rectification.

(3) The opponent must serve on the applicant of the application mentioned in rule 49(1)(a)(ii) or (b)(ii) (as the case may be) a copy of the notice of opposition at the same time the notice is filed with the Registrar.

(4) If the opponent does not comply with paragraph (3), the notice of opposition is treated as not having been filed.

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Counter-statement

51.—(1) Within 2 months (or such longer period as may be granted under rule 52) after the date of receipt of the copy of the notice of opposition from the opponent, the applicant of the application mentioned in rule 49(1)(a)(ii) or (b)(ii) (as the case may be) must file with the Registrar a counter-statement in Form GI18 (called in this Division the counter-statement) setting out —

(a) the grounds on which the applicant relies to support the application under rule 49(1)(a)(ii) or (b)(ii), as the case may be; and

(b) the facts alleged in the notice of opposition which the applicant admits, if any.

(2) The applicant must serve a copy of the counter-statement on the opponent at the same time as the counter-statement is filed with the Registrar.

(3) If the applicant does not comply with paragraph (1) or (2), the applicant is treated as having withdrawn the application under rule 49(1)(a)(ii) or (b)(ii), as the case may be.

Extension of time for filing notice of opposition or counter-statement

52.—(1) Subject to paragraphs (4) and (5), a party may request to extend the period for the filing of a notice of opposition or a counter-statement by filing with the Registrar Form GI17 —

(a) where the request is for an extension of time to file a notice of opposition, within 2 months after the date of publication of the proposed rectification mentioned in rule 49(4); or

(b) where the request is for an extension of time to file a counter-statement, within 2 months after the date of receipt of a copy of the notice of opposition.

(2) The party requesting an extension of time under paragraph (1) —

(a) must state the reason for the extension in the request; and

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(b) must, at the time of the request, serve on the other party a copy of the request.

(3) The Registrar may refuse to grant a request under paragraph (1) if the party who requested an extension of time —

(a) fails to show a good and sufficient reason for the extension; or

(b) fails to show to the Registrar’s satisfaction that a copy of the request has been served on the other party.

(4) The total period starting on the day after the publication of the proposed rectification and ending on the date by which the notice of opposition must be filed (together with any extension granted under this rule) must not in any case exceed 4 months.

(6) The Registrar must, by notice in writing, inform the party who requested an extension of time —

(a) whether the request is granted; and

(b) if the request is granted, the length of the extension granted.

(7) If the request under paragraph (1) is granted, the Registrar must, by notice in writing, inform the other party of the length of the extension granted to the party who requested an extension of time.

(8) The other party may, not later than 2 weeks after receiving the notice in paragraph (7), apply in writing to the Registrar to revoke the extension on the ground that the party had not been served a copy of the request under paragraph (1).

Rounds of evidence

53.—(1) Where the counter-statement has been filed, the Registrar, after hearing the parties on the appropriate timelines, must make all of the following directions:

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(a) the opponent must, within a specified period (including any extension under rule 54), file with the Registrar a statutory declaration setting out the evidence the opponent wishes to adduce in support of the opposition to the application under rule 49(1)(a)(ii) or (b)(ii) (as the case may be) and serve on the applicant a copy of the same declaration;

(b) the applicant must, within a specified period (including any extension under rule 54), file with the Registrar a statutory declaration setting out the evidence the person wishes to adduce in support of the application and serve on the opponent a copy of the same declaration;

(c) the opponent may, within a specified period after the service of the declaration in sub-paragraph (b) (including any extension under rule 54), file with the Registrar a statutory declaration setting out the opponent’s evidence in reply and serve on the applicant a copy of the same declaration.

(2) Each period specified by the Registrar under paragraph (1) must be 2 months or more.

(3) The opponent’s statutory declaration in reply mentioned in paragraph (1)(c) must be confined to matters that are strictly in reply to the applicant’s statutory declaration mentioned in paragraph (1)(b).

(4) If the opponent does not comply with a direction under paragraph (1)(a), the opponent is treated as having withdrawn the opposition.

(5) If the applicant does not comply with a direction under paragraph (1)(b), the applicant is treated as having withdrawn the application.

Extension of time for filing of evidence

54.—(1) A party may request for an extension of time to file a statutory declaration mentioned in rule 53(1)(a), (b) or (c) by filing with the Registrar Form GI17 before the expiry of the period

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(including any extension previously granted under this rule) specified by the Registrar for the filing of that statutory declaration.

(2) The request for an extension of time must state —

(a) the length of the extension; and

(b) the reason for the extension.

(3) The party requesting an extension of time under paragraph (1) must serve on the other party a copy of the request at the same time the request is filed with the Registrar.

(4) The other party may object to a request under paragraph (1) not later than 2 weeks after the date of receipt of a copy of the request.

(5) The Registrar may refuse to grant a request under paragraph (1) if the party who requested an extension of time —

(a) fails to show a good and sufficient reason for the extension; or

(b) fails to show to the Registrar’s satisfaction that a copy of the request has been served on the other party.

(6) The Registrar may grant or refuse to grant a request under paragraph (1) without a hearing unless it appears to the Registrar that a hearing in accordance with rule 73(1) is required.

(7) If the Registrar grants a request under paragraph (1), the Registrar may also —

(a) extend the period within which the statutory declarations mentioned in rule 53(1)(b) and (c) are to be filed, where the request is for an extension of time to file a statutory declaration mentioned in rule 53(1)(a); or

(b) extend the period within which the statutory declaration mentioned in rule 53(1)(c) is to be filed, where the request is for an extension of time to file a statutory declaration mentioned in rule 53(1)(b).

(8) The Registrar must, by notice in writing, inform the party who requested an extension of time —

(a) whether the request is granted; and

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(b) if the request is granted, the length of the extension granted.

