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(HMD Circular No. 1/2011, dated 08 April 2011)
A party may apply to the Registrar for leave to file further evidence after evidence is closed (Rule 35, Trade Marks Rules 2008 Rev Ed). The requesting party should submit a draft statutory declaration setting out the further evidence that is sought to be admitted and state why the evidence is relevant but could not have been adduced earlier. At the same time, the other party must be copied on the request and his consent must be sought.
A. FURTHER EVIDENCE WITH CONSENT
If there is consent from the other party, the Registrar will in appropriate cases generally allow the further evidence and if necessary, issue such directions on the subsequent procedure as is deemed fit, including but not limited to adjourning the hearing, allowing the other party to file further evidence in reply where relevant, as well as awarding such costs as may be just.
B. FURTHER EVIDENCE WITHOUT CONSENT
If there is no consent from the other party, the Registrar does not allow further evidence to be filed simply as a matter of course. Whether leave would be granted depends on the facts and circumstances of each case. In considering whether to grant leave for the further evidence, the Registrar will conduct a balancing exercise, involving a consideration of the public interest that rules relating to procedure are complied with and the need to ensure that there is proper adjudication of a case based on its merits in the interest of justice between the parties. In particular, the Registrar will carefully weigh the following non-exhaustive factors on a case by case basis:
(i) why the party seeking to file the further evidence did not do so earlier when the main evidence or evidence in reply fell due; it should be shown that the evidence could not have been obtained earlier with reasonable diligence
(ii) whether the further evidence is necessitated by the evidence filed by the other party
(iii) whether the other party would suffer any real prejudice which cannot be compensated with costs if the further evidence is allowed
(iv) whether allowing the further evidence will allow the substantial issues to be satisfactorily and fully considered and determined or whether the application is only a tactical manoeuvre and allowing the further evidence would result in prejudice to the other party
(v) the stage of the proceedings at which the further evidence is sought (e.g. at the Pre-Hearing Review in contrast to one day before the hearing), considerations of disruption to proceedings and extra costs generated by the delay being relevant.
All relevant factors will be considered, though the main weight is attached to the desirability of having the substantial issues satisfactorily and fully considered and determined. However, this factor may be outweighed by the totality of the other factors in certain cases.
If leave to file further evidence is granted, the Registrar may issue such necessary directions on the subsequent procedure as is deemed fit, including but not limited to adjourning the hearing, allowing the other party to file further evidence in reply where relevant, as well as awarding such costs as may be just.
(HMD Circular No. 2/2011, dated 08 April 2011)
This circular pertains to trade mark revocations on the ground of non-use and the proprietor's obligation to file evidence in defence of his trade mark registration.
Rule 58(3) of the Trade Marks Rules (Cap 332) 2008 Rev Ed requires a proprietor to file evidence of use together with his counter-statement (Form TM 12).
Mode of Giving Evidence
Rule 69(1) provides that "evidence shall be given by way of a statutory declaration, unless otherwise provided by the Act or these Rules or directed by the Registrar."
In both the Trade Marks Act and Rules, there are no exceptions given to Rule 69(1) in terms of how evidence is to be given by a proprietor under Rule 58(3). Hence, Rule 69(1) applies to Rule 58(3).
In practice, this means that if a proprietor intends to defend his trade mark registration against revocation for non-use, he needs to file evidence of use by way of statutory declaration together with his counter-statement.
On the other hand, if a proprietor intends to defend his trade mark registration by giving proper reasons for non-use, there is no issue of evidence of use. Hence, he merely needs to give his reasons for non-use in the counter-statement without a statutory declaration.
Content of Evidence
At the counter-statement stage, a proprietor is only required to show that he has an arguable case. The evidence does not need to comprise the proprietor's entire defence in relation to use. More detailed evidence, if any, can be filed later in the proceedings.
The requirement in Rule 58(3) for a proprietor to file prima facie evidence of use upfront reflects the statutory burden on the proprietor of a registered mark to show what use has been made of it, under Section 105.
As a matter of best practice, the proprietor's prima facie evidence should comprise:
(i) some material showing the mark in use e.g. catalogues, product labels, advertisements
(ii) some indication of sales e.g. invoices, purchase orders
Grace Period
The consequence of not filing evidence in accordance with Rule 58(3) is that the application for revocation will be granted under Rule 59(1). This means that the proprietor's registered mark will be revoked.
As the Registrar has accepted counter-statements containing information on the use of the mark without sworn evidence under past practice, there will be a grace period of 6 months from 1 May 2011 to 31 October 2011 for proprietors to adjust to the change set out in this circular.
Where the proprietor's counter-statement is filed during this grace period, if his information on the use of the mark is not filed by way of a statutory declaration, the Registrar will direct the proprietor at the Case Management Conference to remedy this defect in evidence by re-filing it as a statutory declaration and will allow the proceedings to continue. However, if the counter-statement does not already contain any information on the use of the mark, nor proper reasons for non-use, the Registrar will apply Rule 59(1) to grant the application for revocation.
After the grace period, from 1 November 2011 onwards, the Registrar will apply Rule 59(1) to grant the application for revocation if no evidence by way of statutory declaration is filed with the counter-statement.
Evidential Rounds
After the proprietor's counter-statement and evidence by way of statutory declaration is filed, Rule 59(1) provides that Rules 32 to 40 apply with the necessary modifications to terms of reference.
In effect, this means that the applicant for revocation files his evidence after the counter-statement under Rule 32. This is followed by the proprietor's second set of sworn evidence under Rule 33, and the applicant's evidence in reply, if any, under Rule 34. If the proprietor does not file evidence under Rule 33, Rule 59(2)(d) applies and he is treated as admitting to the facts alleged by the applicant for revocation.
