Application Management

Amend your Trade Mark application or registration

Form TM27 should be filed with IPOS to amend a trade mark application, or alter or rectify a registration.

Details in a trade mark application or registration where Form TM27 may be filed to amend include:

• Goods and/or services

• Priority claim

• Mark representation

• Number of series marks

• Mark type

• Claims to non-conventional mark type

• Disclaimer or limitation

Form TM27 cannot be used for the purposes of a change/correction of name, address or address for service and the scenarios covered by Form CM1, Form CM2 and Form CM4.

Form CM4 should be filed to request a correction of error(s) in a form other than Form TM4. For example, Form CM4 is to be used to correct an error in forms such as Form CM7 or Form CM8, regardless of whether that form is currently being processed or has already been processed by the Registrar and recorded on the Register.

General note(s) on amendment of Trade Mark application / registration:

• An applicant may at any time restrict the goods or services in the trade mark application via Form TM27. 

• The applicant may also request to amend the application in other respects – such amendments must comply with section 14(3) of the Trade Marks Act 1998. In other words, the applicant may only amend:
  
  (a) the name or other particular of the applicant,
  (b) errors of wording or of copying; or
  (c) obvious mistakes;
  
  and then only where the amendment does not substantially affect the identity of the trade mark or extend the goods or services covered by the application.   

• In the case of a rectification of a registration, the rectification may not be made in respect of a matter affecting the validity of the registration of the trade mark. 

• One allowable exception relates to the alteration to the mark representation of a registered mark, where the alteration of a mark is limited to that of the name/address of the proprietor appearing in the mark and that the alteration does not substantially affect the mark identity. If the Registrar finds the request to alter the mark representation acceptable, the Registrar will publish the mark representation as altered in the Trade Marks Journal for two months for opposition purposes.  

• An application to amend or rectify the details of a priority claim may be published by the Registrar for opposition purposes before it is approved. In deciding whether to exercise the discretion to publish the proposed correction, the Registrar will consider factors such as whether the erroneous information to be corrected was publicly available on the Register, and if so, the duration that the information has been on the Register, to decide whether the interests of third parties may be affected. 

• Where the proposed correction is published, any person can file a notice of opposition against the proposed correction within two months.

Divide your Trade Mark application

An applicant can request to divide the goods and/or services in his trade mark application (“parent mark”) into separate applications (“child marks”). This procedure may be useful to an applicant whose application faces an objection from IPOS or opposition from third parties. The acceptable goods and/or services could proceed to publication and/or registration without delay, while the objectionable goods and/or services in the application could be divided out and dealt with separately.

Form TM8 should be filed with IPOS to divide an application for registration.

Scenario for illustration purposes

Trade mark application no. 40202112345A was filed in Classes 1 and 2. An objection has been raised only for all the goods in Class 1.

The applicant may consider filing Form TM8 with the relevant fee to divide the application into two (i.e. Class 1 remains in one of the applications, and Class 2 will be divided out into another application). Upon the Registry’s approval of the division, each child mark on IPOS' Register will bear a similar IPOS application number as the parent mark, except that they will each have a suffix added (e.g. 40202112345A-01 and 40202112345A-02).

The mark status of the parent mark (40202112345A) will updated as “Divided”. The mark status of 2 child marks (40202112345A-01 and 40202112345A-02) will be reflected as “Pending (Under Examination)”.

Trade mark application no. 40202112345A-02, where only Class 2 is claimed, will be accepted for publication since there is no outstanding objection against the application. The applicant will still have to overcome the objection in trade mark application no. 40202112345A-01, where only Class 1 is claimed, as Form TM8 is not considered to be a response to our objection letter and the objection remains outstanding.

General note(s) on Division of a Trade Mark application

• Division of a trade mark application may be made at any time before registration. Once a trade mark is registered, it cannot be divided.

• A request for division would not be applicable to divide out the objected series mark(s) in bid to overcome a series mark objection.

• The goods and/or services requested to be divided out must still fall within the scope of the goods and/or services claimed in the parent mark.

Withdraw your Trade Mark application

Form CM9 should be filed with IPOS to withdraw a trade mark application.

After the withdrawal of a trade mark application, the mark and/or class status(es) will be updated as “Withdrawn”. A mark or class that has been withdrawn cannot be requested for continued processing, reinstatement or restoration.

File or amend regulations governing the use of a Collective Mark or Certification Mark

A collective mark serves as a badge of origin to distinguish goods or services of members of a particular association from those who are not members of the association. Meanwhile, a certification mark serves as a badge of quality, which is not used by the proprietor of the mark, but by his authorized users, as a guarantee to the relevant public that the goods or services have been certified to possess a particular characteristic or contain certain qualities.

Applicants seeking registration of a collective mark or certification mark must file a copy of the regulations governing the use of the collective mark or certification mark with IPOS within 9 months after the date of application of the collective mark or certification mark.

Form TM10 should be submitted for the filing or amendment of regulations governing the use of a collective mark or certification mark.

For more information on content requirements of the regulations, please refer to the Trade Marks Work Manual Chapters on Collective Marks and Certification Marks.