(9) If the request under paragraph (1) is granted, the Registrar must, by notice in writing, inform the other party of —

(a) the extension of time mentioned in paragraph (8)(b); and

(b) any extension of time granted under paragraph (7).

Application of evidence provisions

55. Rules 32, 33 and 34 apply to any proceedings arising from the filing of a notice of opposition mentioned in rule 50(1), with the following modifications:

(a) the reference in rule 32(1) to the period for the filing of the opponent’s evidence in reply is a reference to the period mentioned in rule 53(1)(c);

(b) a reference to a party is a reference to the applicant of an application for the rectification mentioned in rule 49(1)(a)(ii) or (b)(ii) (as the case may be) or the opponent, as applicable;

(c) a reference to the opposition proceedings is a reference to the proceedings that arise from the filing of a notice of opposition under rule 50(1);

(d) the reference in rule 34(3) to the opposition hearing is a reference to the hearing in rule 36, as applied by rule 56.

Application of opposition hearing provisions

56. Rules 35 to 38 apply to any proceedings arising from a notice of opposition mentioned in rule 50(1), with the following modifications:

(a) a reference in rules 35(1) and 36(1) to the filing of a statutory declaration mentioned in rule 31(1) is a reference

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to the filing of a statutory declaration mentioned in rule 53(1)(c);

(b) a reference in rules 35(1) and 36(1) to the period specified in rule 31(1) for the filing of the statutory declaration is a reference to the period mentioned in rule 53(1)(c) for the filing of the statutory declaration in rule 53(1)(c);

(c) a reference to the application for the registration of a geographical indication is a reference to the application for the rectification mentioned in rule 49(1)(a)(ii) or (b)(ii), as the case may be;

(d) a reference to the notice of opposition is a reference to the notice of opposition mentioned in rule 50(1);

(e) a reference to the applicant is a reference to the applicant of the application for the rectification mentioned in rule 49(1)(a)(ii) or (b)(ii), as the case may be;

(f) a reference to the opponent is a reference to the opponent mentioned in rule 50(1);

(g) the period for the filing of written submissions and bundles of authorities before the hearing mentioned in rule 36(2) is one month.

Division 3 — Miscellaneous

Application to change name, address or other particulars appearing in register

57.—(1) An application by any person to change the person’s name, address or other particulars appearing in the register must be filed with the Registrar in Form GI6.

(2) If the Registrar is satisfied that an application under paragraph (1) to change any name, address or other particulars is to be allowed, the Registrar must amend the register.

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Application to transfer registration of registered geographical indication

58.—(1) An application by a registrant to transfer the registration of a registered geographical indication to another person under section 53(1) of the Act must be filed with the Registrar in Form GI10.

(2) The application mentioned in paragraph (1) must be authorised by the transferor and the transferee and validated by such means as the Registrar considers fit.

(3) Where an application is not authorised and validated in accordance with paragraph (2), the application must be accompanied by —

(a) a copy of the contract or agreement of transfer; or

(b) a copy of any documentary evidence which in the Registrar’s view is sufficient to prove that the transferee consents to having the registration of the registered geographical indication transferred to the transferee.

(4) The Registrar may require the registrant to provide such other document, instrument and information in support of the application as the Registrar thinks fit, within such time as the Registrar may specify.

Certificate of validity

59.—(1) Where the Court has certified, in accordance with section 76 of the Act, that a registered geographical indication has been validly registered, the registrant of that geographical indication may request in writing that the Registrar add to the entry in the register a note that such certificate has been given in the course of the proceedings named in the written request.

(2) A copy of the certificate must be sent with the written request.

(3) The Registrar must, on the receipt of a copy of the certificate, make the note in the register.

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Extract from register

60. Any person may, by filing Form GI11 with the Registrar, request for a certified extract from, or a certified hard copy of any entry in, the register.

PART 5

RENEWAL OF REGISTRATION OF GEOGRAPHICAL INDICATION

Renewal of registration

61.—(1) An application for the renewal of registration of a geographical indication under section 51 of the Act must be made not earlier than 6 months before, and not later than 6 months after, the date of expiry of the registration.

(2) An application for the renewal of registration of a geographical indication must be made in Form GI3.

(3) Where an application for the renewal of registration of a geographical indication is made in the period of 6 months after the date of expiry of the registration, the application must also be accompanied by the post-expiration renewal fee specified in the First Schedule.

Notice of renewal

62.—(1) Subject to paragraph (2), the Registrar must, not earlier than 6 months before, and not later than one month after the date of expiry of the registration of a geographical indication, send a notice in writing to the registrant, at the registrant’s address for service in Singapore, notifying the registrant of the date of expiry of the registration.

(2) The Registrar need not send the notice specified in paragraph (1) if an application for the renewal of registration of the geographical indication has been made in accordance with rule 61.

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Notice of non-compliance

63.—(1) If, in the course of an examination of an application for renewal of registration of a geographical indication, it appears to the Registrar that the application is not in order, the Registrar must give written notice of this to the applicant.

(2) If the applicant fails to —

(a) respond in writing to the Registrar on the notice; or

(b) comply with any requisition of the Registrar set out in the notice,

within the time specified in the notice, the applicant is treated as having withdrawn the application.

Removal of geographical indication from register

64. The Registrar must remove a geographical indication from the register —

(a) if no application for the renewal of registration of the geographical indication is filed in accordance with rule 61; or

(b) where an application for the renewal of registration of the geographical indication is filed in accordance with rule 61, if the applicant —

(i) fails to comply with any direction of the Registrar relating to the renewal; or

(ii) notifies the Registrar that the applicant wishes to withdraw the application.