In practice, if the proprietor has already filed evidence of use amounting to his entire defence together with his counter-statement, after the applicant for revocation files his evidence, the proprietor may file a simple statutory declaration to refer to the statutory declaration filed earlier with his counter-statement as his entire evidence in defence. There is no need to adduce all the earlier evidence afresh in such a case. As there is no further evidence for the applicant to reply to in such a case, evidence for the matter will be deemed closed. The matter will move on to the Pre-Hearing Review stage.
On the other hand, if, beyond the evidence of use filed together with his counter-statement, the proprietor has more evidence to adduce after the applicant files his evidence, the usual evidential process in Rules 33 and 34 applies.
(HMD Circular No. 3/2011, dated 15 April 2011)
A. LIABILITY FOR COSTS
Award of Costs
The Registrar has the discretion to award costs against any party to proceedings brought before him in relation to any matter and in the amounts provided for by the Trade Marks Rules (Section 69 of the Trade Marks Act (Cap 332) 2005 Rev Ed). Pursuant to the above discretionary power, the Registrar can also direct the method in which payment is to be made. In general, the successful party in contested proceedings is usually entitled to an award of costs. At any hearing, it is open to the parties to submit arguments on costs, and this should always be done especially if it is claimed that costs should not follow the event.
Consolidation of Proceedings
If the proceedings were consolidated before any evidence had been filed, the cost would normally be awarded for each stage of the evidence as if it was a single set of proceedings. However, if the consolidation had been requested after evidence had been filed, costs would normally be awarded for each set of proceedings separately up to the stage when consolidation was requested, and as though they were one set of proceedings thereafter.
Joint Initiating Parties
Where two or more parties have joined in to oppose / invalidate / revoke / rectify an application and the action is successful, any costs awarded to the joint initiating parties are calculated as being for one party only. If the action is not successful, the default position is that the joint initiating parties are considered to be jointly and severally liable unless otherwise stated.
Taxation
The usual order for costs in an inter partes hearing would direct the party and party costs to be taxed if not agreed. Unless they are agreed, no costs are payable unless they have been taxed. “Party and party costs” refer to such costs as are necessary or proper for the attainment of justice or for enforcing or defending the rights of the party whose costs are being taxed. The party and party costs chargeable under a taxation are all that are necessary or proper to enable the party to conduct the proceedings, and no more. Unless the order for costs specifies taxation on some other bases, costs would be taxed on party and party basis.
Applicability of Scale of Costs (Fourth Schedule of the Trade Marks Rules)
The Scale of Costs in the Fourth Schedule applies in relation to taxation hearings / proceedings. The Registrar does not have the discretion to depart from the Scale of Costs provided in the Fourth Schedule (Rule 75(1)). Further, it is to be noted that costs awarded in taxation proceedings are not intended to compensate the parties for the expense to which they may have been put (Rule 75(2)).
Guidelines to the Application of the Scale of Costs
In applying the Scale of Costs, the Registrar will be guided by the factors below:
(i) In relation to the preparation, drawing, filing and review of the notice of opposition, application for revocation, declaration of invalidity of registration and rectification of an entry in the Register, the Registrar will take into account:
(a) the number of grounds raised
(b) the complexity of the issues of fact and law will be considered
(ii) In relation to the preparation, drawing and filing of the evidence, the Registrar will take into account:
(a) the complexity of the evidence filed
(b) the amount and relevance of the evidence filed
(c) the number of deponents involved
(iii) In relation to the preparation of all types of hearings, the Registrar will take into account:
(a) the number of grounds raised
(b) the complexity of issues of fact and law
(c) the length of written submissions (if any)
(d) the amount and relevance of authorities cited (if any)
(e) the number of witnesses taking the stand (if any)
(iv) In relation to the attendance of all types of hearings, the Registrar will take into account:
(a) the complexity of issues of fact and law
(b) the time taken for the hearing
(c) the number of witnesses taking the stand (if any)
(v) In relation to the general and travelling expenses incurred by witnesses, the Registrar will take into account:
(a) the complexity of issues of fact
(b) the time taken for the witness' attendance
B. SECURITY FOR COSTS
(This section of the circular updates and replaces HMD Circular No. 1/2009 on Applications for Security for Costs.)
Section 70 of the Trade Marks Act (Cap 332) 2005 Rev Ed provides:
If a person who neither resides nor carries on business in Singapore —
(a) gives notice of opposition under section 13; or
(b) applies to the Registrar under section 22 or 23 for the registration of a trade mark to be revoked or to be declared invalid, as the case may be,
the Registrar may require the person to give security for the costs for the proceedings and may, if security is not given, dismiss the proceedings.
[Emphasis added]
It is clear from the above that there can be 2 stages involved in proceedings related to security for costs. At the first stage, the Registrar has the discretion whether to require one party to give security upon the fulfillment of the criteria. At the second stage, where security is not given, again the Registrar has the discretion whether to dismiss the proceedings. In general, the Registrar will exercise her discretion as a 2-stage process.
I. Application for Security for Costs
A) Whether to Grant Security for Costs
Condition Precedent
It is only if the Initiating Party1 neither resides nor carries on business in Singapore that the Registrar has a discretion to require him to provide security for costs of the opposition or revocation or declaration of invalidity proceedings. Thus, the party seeking security for costs must first show that the Initiating Party neither resides nor carries on business in Singapore.
Registrar’s Discretion
Once it has been shown that the Initiating Party neither resides nor carries on business in Singapore, the Registrar then has a discretion to require the Initiating Party to provide security for costs. The word “may” makes it clear that security cannot be ordered as a matter of course, but only if the Registrar thinks it is just to do so in the circumstances of the case. The Registrar will exercise this discretionary power judiciously and by considering all the circumstances of the case.
Although the wording of Section 70 differs from that of Order 23 of the Rules of Court, the primary purpose behind Section 70 is similar to that for Order 23, which is to ensure that the defending party ("Defending Party") in any action has some security that, in the event that he wins, the Initiating Party or the party taking out the action will pay his costs.
