Singapore: Amendments to the Trade Marks Rules

In brief

Amendments will be made to the Trade Marks Rules, which will take effect from 1 October 2021.


Key amendments

A summary of the key amendments is set out below.

(1) Provision of translation and/or transliteration for trade mark applications

  • Rule 20 of the Trade Marks Rules is amended and for trade mark applications in Singapore, it will no longer be a mandatory requirement to provide translation and/or transliteration for foreign characters in a trade mark.
  • The Registrar may, however, still require translation and/or transliteration to be provided in cases when the Registrar is unable to identify the foreign characters in a trade mark.

(2) Registrar may shorten evidential deadlines

  • Currently, the Registrar stipulates the periods within which parties' evidence may be filed. Rule 31(1A) will be introduced in the Trade Marks Rules, and the Registrar will be empowered to shorten these evidential deadlines, provided that the parties are given an opportunity to be heard.
  • According to Circular No. 5/2021 by the Intellectual Property Office of Singapore, this power will normally be applied in circumstances where the parties were previously exploring settlement but are no longer doing so, and should therefore be in the position to file evidence within a shorter time.

(3) Registrar may consolidate proceedings on own accord

  • Rule 81C will be introduced in the Trade Marks Rules, and the Registrar will be empowered to consolidate proceedings on their own accord after giving parties an opportunity to be heard, if the Registrar is of the opinion of any of the following:
  1. there is some common question of law or fact in the matters or proceedings
  2. the rights to relief claimed in the matters or proceedings are in respect of the same factual situation
  3. for any other reason, it is desirable for the matters or proceedings to be consolidated

(4) Removal of form and fee for Registrar's Certificate of Taxation

  • Currently, when a bill of costs has been taxed, the party who applied for the costs to be taxed is required to file Form HC2 and pay the relevant fee for the issuance of a Certificate of Taxation.
  • In order to streamline the process and reduce taxation related-costs, Rule 76 of the Trade Marks Rules is amended to allow the Registrar to issue a Certificate of Taxation without the need for the party to file Form HC2 and pay the relevant fee.

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