PART 6

CANCELLATION

Application for cancellation

65.—(1) An application to the Registrar for the cancellation of the registration of a registered geographical indication must be made —

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(a) where the application for cancellation is made by the registrant, in Form GI7; or

(b) where the application for cancellation is made by any other person, in Form GI4.

(2) The application —

(a) must be accompanied by a statement of the grounds relied upon by the person applying for the cancellation; and

(b) in the case of an application mentioned in paragraph (1)(b), must relate to one or more of the grounds specified in section 52(2) of the Act.

(3) The applicant must provide to the Registrar such evidence in respect of the application as the Registrar may require.

(4) The applicant of an application mentioned in paragraph (1)(b) must serve on the registrant of the registered geographical indication —

(a) a copy of the application; and

(b) where evidence is required by the Registrar under paragraph (3), such evidence,

at the same time those documents are filed with the Registrar.

(5) Where the Registrar proposes to allow an application for the cancellation of the registration of a geographical indication under paragraph (1)(a) or (b), the Registrar must publish the proposed cancellation in the Geographical Indications Journal.

(6) Any person who wishes to oppose the cancellation must, in accordance with rule 66, file with the Registrar a notice of opposition to the cancellation.

(7) Where no notice of opposition has been filed within the period mentioned in rule 66(1), the application must be granted.

Notice of opposition

66.—(1) A person who claims that the person’s interests will be affected by a proposed cancellation of the registration of a registered geographical indication (called in this Part the opponent) may, within

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2 months (or such longer period as may be granted under rule 68) after the date of publication of the proposed cancellation mentioned in rule 65(5), file with the Registrar a notice opposing the cancellation of the registration in Form GI13 (called in this Part the notice of opposition).

(2) The notice of opposition must contain a statement of the grounds upon which the opponent opposes the proposed cancellation.

(3) The opponent must serve on the applicant a copy of the notice of opposition at the same time the notice is filed with the Registrar.

(4) If the opponent does not comply with paragraph (3), the notice of opposition is treated as not having been filed.

Counter-statement

67.—(1) Within 2 months (or such longer period as may be granted under rule 68) after the date of receipt of the copy of the notice of opposition from the opponent, the applicant must file with the Registrar a counter-statement in Form GI18 (called in this Part the counter-statement) setting out —

(a) the grounds on which the applicant relies to support the application under rule 65; and

(b) the facts alleged in the notice of opposition which the applicant admits, if any.

(2) The applicant must serve a copy of the counter-statement on the opponent at the same time the counter-statement is filed with the Registrar.

(3) If the applicant does not comply with paragraph (1) or (2), the applicant is treated as having withdrawn the application under rule 65.

Extension of time for filing notice of opposition or counter-statement

68.—(1) Subject to paragraphs (4) and (5), a party may request to extend the period for the filing of a notice of opposition or a counter-statement by filing with the Registrar Form GI17 —

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(a) where the request is for an extension of time to file a notice of opposition, within 2 months after the date of publication of the proposed cancellation mentioned in rule 65(5); or

(b) where the request is for an extension of time to file a counter-statement, within 2 months after the date of receipt of a copy of the notice of opposition.

(2) The party requesting an extension of time under paragraph (1) —

(a) must state the reason for the extension in the request; and

(b) must, at the time of the request, serve on the other party a copy of the request.

(3) The Registrar may refuse to grant a request under paragraph (1) if the party who requested an extension of time —

(a) fails to show a good and sufficient reason for the extension; or

(b) fails to show to the Registrar’s satisfaction that a copy of the request has been served on the other party.

(4) The total period starting on the day after the publication of the proposed cancellation and ending on the date by which the notice of opposition must be filed (together with any extension granted under this rule) must not in any case exceed 4 months.

(6) The Registrar must, by notice in writing, inform the party who requested an extension of time —

(a) whether the request is granted; and

(b) if the request is granted, the length of the extension granted.

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Rounds of evidence

69.—(1) Where the counter-statement has been filed, the Registrar, after hearing the parties on the appropriate timelines, must make all of the following directions:

(a) the opponent must, within a specified period (including any extension under rule 70), file with the Registrar a statutory declaration setting out the evidence the opponent wishes to adduce in support of the opposition to the proposed cancellation and serve on the applicant a copy of the same declaration;

(b) the applicant must, within a specified period (including any extension under rule 70), file with the Registrar a statutory declaration setting out the evidence the applicant wishes to adduce in support of the proposed cancellation and serve on the opponent a copy of the same declaration;

(c) the opponent may, within a specified period after the service of the declaration in sub-paragraph (b) (including any extension under rule 70), file with the Registrar a statutory declaration setting out the opponent’s evidence in reply and serve on the applicant a copy of the same declaration.

(2) Each period specified by the Registrar under paragraph (1) must be 2 months or more.

(3) The opponent’s statutory declaration mentioned in paragraph (1)(c) must be confined to matters that are strictly in reply to the applicant’s statutory declaration mentioned in paragraph (1)(b).

(4) If the opponent does not comply with a direction under paragraph (1)(a), the opponent is treated as having withdrawn the opposition.

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(5) If the applicant does not comply with a direction under paragraph (1)(b), the applicant is treated as having withdrawn the application under rule 65(1)(a) or (b), as the case may be.

Extension of time for filing of evidence

70.—(1) A party may request for an extension of time to file a statutory declaration mentioned in rule 69(1)(a), (b) or (c) by filing with the Registrar Form GI17 before the expiry of the period (including any extension previously granted under this rule) specified by the Registrar for the filing of that statutory declaration.

(2) The request for an extension of time must state —

(a) the length of the extension; and

(b) the reason for the extension.

(3) The party requesting an extension of time under paragraph (1) must serve on the other party a copy of the request at the same time the request is filed with the Registrar.

(4) The other party may object to a request under paragraph (1) not later than 2 weeks after the date of receipt of a copy of the request.