Thus, the factors that will be taken into consideration by the Registrar in deciding whether to grant security for costs in an opposition or revocation or declaration of invalidity proceedings are similar to the factors that the courts will take into account in deciding whether to grant security for costs in a civil suit.
These factors include, amongst others:
(i) Whether granting the security would stifle a genuine claim. Impecuniosity of the Initiating Party is inextricably linked to this factor. Where the granting of the security would stifle a genuine claim, the application for security may be denied. One of the ways to moderate the concern of stifling a genuine claim is to reduce the quantum of the security allowed.
(ii) The ease with which a Singapore decision can be enforced overseas. Generally, if the foreign jurisdiction is covered under either the Reciprocal Enforcement of Commonwealth Judgments Act (Cap 264) or the Reciprocal Enforcement of Foreign Judgments Act (Cap 265), then there is a tendency that the application for security may be refused.
(iii) The likelihood of the Initiating Party succeeding. However, it is important to note that in coming to her view as to the probability of success of an action, the Registrar is not required to make a detailed examination as to the merits of the case. Indeed, the Registrar would not be in position to do so in particular where the action is still at an early stage. If both parties have an arguable case on the face of it, then this will be a neutral factor.
(iv) The stage at which the application for security for costs is made. In general, the case is stronger where the application is made at an early stage of the action. This because where an application is made at a late stage, the Defending Party would have already expended much costs. This casts doubt as to whether the Defending Party is genuinely concerned about recovering costs from the Initiating Party.
(v) Whether the Initiating Party is an individual or a corporate entity. This is relevant as the attitude in relation to impecuniosity differs with regard to companies versus individuals. Where the Initiating Party is a natural person, public policy leans much more towards encouraging access to the Registrar.
(vi) Where the Initiating Party is a limited company, whether there is evidence that it is unable to pay costs. There are 2 potential ways this factor may apply:
(a) Where the Initiating Party is impecunious. When one is dealing with a company rather than a natural person, public policy is in favour of limiting, rather than encouraging, uninhibited access to the Registrar.
(b) Where the Initiating Party claims that it is fully able to pay the Defending Party's costs if the latter wins. For example, the Initiating Party may be a public listed company with many assets. Since the Defending Party is not able to show that the Initiating Party is unable to pay costs, this factor will work against the Defending Party.
Based on a consideration of the above, the Registrar may then decide whether the application for security for costs should be granted. However, where the circumstances are evenly balanced it would ordinarily be just to order security against a foreign Initiating Party.
B) Mode of the Security
In the event that the Registrar does grant the application for security for costs, the Registrar will also direct the quantum, mode of payment as well as the period within which such security is to be furnished.
There are two generally accepted modes for the provision of the security:
(i) A solicitor's undertaking
(ii) A banker's guarantee
If the Initiating Party's agents are a firm of solicitors, the more common mode for the provision of the security would be via a solicitor's undertaking as obtaining a banker's guarantee would entail the foreign Initiating Party opening an account with a Singapore bank if the it does not already have one. In comparison, where a solicitor's undertaking is given, the foreign Initiating Party simply needs to make payment to its solicitor agent's account. Where the Initiating Party's agents are not a firm of solicitors, then a solicitor's undertaking is not applicable and a banker's guarantee will be required.
C) Stay of Proceedings
Once the Registrar has made a grant of security, pending the provision of the security, there may be a need to stay the proceedings. Whether or not such a need arises will depend on the stage of the action when the grant is made. If it is the Defending Party's turn to file a document, the proceedings are usually stayed so that the Defending Party does not have to incur additional costs. However, if it is the Initiating Party's turn to file a document, the proceedings are usually not stayed.
II. Application for Proceedings to be Dismissed
Following the interlocutory hearing, in the event that the party whom the Registrar has ordered to provide security for costs fails to do so, the party to whom security for costs has been granted can then apply, in writing, for the opposition / revocation / declaration for invalidity proceedings to be dismissed.
The Registrar will call for submissions in writing from both parties and exercise her discretion to decide whether the proceedings should be dismissed. If parties request an interlocutory hearing to decide the issue, the Registrar may also fix one to hear the parties in person. Generally, unless there are good and sufficient reasons to justify the default in payment of the security, the Registrar is likely to order that the opposition / revocation / declaration for invalidity proceedings be dismissed.
1For clarity, in the context for Security for Costs "Initiating Party" refers to the party initiating the main action e.g. an Opposition, and not the application for the security for costs.
(HMD Circular No. 4/2011, dated 26 August 2011)
In an opposition / invalidation / revocation / rectification proceeding before the Registrar, the Initiating Party has to file his action with the Registrar and serve the relevant documents on the Opposite Party at the same time. HMD Circular 4/2009 details the matters which the Registrar will be looking out for in determining whether this requirement has been met. HMD Circular 4/2009 applies in a situation where the Opposite Party has an address for service ("AFS") in accordance with rule 9 of the Trade Marks Rules (Cap 332, 2008 Rev Ed), which includes a trade or business address in Singapore under rule 9(9)(b).
This Circular supplements HMD Circular 4/2009 and caters for the situation where there is no AFS filed nor any trade or business address in Singapore to be treated as the AFS in accordance with rule 9.
Rule 9(1) provides that for the purposes of any proceedings before the Registrar, an AFS in Singapore shall be filed accordingly. In particular, rule 9(1)(a) and rule 9(1)(e) provide that an AFS shall be filed by every applicant for a registration of a trade mark and every proprietor of a registered trade mark which is the subject of an opposition / invalidation / revocation / rectification. The consequences of a failure to provide an AFS are provided in Rule 9(6).1
In the case of oppositions to international registrations, rule 14(1) of the Trade Marks (International Registration) Rules (Cap 332, 2002 Rev Ed) ("TMIRR") requires the holder of an international registration to file an AFS within 4 months from the Registrar's notification of refusal based on opposition. The consequence of a failure to provide an AFS is provided in Rule 14(10).2
A. SERVICE OF FORM TM 11 (NATIONAL APPLICATION FOR REGISTRATION)
Where there is no AFS filed nor any trade or business address in Singapore to be treated as the AFS in accordance with rule 9, the Initiating Party should, when filing the opposition action with the Registrar, send a copy of Form TM 11 to the Opposite Party's address indicated on the Register at the same time and indicate to the Registrar accordingly (rule 29(2)).
