Hearings & Mediation

13.

14.

15.

16.

Submissions are arguments of any party stating the reasons why his arguments should be accepted and why the other party’s arguments should be rejected. Bundles of Authorities are previous cases which have been decided by the Registrar, or the Courts, or any other authority which a party is relying on to argue his case.

17.

18.

They are available at the IPOS’ corporate website www.ipos.gov.sg or are available at www.snpcorp.com/webshop at SNP Corporation Ltd (Legal Publications) located at 1 Kim Seng Promenade, Great World City East Tower, #18-01, Singapore 237994 - Tel: (65) 6826 9691 or email at legalpub@snpcorp.com

19.

20.

21.

22.

23.

It must set out the grounds on which the Trade Mark Applicant is relying on to support his application and the facts alleged in the Notice of Opposition which he admits, if any. [R 31(1a,b)]

24.

You may request for an extension of time to file the Counter-Statement by writing to the Registrar within 2 months from the date of receipt of the Notice of Opposition. [R 31(4)] You also need to inform the Opponent that you intend to request for an extension of time and ask the Opponent for his consent to the extension of time. [R 31(6a,b & 7)]

25.

Usually 2 months from the date that the initial 2 months expires. The maximum time allowed is 4 months from the date of receipt of the Notice of Opposition. [R 31(5)]

26.

The Registrar will consider the reasons for the request for an extension of time and the reasons for the objection and decide whether to grant an extension of time. If the Registrar feels that there is a need for a hearing, parties will be informed that there is going to be a hearing of the application for an extension of time and the objections. If the Registrar feels that there are good and sufficient reasons for the extension of time, she may grant the extension of time without a hearing. [R 31(8 & 9)]

27.

You do not have to file Form TM 12 once you have requested for an extension of time. The Registrar will wait 2 weeks for a response from the Opponent. If there is no response, the Registrar will consider whether there are good and sufficient reasons for the extension of time and make her decision and inform you.

28.

The Registrar will consider the reasons for the application being made late and the objections by the Opponent, if any and decide whether the late application should be granted. If necessary, an Interlocutory Hearing will be fixed for both parties to attend. (Please refer to Opposition to a Trade Mark Application, FAQ no.15 & 16)

29.

No, you must serve the Counter Statement on the Opponent at the same time as filing the Counter-Statement with the IPOS. [R 31(2)]

30.

Your Trade Mark application will be deemed withdrawn. [R 31(3)]

31.

Yes, you can. You would have to write in formally to the Hearings & Mediation Division to withdraw your Trade Mark Application. You would also need to inform the Opponent of the withdrawal.

32.

Yes, he can. [Fourth schedule of the Trade Marks Rules]

33.

The Opponent must file with the Registrar his evidence in support of his Opposition by way of a Statutory Declaration (SD) within 2 months from the date of receipt of the Counter-Statement. [R 32(1)]

34.

No form is required to file a SD. A covering letter is sufficient.

35.

A Notice of Opposition and a Counter-Statement contain grounds of opposition and grounds relied on in countering the Opposition, whereas the SD must contain facts which the deponent is aware of in support of his opposition.

36.

Yes, you must send a copy of the SD to the Applicant at the same time as filing the SD at the IPOS. [R 32(2)]

37.

You may request for an extension of time to file the SD by writing to the Registrar   within 2 months from the date of receipt of the Counter-Statement. [R 32(4)]. You also need to inform the Applicant that you intend to request for an extension of time and ask the Applicant for his consent to the extension of time. [R 32(7)] The extension of time the Registrar may allow to file the Statutory Declaration shall not exceed 6 months from the date of receipt of the Counter-Statement from the Applicant. [R 32(5)] Any further request for an extension of time to file the Statutory Declaration shall be made to the Registrar by filing Form TM 50 with a fee of S$100.00 before the expiry of the last extended period allowed by the Registrar. [R 32(6)]

38.

The Registrar will wait for 2 weeks for a response from the Applicant. If there is no response, the Registrar will consider whether there are good and sufficient reasons for the extension of time and make her decision and inform you. [R 32(10)]

39.

The Registrar will consider the reasons for the request for an extension of time and the reasons for the objections and decide whether to grant the extension of time. If the Registrar feels that there is a need for a hearing, parties will be informed. If the Registrar feels that there are good and sufficient reasons for the extension of time, she may grant the extension of time without a hearing. [R 32(10)]

40.

No.

41.

Yes, it must be notarised before a Notary Public, if the person making the SD is overseas.

42.

If you do not file any evidence in support of your opposition, the application will proceed to registration and the Certificate of Registration will be issued to the Applicant. [R 32(3)]

43.

The Trade Mark Applicant must file with the Registrar his evidence in support of his application by way of a Statutory Declaration (SD) within 2 months from the date of receipt of the Opponents SD. [R 33(1)]

44.

Yes, you must send a copy of the SD to the Opponent at the same time as filing the SD at the IPOS. [R 33(2)]

45.

You may request for an extension of time to file the SD by writing to the Registrar   within 2 months from the date of receipt of the Opponent’s SD. [R 33(4)] You also need to inform the Opponent that you intend to request for an extension of time and ask the Opponent for his consent to the extension of time. [R 33(7)] The extension of time the Registrar may allow to file the Statutory Declaration shall not exceed 6 months from the date of receipt of the Opponent’s SD. [R 33(5)] Any further request for an extension of time to file the Statutory Declaration shall be made to the Registrar by filing Form TM 50 with a fee of S$100.00 before the expiry of the last extended period allowed by the Registrar. [R 33(6)] 

46.