(5) The Registrar may refuse to grant a request under paragraph (1) if the party who requested an extension of time —

(a) fails to show a good and sufficient reason for the extension; or

(b) fails to show to the Registrar’s satisfaction that a copy of the request has been served on the other party.

(6) The Registrar may grant or refuse to grant a request under paragraph (1) without a hearing unless it appears to the Registrar that a hearing in accordance with rule 73(1) is required.

(7) If the Registrar grants a request under paragraph (1), the Registrar may also —

(a) extend the period within which the statutory declarations mentioned in rule 69(1)(b) and (c) are to be filed, where the request is for an extension of time is to file a statutory declaration mentioned in rule 69(1)(a); or

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(b) extend the period within which the statutory declaration mentioned in rule 69(1)(c) is to be filed, where the request is for an extension of time to file a statutory declaration mentioned in rule 69(1)(b).

(8) The Registrar must, by notice in writing, inform the party who requested an extension of time —

(a) whether the request is granted; and

(b) if the request is granted, the length of the extension granted.

(9) If the request under paragraph (1) is granted, the Registrar must, by notice in writing, inform the other party of —

(a) the extension of time mentioned in paragraph (8)(b); and

(b) any extension of time granted under paragraph (7).

Application of evidence provisions

71. Rules 32, 33 and 34 apply to any proceedings arising from the filing of a notice of opposition mentioned in rule 66(1), with the following modifications:

(a) the reference in rule 32(1) to the period for the filing of the opponent’s evidence in reply is a reference to the period mentioned in rule 69(1)(c);

(b) a reference to a party is a reference to the applicant for cancellation under rule 65(1)(a) or (b) (as the case may be), or the opponent, as applicable;

(c) a reference to the opposition proceedings is a reference to the proceedings that arise from the filing of a notice of opposition under rule 66(1); and

(d) the reference in rule 34(3) to the opposition hearing is a reference to the hearing in rule 36, as applied by rule 72.

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Application of opposition hearing provisions

72. Rules 35 to 38 apply to any proceedings arising from the notice of opposition mentioned in rule 66(1), with the following modifications:

(a) a reference in rules 35(1) and 36(1) to the filing of a statutory declaration mentioned in rule 31(1) is a reference to the filing of the statutory declaration mentioned in rule 69(1)(c);

(b) a reference in rules 35(1) and 36(1) to the period specified in rule 31(1) for the filing of the statutory declaration is a reference to the period mentioned in rule 69(1)(c) for the filing of the statutory declaration in rule 69(1)(c);

(c) a reference to an application for the registration of a geographical indication is a reference to the application for cancellation under rule 65(1)(a) or (b), as the case may be;

(d) a reference to the notice of opposition is a reference to the notice of opposition mentioned in rule 66(1);

(e) a reference to the opponent is a reference to the opponent mentioned in rule 66(1);

(f) a reference to the applicant is a reference to the applicant for cancellation under rule 65(1)(a) or (b), as the case may be;

(g) the period for the filing of written submissions and bundles of authorities before the hearing mentioned in rule 36(2) is one month.

PART 7

EVIDENCE AND PROCEDURE

Registrar’s discretionary powers

73.—(1) Without affecting the provisions of the Act requiring the Registrar to hear any party to any inter partes proceedings under the Act, or to give such party an opportunity to be heard, the Registrar must, before exercising, in any inter partes interlocutory proceedings

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under the Act, any discretionary power in a manner that is adverse to any party to a proceeding, give that party an opportunity to be heard.

(2) A request for the exercise of the discretionary powers of the Registrar in the manner described in paragraph (1) in inter partes interlocutory proceedings must be made to the Registrar in writing.

(3) A person must, at the time the person makes a request under paragraph (2), serve on every other party to the proceedings a copy of the request.

(4) The Registrar may give such directions as the Registrar thinks fit with regard to any aspect of the procedure under this rule.

(5) After hearing each party, the Registrar must notify each party of the Registrar’s decision in relation to the exercise of the discretionary power.

Hearing before Registrar to be in public

74. The hearing before the Registrar of any dispute between 2 or more parties relating to any matter under the Act must be in public unless the Registrar, after consultation with those parties who appear in person or are represented at the hearing, otherwise directs.

Evidence in proceedings before Registrar

75.—(1) In any proceedings before the Registrar under the Act, evidence must be given by way of a statutory declaration, unless otherwise provided by the Act or directed by the Registrar.

(2) Subject to the provisions of the Oaths and Declarations Act (Cap. 211) and these Rules, Order 41 of the Rules of Court (Cap. 322, R 5) applies, with the necessary modifications, in relation to a statutory declaration filed or used in any proceedings before the Registrar as it applies to an affidavit filed or used in any proceedings before the Court.

(3) Despite paragraph (2), any statutory declaration used in any proceedings before the Registrar may contain statements of information or belief with the sources and grounds for the belief.

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(4) Any such statutory declaration may, in the case of an appeal to the Court, be used before the Court in lieu of evidence by affidavit, and if so used, must have all the incidents and consequences of evidence by affidavit.

(5) The Registrar may, in any particular case, take oral evidence in lieu of or in addition to a statutory declaration and must, unless the Registrar otherwise directs, allow any witness to be cross-examined on the witness’ statutory declaration or oral evidence.

Statutory declarations

76. Any statutory declaration filed under the Act, or used in any proceedings under the Act, must be made and subscribed as follows:

(a) in Singapore, before any Justice of the Peace, or any commissioner for oaths or other officer authorised by law to administer an oath for the purpose of any legal proceedings;

(b) in any other part of the Commonwealth, before any court, judge, justice of the peace, notary public or any officer authorised by law to administer an oath there for the purpose of any legal proceedings;

(c) elsewhere, before a Consul, Vice-Consul, or other individual exercising the functions of a Singapore Consul, or before a notary public, judge or magistrate.