Upon receipt of Form TM 11 from the Initiating Party, the Registrar will notify the Opposite Party to file a Counter-Statement (or a request for an extension of time to file Counter-Statement). Where there is no AFS filed nor any trade or business address in Singapore to be treated as the AFS in accordance with rule 9, the Registrar will also notify the Opposite Party to file Form TM 1 at the same time as he files his Counter-Statement (or a request for an extension of time to file Counter-Statement).
For avoidance of doubt, the Registrar will rely on the date of receipt by the Registrar of Form TM 11 for the purposes of compliance with rules 29(1) and (2) and for the purposes of calculating the due date for filing the Counter-Statement (or a request for an extension of time to file Counter-Statement) in accordance with rule 31, save under the circumstances below.
Opposite Party did not receive Form TM 11
If the Opposite Party clearly indicates that he did not receive Form TM 11, the Initiating Party is required to show Proof of Service. For proof, either a courier receipt or invoice or if by normal post, a Statutory Declaration that the Notice of Opposition (Form TM 11) has been posted will suffice. The Opposite Party will be directed to file an AFS and thereafter, the Initiating Party will be directed to re-serve the documents on the Opposite Party at the AFS. The deadline for the Opposite Party to file his Counter-Statement (or a request for an extension of time to file Counter-Statement) is 2 months from the date of receipt by the Opposite Party of Form TM 11 that was re-served.
Opposite Party receives Form TM 11 after the date of receipt by Registrar
If the Opposite Party receives Form TM 11 after the date that the Registrar receives the same, the Opposite Party should promptly inform the Registrar and the Initiating Party in writing of the actual date of receipt of Form TM 11. The deadline for the Opposite Party to file his Counter-Statement (or a request for an extension of time to file Counter-Statement) is taken to be 2 months from the actual date of receipt by the Opposite Party of Form TM 11.
Service which is effected in accordance with this HMD Circular is deemed to be in compliance with rule 29(2).
B. FILING OF FORM TM 11 (INTERNATIONAL REGISTRATION DESIGNATING SINGAPORE)
Rule 13 of the TMIRR governs the process for the filing of Form TM 11 in relation to an international registration.
In relation to an international registration, there is no issue of "service" of Form TM 11. The opponent is only required to file Form TM 11 with the Registrar.
C. SERVICE OF FORM TM 28 (NATIONAL REGISTRATION AND INTERNATIONAL REGISTRATION DESIGNATING SINGAPORE)
Where there is no AFS filed nor any trade or business address in Singapore to be treated as the AFS in accordance with rule 9, the Initiating Party should, when filing the relevant action with the Registrar, send a copy of Form TM 28 to the Opposite Party's address indicated on the Register at the same time (rule 57(3)).
Upon receipt of Form TM 28 from the Initiating Party, the Registrar will notify the Opposite Party to file a Counter-Statement (or a request for an extension of time to file Counter-Statement). Where there is no AFS filed nor any trade or business address in Singapore to be treated as the AFS in accordance with rule 9, the Registrar will also notify the Opposite Party to file Form TM 1 at the same time as he files his Counter-Statement (or a request for an extension of time to file Counter-Statement).
For avoidance of doubt, the Registrar will rely on the date of receipt by the Registrar of Form TM 28 for the purposes of calculating the due date for filing the Counter-Statement (or a request for an extension of time to file Counter-Statement) in accordance with rule 58, save under the circumstances below.
Opposite Party did not receive Form TM 28
If the Opposite Party clearly indicates that he did not receive Form TM 28 at all, subject to proof that the Initiating Party has sent Form TM 28 by post to the Opposite Party, the Opposite Party will be directed to file an AFS and thereafter, the Initiating Party will be directed to re-serve the documents on the Opposite Party at the AFS. The deadline for the Opposite Party to file his Counter-Statement (or a request for an extension of time to file Counter-Statement) is 2 months from the date of receipt by the Opposite Party of Form TM 28 that was re-served.
Opposite Party receives Form TM 28 after the date of receipt by Registrar
If the Opposite Party receives Form TM 28 after the date that the Registrar receives the same, the Opposite Party should promptly inform the Registrar and the Initiating Party in writing of the actual date of receipt of Form TM 28. The deadline for the Opposite Party to file his Counter-Statement (or a request for an extension of time to file Counter-Statement) is 2 months from the actual date of receipt by the Opposite Party of Form TM 28.
Service which is effected in accordance with this HMD Circular is deemed to be in compliance with rule 57(3).
D. SERVICE OF NOTICE REQUIRED UNDER RULE 29(5) (NATIONAL APPLICATION FOR REGISTRATION AND INTERNATIONAL REGISTRATION DESIGNATING SINGAPORE)
Where there is no AFS filed nor any trade or business address in Singapore to be treated as the AFS in accordance with rule 9, the Initiating Party should send the notice required under rule 29(5)3 to the Opposite Party's address indicated on the Register.
For avoidance of doubt, the Registrar will take the date of receipt by the Registrar of Form TM 48 together with the notice required under rule 29(5) as the date for the purposes of compliance with rules 29(3) and (6).