The Registrar will wait 2 weeks for a response from the Opponent. If there is no response, the Registrar will consider whether there are good and sufficient reasons for the extension of time and make her decision and inform you. [R 33(10)]

47.

The Registrar will consider the reasons for the request for an extension of time and the reasons for the objections and decide whether to grant the extension of time. If the Registrar feels that there is a need for a hearing, parties will be informed. If the Registrar feels that there are good and sufficient reasons for the extension of time, she may grant the extension of time without a hearing. [R 33(10)]

48.

If you do not file any evidence in support of your application, the application will be deemed withdrawn. [R 33(3)]

49.

The Opponent may file with the Registrar his evidence in reply to the Applicant’s SD within 2 months from the date of receipt of the Applicant’s SD. [R 34(1)]

50.

Yes, you must send a copy of the SD to the Applicant at the same time as filing the SD with the IPOS. [R 34(2)]

51.

What if I do not have anything to say in reply to the Applicant’s SD?

The Opponent can choose not to reply to the Applicant’s SD, if he does not have anything to say in response to the Applicant’s evidence. Pleadings will then be deemed closed and the matter will be fixed for a Pre-Hearing Review.

52.

Only with leave from the Registrar. [Rule 35]

53.

You must write to the Registrar requesting leave to file further evidence and at the same time write to the other party requesting their consent to file further evidence. You must state why you could not file the evidence earlier. The Registrar will wait for the other party’s response to your request. Thereafter, the Registrar will consider your reasons and the other party’s objections, if any, before making her decision. If necessary, an Interlocutory Hearing will be held.

54.

Yes, if leave is granted, the Registrar will state the deadline for the filing of the    further evidence.

55.

A Pre-Hearing Review is a meeting between the parties and the Registrar for the Registrar to ascertain from the parties whether there is a possibility of settlement of the dispute. Before attending the Pre-Hearing Review, parties are expected to have explored the possibility of a settlement between themselves. [R 36A] Parties attending a Pre-Hearing Review are expected to inform the Registrar of the efforts that have been undertaken by the parties to settle the Opposition matter and the likelihood of a settlement. Parties are also expected to be familiar with their case in terms of the Notice of Opposition, Counter-Statement and the evidence filed and be able to discuss the strengths and weaknesses of their case.

56.

A Registrar’s Notice will be send to both parties via fax and post informing them of the date and time for the Pre-Hearing Review.

57.

Another date for a further Pre-Hearing Review will be given. Parties would be expected to conclude their settlement before coming for the Further Pre-Hearing Review.

58.

The matter will be fixed for an Opposition Hearing.

59.

An Opposition Hearing is a hearing of arguments to determine the grounds of the dispute. Each party would have to file with the Registrar written submissions and a bundle of authorities at least one month before the date of the Hearing as well as Form TM 13. [R 37]

60.

The Registrar will notify you in writing about 2 months in advance or at the Pre-Hearing Review that the opposition has been fixed for a hearing and that the submissions and bundle of authorities are due one month before the hearing.

61.

It is a Notice to the Registrar that you will be attending the Opposition Hearing.

62.

Yes, S$650.00/- [First schedule of the Trade Marks Rules]

63.

The party who does not file Form TM 13 may be treated as not desiring to be heard. Registrar may proceed with hearing in the absence of that party and give his decision or dismiss the proceedings without proceeding to a hearing. [R 37(4)]

64.

The Registrar may proceed with the Hearing in the absence of that party and give her decision or may dismiss the proceedings without proceeding with the hearing. [R 37(5)]

65.

The agents representing the Opponent and the Applicant or if they do not have an agent, the Opponent and the Applicant themselves.

66.

No.

67.

Yes, the Registrar may take oral evidence and allow any witness to be cross examined at an opposition hearing.

68.

Yes, an application for costs may be made at an Opposition Hearing.

69.

Within 3 months from the date of the Hearing. [R 38]

70.

Yes, within 28 days from the date of the Grounds of Decision delivered by the Hearing Officer. [Order 87 Rule 4(3), Rules of Court] It must be filed with the Registry and served on the other party within 28 days. [Order 55 Rule 3(2), Rules of Court]

71.

A Case Management Conference may be held at any time after an opposition is filed. They are usually conducted when there is an undue delay in the filing of evidence. Such delays are usually caused by parties attempting to settle a dispute. However if negotiations have been ongoing for a number of years, the Registry may intervene and give directions regarding time lines to be followed for the filing of evidence and the hearing of the case. [R 81A]

72.

No, the Registrar will send a notification of refusal to the International Bureau stating that there is an opposition to the International Trade Mark Application. [R 13(6) of TM (IR) Rules]

73.

The International Bureau will inform the Trade Mark Applicant that there is an opposition to his Trade Mark application.

74.

The Trade Mark Applicant has 4 months from the date of the Registrar’s notification of refusal to the International Bureau to file a Counter-Statement. The Trade Mark Applicant would also have to appoint an agent in Singapore and file a Form TM 1 to update the address for service in Singapore. [R 14(1a & b)]

75.

No, the Applicant must serve the Counter Statement on the Opponent at the same time as filing the Counter-Statement with the IPOS. [R 14(3)]

76.

He may request for an extension of time to file the Counter-Statement by writing to the Registrar within 4 months from the date of the Registrar’s Notification of refusal to the International Bureau. [R 14(4)] He also needs to inform the Opponent that he intends to request for an extension of time and ask the Opponent for his consent to the extension of time. [R 14(6a,b & 7)]

77.

Usually 2 months from the date that the initial 4 months expires. The maximum time allowed is 6 months from the date of the Registrar’s notification of refusal to the International Bureau. [R 14(5)]