Notice of seal of officer taking declaration

77. Any document to or on which the seal or signature of any individual authorised by rule 76 to take a declaration is purportedly affixed, impressed or subscribed, may be admitted by the Registrar without proof of the genuineness of the seal or signature or of the official character of the individual or the individual’s authority to take the declaration.

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PART 8

COSTS

Application for costs

78.—(1) For the purposes of section 26 of the Act, a party to proceedings before the Registrar who desires to obtain costs must apply to the Registrar for an award of costs in relation to the proceedings —

(a) during the proceedings; or

(b) within one month after —

(i) the date on which the Registrar makes a decision in the proceedings that ends those proceedings; or

(ii) the date of the Registrar’s notice to the party that the proceedings have been withdrawn, discontinued or dismissed,

as the case may be.

(2) Before awarding costs in respect of the proceedings, the Registrar must give each party to the proceedings an opportunity to be heard in relation to the award of costs.

Taxation of costs

79.—(1) Where —

(a) the Registrar has awarded party and party costs to a party to the proceedings before the Registrar; and

(b) the party wishes to have the costs taxed by the Registrar,

the party must, within one month after the relevant date mentioned in paragraph (2), apply for the costs to be taxed by filing a copy of the bill of costs with the Registrar and serving a copy of the bill of costs on the other party at the same time.

(2) In paragraph (1), the relevant date is —

(a) subject to sub-paragraph (b), the date of the order for costs made by the Registrar; or

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(b) where any appeal is brought in respect of that order for costs, the date on which that appeal is finally disposed of.

(3) Every bill of costs must set out in 3 separate sections —

(a) work done in the cause or matter (other than for or in the taxation of costs);

(b) work done for or in the taxation of costs; and

(4) The costs claimed under paragraph (3)(a), (b) and (c) must set out the sum claimed for each item.

(5) The bill of costs must set out in chronological order, with dates, all relevant events in the cause or matter, all relevant events in the taxation of costs, and all relevant events relating to the making of disbursements.

(6) Where costs have already been awarded for any of the items set out in the bill of costs, this fact and the amount awarded must be indicated.

(7) Any party on whom a copy of the bill of costs has been served in accordance with paragraph (1) must, if that party wishes to dispute the bill or any part of the bill, within one month after the receipt of the copy of the bill, mark the copy in accordance with paragraph (8) and send copies of the marked copy to the Registrar and the party requesting for taxation.

(8) The marking of a copy of a bill of costs must be effected by writing on the right hand margin against each item the word “Agree” if the party concerned agrees with the cost claimed for that item, or the word “Disagree” if the party concerned disagrees with the cost claimed for that item.

(9) Upon expiry of the period mentioned in paragraph (7), the Registrar must give to the parties having an interest in the taxation proceedings notice of the date and time appointed for taxation.

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Taxation proceedings

80.—(1) The Registrar may proceed with the taxation even if any party entitled to be heard in any taxation proceedings does not attend at the time appointed for taxation.

(2) The Registrar may, if the Registrar thinks it necessary to do so, adjourn the proceedings.

Scale of costs

81.—(1) The provisions in the Third Schedule apply to the sections of the bill of costs relating to —

(a) work done in the cause or matter (other than for or in the taxation of costs); and

(b) work done for or in the taxation of costs.

(2) Costs awarded in these proceedings are not intended to compensate the parties for the expense to which they may have been put.

Certificate

82. When a bill of costs has been taxed, the party who applied for the costs to be taxed must file with the Registrar Form GI16, and the Registrar must proceed to make the Registrar’s certificate for the amount of the taxed costs.

PART 9

EXTENSION OF TIME AND CONTINUED PROCESSING

Request for extension of time

83.—(1) Subject to paragraph (10), any period of time —

(a) prescribed by these Rules; or

(b) specified by the Registrar for doing any act or taking any proceedings,

may, at the request of the person or party concerned, be extended by the Registrar by such period and upon such terms as the Registrar considers fit.

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(2) A request for an extension of time under paragraph (1) —

(a) where the request relates to any inter partes proceedings, must be made by filing with the Registrar Form GI17 before the expiry of the period of time in question; or

(b) where the request relates to any other matter, must be made by filing with the Registrar Form GI9 before the expiry of the period of time in question.

(3) A request for an extension of time mentioned in paragraph (2)(a) must state —

(a) the period of extension requested; and

(b) the reason for the extension.

(4) A person making a request mentioned in paragraph (2)(a) must serve a copy of the request on the other party at the same time the request is filed with the Registrar.

(5) The other party may submit an objection to the request mentioned in paragraph (2)(a) not later than 2 weeks after the receipt of a copy of the request.

(6) The Registrar may refuse to grant a request under paragraph (1) if the person who requested the extension of time —

(a) fails to show a good and sufficient reason for the extension; and

(b) in the case of a request mentioned in paragraph (2)(a), fails to show to the Registrar’s satisfaction that the request for extension has been served on the other party.

(7) The Registrar may grant or refuse to grant a request under paragraph (1) without a hearing unless, in the case of a request mentioned in paragraph (2)(a), it appears to the Registrar that a hearing in accordance with rule 73(1) is required.

(8) The Registrar must, by notice in writing, inform the party who requested the extension of time —

(a) whether the request is granted; and

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(b) if the request is granted, the length of the extension granted.

(9) If the Registrar grants a request mentioned in paragraph (2)(a), the Registrar must, by notice in writing, inform the other party of the extension of time mentioned in paragraph (8)(b).