Separately, the Registrar will take the date stated on the face of the notice required under rule 29(5) as the date for the purposes of compliance with rule 29(5), unless the Opposite Party clearly indicates otherwise, e.g. the Opposite Party notifies the Registrar in writing that the notice required under rule 29(5) was not received by the date the Registrar receives Form TM 48. In cases of irregularity, the Registrar will exercise her discretion under rule 29(7) and/or rule 83 on the facts of each case and may grant an extension of time (for more details see below).
Service which is effected in accordance with this HMD Circular is deemed to be in compliance with rule 29(5).
E. REGISTRAR'S DISCRETION UNDER RULE 29
Rule 29(7) provides that the Registrar may refuse to grant the extension of time if:
(i) the person requesting for the extension fails to provide a good and sufficient reason for the extension; or
(ii) if the person fails to show to the Registrar's satisfaction that a notice referred in rule 29(5) has been served on the applicant and every person likely to be effected by the extension.
Where a person on whom a notice referred to in rule 29(5) is served fails or refuses to give his consent within 2 weeks from the date of the notice, the Registrar may, if he is satisfied that a good and sufficient reason has been shown, grant the extension and the Registrar may do so without having to conduct a hearing in accordance with rule 67 – see rule 29(8). The Registrar's discretion is not constrained by whether or not the Opposite Party gives his consent to an extension of time.
While the effect of rule 29(7) and rule 29(8) is such that the Registrar has the discretion to grant an extension of time to file Form TM 11, the total extension of time which can be granted is 4 months from the publication date of the national application for registration or international registration designating Singapore (r29(4)).
1In the case of an applicant for a registration of a trade mark, the application shall be treated as withdrawn. In the case of a proprietor of a registered trade mark, he shall not be permitted to take part in the proceedings in question.
2The holder's request for protection in Singapore shall be treated as withdrawn.
3The notice shall contain (i) a statement of the opponent's intention to request for an extension; (ii) the extension requested for; (iii) the reason for the extension; and (iv) a request for the consent of the applicant or other person to the extension.
(HMD Circular No. 5/2011, dated 26 August 2011)
This circular seeks to clarify the application of rule 37 of the Trade Marks Rules (Cap 332, 2008 Rev Ed).
Rule 37 relates to attendance at an opposition hearing. In particular, rule 37(3) provides that any party who intends to appear at the hearing shall file Form TM 13 before the hearing. Rule 59 extends the application of rule 37 to revocation / invalidation / rectification proceedings.
Form TM 13 not filed by one party: Registrar will usually proceed with hearing
If no Form TM 13 is filed on behalf of a party, he may be treated as not desiring to be heard. The Registrar may proceed with the hearing in the absence of that party or may, without proceeding with the hearing, give his decision, dismiss the proceedings or make such other order as he thinks fit (R37(4)). Where Form TM 13 is filed by only one party, the Registrar will, under ordinary circumstances, proceed with the hearing in the absence of the party who did not file Form TM 13.
In practice, if a party has not filed Form TM 13 but appears at the hearing desiring to be heard before the session formally begins, the Registrar will require the party to file Form TM 13 immediately or extract a solicitor's undertaking, where relevant, from the party's agent that Form TM 13 will be filed by the end of the next working day.
Form TM 13 filed but party does not appear: Registrar will usually ascertain party's intention
Where a party does not attend the hearing after filing Form TM 13, the Registrar may proceed with the hearing in the absence of that party or may, without proceeding with the hearing, give her decision, dismiss the proceedings or make such other order as she thinks fit (R37(5)).
In practice, the Registrar will contact the absent party/parties as far as reasonably possible to ascertain his/their intention. Where a party has filed Form TM 13 but fails to turn up at the hearing, the Registrar will be slow to move the matter ahead with the other party who is present without hearing further from the absent party who has filed Form TM 13. Likewise where both parties do not attend the hearing, but Form TM 13 has already been filed by both parties, the Registrar will be slow to strike out the proceedings without verifying their intention. If it is a party's intention to be heard but he cannot be present for legitimate reasons (e.g. medical reasons), the Registrar will, where reasonable, vacate the hearing and refix it for another day.
Form TM 13 not filed by both parties and both parties do not appear: Registrar will usually strike out the proceedings
Where both parties do not attend the hearing, and Form TM 13 has not been filed by either party, the Registrar will, under ordinary circumstances, strike out the proceedings. The proceedings may, however, be restored on the Registrar's direction (R37(6)).
In practice, where parties do not intend to attend the hearing, they would usually have informed the Registrar in writing before the hearing date. They would also have requested the Registrar to make a decision without their presence at a hearing. In such cases, where the parties' intention is clear, the Registrar will decide on a case by case basis whether to proceed to make a decision without a hearing (if both parties are not present) or dismiss the proceedings under Rule 37(4) or strike out the proceedings under Rule 37(6). Generally, the initiator of an action is expected to attend the hearing to prove his case unless there are exceptional reasons, for example, the responding proprietor in an invalidation action has shown no interest in defending his registration and has not filed any document through the process.
Restoration of proceedings
Where the Registrar has exercised her discretion to strike out the proceedings, a party may apply to restore the proceedings under Rule 37(8). Such an application must be made within 7 days after the Registrar's notice that the proceedings have been struck out.
(HMD Circular No. 6/2011, dated 26 August 2011)
Form TM 48 is to be filed with the Registrar when requesting an extension of time to file a Notice of Opposition.
Rule 29(3) provides that such request shall be made by filing Form TM 48 with the Registrar within 2 months from the date of the publication of the application for registration.
A. DETAILS OF INTENDED OPPONENT
Part 2 of Form TM 48 requires the Intended Opponent to include his details. Where there is no clear indication of who the Intended Opponent is, the Registrar will reject Form TM 48 as being non-compliant, unless there are exceptional circumstances which dictate otherwise.