(11) Paragraphs (1) to (10) do not apply to the following matters:

(a) the remedying of a deficiency under rule 16;

(b) the filing of a notice of objection under rule 20(1);

(d) the filing of a counter-statement under rule 21(1), 29(1), 42(1), 51(1) or 67(1);

(e) the filing of a statutory declaration under rule 27(1), 29(1), 44(1)(a), (b) or (c), 53(1)(a), (b) or (c) or 69(1)(a), (b) or (c);

(f) the filing of a request for the Registrar’s grounds of decision under rule 37(3), or rule 37(3) as applied by rule 47, 56 or 72;

(g) the filing of an application to renew the registration of a geographical indication under rule 61;

(h) responding to or complying with a notice under rule 63;

(i) the making of a request under rule 86 to continue processing an application which was treated as abandoned.

Extension of time for other party to proceedings

84. Where any extension of time is granted by the Registrar under rule 83 to a party to any proceedings under the Act, the Registrar may, if the Registrar thinks fit, without giving the party a hearing, grant a

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reasonable extension of time to the other party in which to take any subsequent step.

Where non-compliance with time caused by act of employee in Registry

85.—(1) Where, by reason of an act or omission of any individual employed in the Registry, an act or step in relation to an application for the registration of a geographical indication or any other proceedings before the Registrar, required to be done or taken within a period of time, has not been so done or taken, the Registrar may, despite the provisions of these Rules, extend the period for doing the act or taking the step by such period as the Registrar considers fit.

(2) Despite the provisions of these Rules, the period of time for doing an act or taking a step under paragraph (1) may be extended although the period has expired.

Application for registration of geographical indication entitled to continued processing in certain circumstances

86.—(1) Where an application for registration of a geographical indication is treated as abandoned under section 43(5) of the Act by reason of the applicant’s failure to respond within the period mentioned in section 43(3) of the Act, the applicant may make a request to the Registrar in Form GI3 for the Registrar to continue processing the application.

(2) The Registrar must reject the request unless —

(a) the request is made within 2 months after the expiry of the period mentioned in section 43(3) of the Act; and

(b) at the time of the request, the applicant does one or more of the acts listed under rule 24(1)(b) and stated in the written notice given by the Registrar under rule 24(1).

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PART 10

HOURS OF BUSINESS AND EXCLUDED DAYS

Hours of business and excluded days

87.—(1) Any business done under the Act —

(a) on any day after the hours of business of the Registry for that class of business; or

(b) on any day which is an excluded day for that class of business,

is taken to have been done on the next following day which is not an excluded day for that class of business.

(2) Where the time for doing any business under the Act expires on an excluded day for the doing of that class of business, that time is extended to the next following day which is not an excluded day for the doing of that class of business.

(3) Subject to rule 9(6), where a document —

(a) is transmitted to the Registrar or Registry by means of facsimile transmission; and

(b) is received by any facsimile machine designated by the Registry for the receipt of such transmission and at any time before midnight on any day which is not an excluded day for the business of sending to or filing with the Registry that document by means of facsimile transmission,

that document is treated as sent to, filed with, or received by, the Registry at that time and on that day.

(4) In paragraph (3) —

(a) a document is treated as sent to, filed with, or received by, the Registry if and only if all sheets comprising the complete document are received by the facsimile machine mentioned in that paragraph; and

(b) the date and time of receipt of the document, as recorded by the facsimile machine mentioned in that paragraph, is

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treated (until the contrary is proved) as the date and time when the document was sent to or filed with, and received by, the Registry.

Extension of period where interruption in postal service, etc.

88.—(1) Where, on any day, there is an interruption in —

(a) the postal service of Singapore; or

(b) the operation of the Registry,

the Registrar may issue practice directions to specify that day as one on which there has been such interruption.

(2) Where any period of time specified in the Act for the giving, sending, filing or serving of any notice, application or other document expires on a day so specified, the period is extended to the first day following the specified day (not being an excluded day) which is not so specified.

(3) If in any case the Registrar is satisfied that the failure to give, send, file or serve any notice, application or other document within the period specified in the Act was wholly or mainly attributable to a failure of or delay in the postal service of Singapore, the Registrar may, if the Registrar thinks fit and upon such terms as the Registrar may direct, extend the period so that it ends on the day of the receipt by the addressee of the notice, application or other document or, if the day of such receipt is an excluded day, on the first following day which is not an excluded day.

(4) The Registrar must give notice of any extension mentioned in paragraph (3) to all parties to the matter.

PART 11

MISCELLANEOUS

Case management conference

89.—(1) Despite anything in these Rules, at any stage of any application to or proceedings before the Registrar, the Registrar may direct the applicant or parties to attend a case management conference in order that the Registrar may make such order or give such direction

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as the Registrar thinks fit for the just, expeditious and economical disposal of the matter.

(2) At a case management conference, the Registrar may —

(a) consider any matter, including the possibility of settlement of any or all of the issues in the application or proceedings; and

(b) direct the parties to provide the Registrar with such information as the Registrar may require.

(3) If any party fails to comply with any direction or order given under paragraph (1) or (2), the Registrar may —

(a) where that direction or order was given in relation to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be; or

(b) make such other order as the Registrar thinks fit.

(4) Any direction given or order made by the Registrar under paragraph (1), (2) or (3) may be set aside or varied by the Registrar on such terms as the Registrar thinks fit.

(5) If, during or pursuant to a case management conference, the parties are agreeable to a settlement of all or some of the matters in dispute in any application or proceedings, the Registrar may —

(a) give the Registrar’s decision in relation to the application or proceedings; or

(b) make such order as the Registrar thinks just to give effect to the settlement.

(6) If any party does not appear at a case management conference, the Registrar may —

(a) where the case management conference pertains to any application or proceedings initiated by that party, dismiss the application or proceedings, as the case may be;

(b) make such other order as the Registrar thinks fit; or

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(7) An order made by the Registrar in the absence of a party under paragraph (6) may be set aside by the Registrar, on the application of that party, on such terms as the Registrar thinks fit.

(8) Any application or proceedings dismissed under paragraph (3) or (6) may, on application of a party, be restored on the direction of the Registrar.

Production of documents, information or evidence

90. Despite anything in these Rules, at any stage of any application or request to, or proceedings before, the Registrar, the Registrar may direct the applicant, requestor or other party to produce or file, within such period as the Registrar may specify, any document, information or evidence which the Registrar may reasonably require.

Appeal

91. The following decisions of the Registrar are subject to appeal to the Court:

(a) a decision in objection proceedings in rule 22;

(b) a decision in opposition proceedings in rule 37 and rule 37 as applied by rules 47, 56 and 72.

Irregularities

92. Any irregularity in procedure which, in the opinion of the Registrar, is not detrimental to the interests of any person or party, may be corrected on such terms as the Registrar may direct.

Amendment of application, notice or other document

93.—(1) A request under section 54(a) of the Act to amend an application (other than an application for registration of a geographical indication), notice or other document to correct a clerical error or an obvious mistake must be made in Form GI8.

(2) For the purposes of paragraph (1), the amendment must be clearly identified in the form itself or on a document filed together with the form.

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(3) The Registrar may call for such written explanation of the reasons for the request or evidence in support of the request as the Registrar may require in order to be satisfied that there is an error or a mistake.

(4) Paragraph (1) does not apply to the correction of an error of translation or transcription or of a clerical error or mistake in any document filed in inter partes proceedings under —

(a) Division 2 of Part 2;

(b) Division 6 of Part 2;

(d) Division 2 of Part 4;

(e) Part 6;

(f) Rule 73;

(g) Part 8; or

(h) Rule 83.

(5) A request for the correction of an error in respect of any proceedings mentioned in paragraph (4) must be made to the Registrar in writing.

Application to Court

94. A person who makes an application to the Court under the Act must as soon as practicable file a copy of the application with the Registrar.

Order of Court

95.—(1) Where an order is made by the Court or any other competent authority in any matter under the Act, the person, or one of the persons, in whose favour the order is made must as soon as practicable file a copy of the order with the Registrar.

(2) If the order is to rectify or alter the register, the Registrar must rectify or alter the register (as the case may be) in accordance with that order.

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Geographical Indications Journal

96.—(1) The Registrar must publish a journal, to be called the Geographical Indications Journal, which must contain —

(a) all matters that are required to be published in that Journal under rules 19(1), 25, 40(4), 49(4) and 65(5); and

(b) such other information as the Registrar thinks fit.

(2) The Geographical Indications Journal must be published with such frequency as the Registrar may direct.

FIRST SCHEDULE Rules 3 and 61(3)

FEES

Matter Corresponding Rule(s)

Fee Corresponding Form(s)

1. Application to register geographical indication

13 $1,000 GI1

2. Application to amend application for registration of geographical indication (other than change of name, address or particulars of applicant)

14(2), 18(1)(b) $230 GI2

3. Application by registrant to rectify entry in register (other than to name, address or other

49(1)(a)(ii) $230 GI2

particulars of registrant)

4. Request to enter qualification of rights in register

40 $230 GI2

5. Application to renew registration of geographical indication (other than a late application for renewal)

61(1) $940 in respect of each geographical indication

GI3

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FIRST SCHEDULE — continued

Matter

6. Post-expiration renewal fee for late application to renew registration of geographical indication

7. Request to continue processing application that was treated as abandoned

8. Application, by person other than registrant, to rectify entry in register (other than to name, address or other particulars of that person)

9. Application, by person other than registrant, to cancel registration of geographical indication

10. Request to appoint, change or remove agent

11. Application to change Singapore address for service of applicant, registrant or other party

12. Application to change agent’s name in register

13. Application to amend application for registration of geographical indication to change name, address or other particulars of applicant

14. Application to rectify name, address or other particulars in register

Corresponding Fee Corresponding Rule(s) Form(s)

61(3) $300 in GI3 respect of each geographical indication

86 $180 GI3

49(1)(b)(ii) $550 GI4

65(1)(b) $550 GI4

12(4), (5), (7) $8.50 GI5

11(11) $13 GI6

12(6) $13 GI6

18(1)(a) $13 GI6

49(1)(a)(i), $13 GI6 (b)(i)

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FIRST SCHEDULE — continued

Matter

15. Application by any person to change the person’s name, address or other particulars in register

16. Application by registrant to cancel registration of geographical indication

17. Request to amend application, notice or other document to correct error or obvious mistake

18. Request for extension of time for matters not relating to inter partes proceedings

19. Application to transfer registration of registered geographical indication

20. Request for certified hard copy of entry in register or certified extract from register

21. Request to withdraw application for registration of geographical indication

22. Certifying office copies, manuscripts or printed matter

23. Purchase of copy of the Geographical Indications Journal

Corresponding Rule(s)

Fee Corresponding Form(s)

57(1) $13 GI6

65(1)(a) $30 GI7

93(1) $50 GI8

83(2)(b) Free for first and second requests

GI9

$50 for third and subsequent requests

58(1) $70 in respect of each geographical indication

GI10

60 $35 in respect of each certified hard copy or certified extract

GI11

17(b) — GI12

$12 —

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FIRST SCHEDULE — continued

Matter

24. Notice of objection to amendment of application for registration of geographical indication which has been published

25. Notice of opposition to registration of geographical indication

26. Notice of opposition to request for qualification of rights conferred under Act in respect of geographical indication