B. DISCREPANCY BETWEEN FORM TM 48 AND FORM TM 11
Where there is a discrepancy in the details of the Intended Opponent in Form TM 48 vis-a-vis the details of the Opponent in Form TM 11, the Registrar will reject Form TM 11 as non-compliant unless there are exceptional circumstances which dictate otherwise. For example, the Opponent can show to the satisfaction of the Registrar that the Intended Opponent and the Opponent are related entities or belong to the same group of companies.
(HMD Supplementary Circular No. 7/2011, dated 26 August 2011)
HMD Circular No 3/2011 relates to costs, including taxation. This circular supplements HMD Circular No 3/2011 and provides clarification on some of the items in a Bill of Costs submitted for a taxation hearing.
Rule 73(1) provides that where the Registrar has awarded party and party costs and the party wishes to have the costs taxed by the Registrar, the party shall, within one month from the date of the award of costs, apply for the costs to be taxed by filing a copy of the bill of costs with the Registrar and send at the same time a copy of the bill of costs to every other person having an interest in the taxation proceedings.
Rule 73(2) provides that every bill of costs shall set out the following items:
(a) the work done in the cause or matter;
(b) all disbursements made in the cause or matter;
(c) the sum claimed for each item; and
(d) in chronological order and with dates, all events in the cause or matter which are relevant.
Any party on whom a copy of the bill of costs has been served shall, if he wishes to dispute the bill or any part thereof, within one month from the receipt of the copy of the bill, mark the copy in accordance with rule 73(5) and send copies of the marked copy to the Registrar and the party requesting for taxation – see rule 73(4).
Rule 73(5) provides that the marking of a copy of a bill of costs shall be effected by writing on the right hand margin against each item the word "Agree" if the party concerned agrees with the costs claimed for that item, or the word "Disagree" if the part concerned disagrees with the costs claimed for that item.
A. COST ITEMS
Where parties have agreed on a particular costs item in the bill of costs, the Registrar will not intervene in relation to that item and will award the quantum as agreed between the parties.
In the event that parties disagree in relation to a particular item claimed, the Registrar will award an amount for the item having regard to the Fourth Schedule as well as to the particular circumstances of the case.
B. DISBURSEMENTS
Similarly, where parties have agreed on a particular item claimed, the Registrar will not intervene in relation to that item and will award the quantum as agreed between the parties.
In the event that parties disagree in relation to a particular item claimed, the Registrar will only award claims which are reasonable. Generally, standard claims which are substantiated with receipts will be awarded.
(HMD Circular No. 8/2011, dated 26 August 2011)
Rule 23 of the Trade Marks Rules (Cap 332, 2008 Rev Ed) provides for opposition to amendment of a trade mark application for registration, where the amendment affects the representation of the trade mark or the goods or services covered by the application.
Rules 23(1) and (2) provide that the proposed amendment or a statement of the effect of the amendment shall be published for opposition purposes. The process for such opposition is similar to the process for opposing an application for registration under Rule 29. The same rules apply to these two types of oppositions (Rule 23(4)).
A Rule 23 action opposes the amendment of an application (which will move on to registration) while a Rule 29 action opposes the registration of the application mark itself.
A. OPPOSITION TO AMENDMENT – NO RE-OPENING OF SUBSTANTIVE OPPOSITION
An opposition under Rule 23 is confined to objections to the proposed amendment of an application and is not meant to re-open the application for opposition.
Thus, if a prospective opponent had missed the deadline for opposition when the application was first published, and there is subsequently an amendment to the application which is then published, he cannot file an opposition within 2 months of the publication of the amendment, unless his grounds of opposition are directly attributed to the published amendment. If his grounds of opposition are leveled against the registration of the application mark, the prospective opponent should instead apply to invalidate the registration after the application mark has been registered.
In summary, the publication of the amendment is not intended to extend the time for a prospective opponent to oppose the registration of a mark nor give him two bites of the cherry.
B. NOTICE OF OPPOSITION
The Notice of Opposition must contain a statement of the grounds upon which the person opposes the amendment. Such grounds include:
(i) The amendment is contrary to Section 14(3) of the Trade Marks Act (Cap 332, 2005 Rev Ed) because it does not correct the name or address of the applicant or errors of wording or of copying or obvious mistakes.
(ii) The amendment is contrary to Section 14(3) of the Trade Marks Act because it substantially affects the identity of the trade mark.
(iii) The amendment is contrary to Section 14(3) of the Trade Marks Act because it extends the goods or services covered by the application.
(iv) The amendment to the trade mark will render it contrary to specific absolute or relative grounds under Rules 7 and 8, to be specified in the statement of grounds.
C. APPLICATION OF THE PRINCIPLE OF RES JUDICATA
Where the substantive opposition to an application for registration has already been dealt with and results in an amendment which is published, it is not possible to revisit the issues raised in the substantive opposition by filing an opposition under Rule 23. The principle of res judicata applies. This means that a judicial decision is conclusive as between the parties.
In such a case, if an opponent disputes the decision of the Registrar in the substantive opposition, he has the right to appeal to the High Court. It is not for the Registrar to sit on appeal or review a decision that has been made by the Registrar on the same issues and between the same parties. The opponent is not entitled to a second opposition on the same issues.
The principle of res judicata was applied by the Registrar in Campomar S.L. v Nike International Ltd and Another [2004] SGIPOS 3. On appeal, the High Court in Nike International Ltd and Another v Campomar S.L. [2005] 4 SLR(R) 76 affirmed the application of this principle.
(HMD Circular No. 1/2010, dated 20 August 2010)
Where an opponent relies on an “earlier trade mark which is well known in Singapore” in support of his opposition, Rule 30(3) of the Trade Marks Rules 2008 Rev Ed applies.
Rule 30(3) requires that:
(i) information on the use of the earlier trade mark; and
(ii) information on any promotion undertaken for the earlier trade mark be provided in the notice of opposition.
There are no pre-set requirements on the specific information needed to comply with Rule 30(3). Therefore, any relevant information will be accepted as long as:
(i) the information relates to the use or promotion of the earlier trade mark; and
(ii) it is “for the purpose of determining if the trade mark is well known in Singapore” as expressed in Rule 30(3).
Non-exhaustive examples include:
(i) revenue figures for the earlier trade mark worldwide and in Singapore, if any
(ii) promotion figures for the earlier trade mark worldwide and in Singapore, if any
(iii) information on the duration of the use and promotion of the earlier trade mark
(iv) information on the extent of the use and promotion of the earlier trade mark
(v) information on the geographical area of the use and promotion of the earlier trade mark
Examples (iii) to (v) above are essentially information pertaining to Section 2(7)(b) of the Trade Marks Act (Cap 332) 2005 Rev Ed.
The information provided can be descriptive (e.g. “Our well known mark has been used on clothing and footwear in 20 countries worldwide including the USA, UK, Germany, China and Singapore since 1990”) or quantitative (e.g. actual revenue and promotional figures”).
Any information provided under Rule 30(3) must, however, be more than that which is already required of earlier trade marks which are not registered nor pending registration under Rule 30(2)(c). In other words, the information must go beyond information on the goods or services in respect of which the mark is used.
If Rule 30(3) is not complied with, the opponent will be directed to amend his notice of opposition to comply with the requirement if the parties are not negotiating.
In practice, the above applies to an application for invalidation that is based on "an earlier mark which is well known in Singapore" as well.
(HMD Circular No. 2/2010, dated 20 August 2010)
Amendments may be made to Form TM 11 (Notice of Opposition), Form TM 28 (Application for Revocation or Declaration of Invalidity of Registration of Trade Mark) and Form TM 12 (Counter-Statement) in the course of opposition/revocation/invalidation proceedings before the Registrar if it is fair and reasonable to do so. Depending on when the request to amend is made, different considerations apply.
A. AMENDMENTS BEFORE CLOSE OF PLEADINGS
The Registrar will in appropriate cases generally allow amendments to Form TM 11 and Form TM 28 before pleadings are deemed to be closed. Pleadings are deemed to be closed immediately upon the filing of Form TM 12 (Counter-Statement), or, in the case of an invalidation action where no Counter-Statement is filed, the last date that the Counter-Statement could have been filed.
For avoidance of doubt, amendments to Counter-Statements are always made after the close of pleadings by the foregoing definition. In such instances, B. below applies.
Where the proposed amendments are allowed, the Registrar may grant an extension of time to the other party to file his Counter-Statement and/or award such costs as may be just against the party seeking the amendments.
B. AMENDMENTS AFTER CLOSE OF PLEADINGS
Where amendments are sought after pleadings are deemed to be closed, consent from the other party must first be sought. If there is consent from the other party, the Registrar will in appropriate cases generally allow the amendment and if necessary, issue such directions on the subsequent procedure as is deemed fit.
Where there is no consent, leave of the Registrar must be obtained for any amendment after the close of pleadings. Whether leave would be granted depends on the facts and circumstances of each case. In considering whether to grant leave for the amendments, the Registrar will conduct a balancing exercise, involving a consideration of the public interest that rules relating to procedure are complied with and the need to ensure that there is proper adjudication of a case based on its merits in the interest of justice between the parties. In particular, the Registrar will carefully weigh the following non-exhaustive factors on a case by case basis:
(i) whether the party seeking the amendment could have claimed the particular ground/defence or cited the additional “earlier trade mark” earlier, when filing Form TM 11, Form TM 28 or Form TM 12
(ii) whether the amendment is necessitated by the pleading or evidence filed by the other party
(iii) whether the other party would suffer any real prejudice which cannot be compensated with costs if the amendment is allowed
(iv) whether allowing the amendment will facilitate the determination of the real question in controversy between the parties or whether the amendment is only a tactical manoeuvre and allowing the amendment would result in prejudice to the other party
(v) whether the amendment raises grounds or facts which the applicant need not set out in reply, for example, the ground was not raised by the opponent and is therefore inapplicable to the particular proceedings at hand
(vi) the substantiality of the amendment
(vii) the stage of the proceedings the amendment is sought.
If leave to amend is granted, the Registrar may issue such necessary directions on the subsequent procedure as is deemed fit, including but not limited to adjourning the case, allowing amendments to be made to the Counter-Statement by the other party, granting extensions of time for the filing of further evidence by both parties as well as awarding such costs as may be just against the party seeking the amendments.
(HMD Circular No. 3/2010, dated 20 August 2010)
Form TM 28 is used for 3 different types of actions:
(i) Application for revocation of registration of a trade mark (Rule 57(1)(a) of the Trade Marks Rules 2008 Rev Ed (“TMR”))
(ii) Application for declaration of invalidity of registration of a trade mark (Rule 57(1)(b) of the TMR)
(iii) Application for rectification of the register by persons other than the proprietor of the trade mark (Rule 57(1A)(b) of the TMR)
As each type of action is different in that different grounds are applicable, one Form TM 28 is required for each type of action (revocation / invalidation / rectification) pursued in relation to a trade mark. Thus, should the applicant for invalidation / declaration of invalidity / rectification seek to institute two (or three) different types of actions in relation to a trade mark, two (or three) Form TM 28’s are to be filed accordingly.
In the event that two (or three) different types of actions are indicated in one Form TM 28, the form will only be considered to be relevant for one of the actions for the particular trade mark. This means that should the applicant for invalidation / declaration of invalidity / rectification still wish to pursue the second (or third) action(s), he will be required to file another Form TM 28 with the consequent costs and filing date implications.
For avoidance of doubt, the above does not affect the existing cost calculation for Form TM 28, which is on a per class basis.