27. Notice of opposition to application to rectify entry in register in respect of registered geographical indication

28. Notice of opposition to application to cancel registration of registered geographical indication

29. Request for grounds of decision for objection proceedings in respect of amendment of application for registration of geographical indication which has been published

30. Request for grounds of decision for opposition proceedings in respect of registration of geographical indication

Corresponding Fee Corresponding Rule(s) Form(s)

20(1) $550 GI13

27(1) $550 GI13

41(1) $550 GI13

50(1) $550 GI13

66(1) $550 GI13

37(3) as $1,400 GI14 applied by 22(2)

37(3) $1,400 GI14

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FIRST SCHEDULE — continued

Matter

31. Request for grounds of decision for opposition proceedings in respect of request for qualification of rights conferred under Act in respect of geographical indication

32. Request for grounds of decision for opposition proceedings in respect of application to rectify entry in register in respect of registered geographical indication

33. Request for grounds of decision for opposition proceedings in respect of application to cancel registration of registered geographical indication

34. Notice of attendance at objection hearing

35. Notice of attendance at opposition hearing

36. Request to extract Registrar’s certificate of taxation

37. Request for extension of time to file notice of objection or counter-statement

Corresponding Fee Corresponding Rule(s) Form(s)

37(3) as $1,400 GI14 applied by 47

37(3) as $1,400 GI14 applied by 56

37(3) as $1,400 GI14 applied by 72

$715 GI15

36(3), and $715 GI15 36(3) as applied by 47, 56 and 72

82 $110 GI16

23(1) $100 GI17

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FIRST SCHEDULE — continued

Matter

38. Request for extension of time in opposition proceedings (other than in respect of opposition to registration of geographical indication) to file notice of opposition or counter-statement

39. Request for extension of time in opposition proceedings (other than in respect of opposition to registration of geographical indication) to file statutory declaration

40. Request for extension of time in proceedings in respect of opposition to registration of geographical indication, to file notice of opposition, counter- statement, or statutory declaration in support of or in opposition to the registration

41. Request for extension of time in inter partes proceedings

42. Filing of counter-statement to notice of objection to amendment of application for registration of geographical indication which has been published

Corresponding Fee Corresponding Rule(s) Form(s)

43(1), 52(1), $100 GI17 68(1)

45(1), 54(1), $100 GI17 70(1)

30(1), 31(4) $100 GI17

83(2)(a) $100 GI17

21(1) $550 GI18

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FIRST SCHEDULE — continued

Matter

43. Filing of counter-statement to notice of opposition to registration of geographical indication

44. Filing of counter-statement to notice of opposition to request for qualification of rights conferred under Act in respect of geographical indication

45. Filing of counter-statement to notice of opposition to application to rectify entry in register in respect of registered geographical indication

46. Filing of counter-statement to notice of opposition to application to cancel registration of registered geographical indication

Corresponding Fee Corresponding Rule(s) Form(s)

29(1) $550 GI18

42(1) $550 GI18

51(1) $550 GI18

67(1) $550 GI18

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SECOND SCHEDULE Rule 5(2)

DESCRIPTION OF FORMS

Form No. Description of Form

GI1 Application to register geographical indication

GI2 Application to amend application for registration of geographical indication, application by registrant to rectify entry in register, or request for qualification of rights

GI3 Application to renew registration of geographical indication or to request for continued processing of an application for registration of geographical indication that was treated as abandoned

GI4 Application, by any person other than the registrant, to rectify entry in register or cancel registration of geographical indication

GI5 Request to appoint, change or remove agent

GI6 Application to change or correct name, address, Singapore address for service, or other particulars of applicant, agent, registrant or other party

GI7 Application by registrant geographical indication

to cancel registration of

GI8 Request to correct error or mistake in application, notice or other document

GI9 Request for extension of time for matters not relating to inter partes proceedings

GI10 Application to transfer registration of registered geographical indication

GI11 Request for certified hard copy of entry in register or certified extract from register

GI12 Request to withdraw geographical indication

application for registration of

GI13 Notice of objection or opposition

GI14 Request for grounds of decision in objection or opposition proceedings

GI15 Notice of attendance at objection or opposition hearing

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SECOND SCHEDULE — continued

Form No. Description of Form

GI16 Request to extract Registrar’s certificate of taxation

GI17 Request for extension of time to file notice of opposition, counter-statement, statutory declaration or other matter in inter partes proceedings

GI18 Counter-statement

THIRD SCHEDULE Rule 81(1)

SCALE OF COSTS

Item Matter Amount

INSTITUTION OF PROCEEDINGS

1. Drawing and filing notice of objection or $390 opposition, including a statement of grounds

2. Drawing and filing counter-statement $390

3. Preparing and filing evidence for objection $390 - $2,080 per or opposition proceedings statutory declaration

4. Reviewing any document mentioned in $195 - $1,040 per items 1, 2 and 3 document

INTERLOCUTORY PROCEEDINGS, ETC.

5. Preparing for all interlocutory proceedings, $65 - $650 per pre-hearing reviews and case management proceeding, review conferences or conference

6. Attending all interlocutory proceedings, $65 - $650 per pre-hearing reviews and case management proceeding, review conferences or conference

FULL HEARINGS

7. Preparing for objection or opposition hearing $650 - $2,600

8. Attendance at objection or opposition hearing $260 - $1,040

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THIRD SCHEDULE — continued

Item Matter Amount

TAXATION

9. Drawing bill of costs $6.50 per folio

10. Attending taxation and obtaining Registrar’s certificate or order

the $130 - $390

Made on 28 February 2019.

NG HOW YUE Permanent Secretary,

Ministry of Law, Singapore.

[LAW 52/001; AG/LLRD/SL/117B/2013/1 Vol. 1]

Singapur

SG146

Geographical Indications Rules 2019 (S No. 125/2019)