(HMD Circular No. 4/2010, dated 20 August 2010)
To better manage trade mark opposition, invalidation and revocation proceedings, the Registrar has, at case management conferences (CMC) convened under Rule 81A of the Trade Marks Rules 2008 Rev Ed, been issuing timelines for the filing of evidence by both parties. The primary objectives are to ensure that the parties explore the possibility of a settlement through negotiations and that all parties have the same expectations on the amount of time given to each party for the filing of evidence. This circular sets out the Registrar’s practice in relation to extensions of time for filing evidence and the application of CMC timelines.
Fast-Track and Slow-Track CMC Timelines
Timelines issued through CMCs are generally of two types – slow-track and fast-track. Slow-track timelines are issued in cases where parties are already exploring or are intending to explore the possibility of settlement through negotiations. In such cases, the objective of issuing a longer timeline for the party initiating the action to file his evidence is to allow parties sufficient time to negotiate and reach an amicable settlement. In other cases, fast-track timelines will be issued.
This table sets out typical timelines for slow-track and fast-track cases:
|
Slow-Track Timelines |
Fast-Track Timelines |
Evidence of
initiating party |
14 months from Counter-Statement |
8 months from Counter-Statement |
Evidence of
responding party |
6 months from evidence of initiating party |
6 months from evidence of initiating party |
These CMC timelines represent the maximum extent to which the Registrar will generally exercise her discretion in granting extensions of time to parties and they are predicated on the appropriate requests for extensions of time being made.
Extensions of Time Within CMC Timelines
The Registrar will, as a matter of general practice, grant extensions of time where they fall within the CMC timelines.
Extensions of Time Beyond CMC Timelines
1. Slow-Track Cases
Under the slow-track timelines, as the evidence of the party initiating the action can be filed as late as 14 months from the Counter-Statement, parties effectively have a total of 14 months to reach a settlement. This saves parties unnecessary expense in preparing evidence for the adversarial process while they negotiate. As 14 months would provide parties a reasonable opportunity to reach a settlement in most cases, in exercising the discretionary power under Rule 32(9), the Registrar will most likely refuse to grant any further extension of time beyond that timeline unless it is shown to the Registrar’s satisfaction that there are good and sufficient reasons to do so as required under Rule 32(9).
Once the filing of evidence has started, again, in exercising the discretionary power under Rule 33(9) or Rule 34(9), the Registrar will most likely refuse to grant any further extension of time beyond the CMC timelines unless the Registrar is satisfied that there are good and sufficient reasons to do so as required under Rule 33(9) or Rule 34(9) respectively.
2. Fast-Track Cases
Where initially fast-track timelines applied but subsequently parties require more time to negotiate, they may apply to the Registrar to adjust the timelines for the filing of evidence and provide the Registrar with information as to the specific additional period of time that will be needed for parties to fully explore settlement through negotiations. Again, in exercising the discretionary power under Rule 32(9), Rule 33(9) or Rule 34(9), the Registrar will most likely refuse to grant any further extension of time beyond the adjusted timelines unless it is shown to the Registrar’s satisfaction that there are good and sufficient reasons to do so.
3. Reasons Supporting Extensions of Time beyond CMC Timelines
The Registrar may, in exceptional cases, and in so far as it is substantiated, consider the non-exhaustive list of circumstances below as justifications for the further extension of time to file evidence beyond the CMC timelines:
(i) parties are negotiating a world-wide settlement agreement involving many jurisdictions
(ii) parties are negotiating a settlement agreement involving a few other parties other than the parties themselves
(iii) parties are awaiting the outcome of relevant court or other proceedings (such as proceedings before another IP office or foreign court or WIPO) that has a material bearing on the settlement agreement or on how the parties wish to proceed
(iv) significant progress has been made but parties still require a specific period of additional time to complete the negotiations
(v) one party has had a change of agent shortly before the deadline for him to file his evidence
(vi) a circumstance has arisen that is beyond one party’s control, provided that the party has acted promptly and diligently at all times; for example, corporate changes such as merger and bankruptcy; the party’s decision-maker has taken ill or left and the party needs more time to make certain decisions; civil war; declaration of state of emergency.
Whenever an extension of time beyond the CMC timeline is sought, the party must provide the reason and information on the specific additional period of time needed. In addition, except for (v) and (vi) above, the party requesting an extension of time beyond the CMC timeline must also obtain the consent of the other party to the further extension of time. If the Registrar accepts the reason for a further extension of time beyond the CMC timeline, it shall not be possible to request any further extension of time based on the same reason beyond the specific additional period of time indicated by the party.
4. Adjustment of CMC Timelines
Where the Registrar has granted an extension of time beyond the original CMC timeline, the latter may also be adjusted as appropriate, to take into account the new circumstances that have set in.
Concurrent Statutory Deadlines and CMC Timelines
Parties should note that statutory deadlines and CMC timelines run concurrently. CMC timelines and any further extensions of time beyond CMC timelines granted do not negate the need for parties to apply for extensions of time in accordance with the Trade Marks Rules, including, where applicable, filing Form TM 50 and fee.
Typically, the Registrar will grant an extension of not more than 2 months each time for each Form TM 50 filed. To illustrate, if a party has specified an additional period of 4 months in addition to the 8 months given for the filing of his evidence pursuant to the fast track timelines under any of the reasons at (i) to (vi) above, and the Registrar has accepted the reason for extending the deadline for 4 months beyond the CMC timeline, the party would have to file one Form TM 50 for the first extension beyond 6 months from the date of the Counter-Statement and, then, two Form TM 50’s for the additional 4 months required.
Conclusion
The Registrar will seek to apply these guidelines consistently and in a fair and reasonable fashion so as to ensure that timelines issued through the CMC process are properly tracked and complied with by both parties. This, in turn, will enhance the efficiency, effectiveness and transparency of the hearings process as well as the CMC process. It will also ensure that applications for extensions of time beyond CMC timelines are not made routinely but are the result of and supported by evidence of circumstances that warrant the extension.