Legal Procedures and Administrative Requests

File a Statutory Declaration

A statutory declaration may be required:

• To file evidence of distinctiveness acquired through use.

  • Refer to our Trade Marks Work Manual Chapter on Evidence of Distinctiveness Acquired Through Use for more information.

• To file evidence to show honest concurrent use of your trade mark

  • Refer to our Trade Marks Work Manual Chapter on Relative Grounds for Refusal of Registration for more information.

A statutory declaration is a declaration sworn before a Commissioner for Oaths or a Notary Public. You may arrange an appointment with our Commissioner of Oaths before submission of your statutory declaration to IPOS*.

For guidance on how a statutory declaration should be presented, please refer to our Sample Statutory Declaration to File Evidence of Use.

File a Letter of Consent

A letter of consent may be required:

• To overcome a citation by obtaining consent from the cited mark applicant/proprietor to the registration and use of the mark.

  • Refer to our Trade Marks Work Manual Chapter on Relative Grounds for Refusal of Registration for more information.

• To overcome an objection raised by obtaining consent to the registration and use of the mark from (i) a famous personality or his/her legal representative or (ii) the owner or developer of a famous building.

  • Refer to our Trade Marks Work Manual Chapter on Names and Representation of Famous People, Buildings, etc. for more information.

• To overcome an objection raised by obtaining consent to the registration and use of the mark from the relevant authorities.

  • Refer to our Trade Marks Work Manual Chapter on Other Grounds for Refusal of Registration for more information.

For guidance on how a letter of consent should be presented, please refer to the Sample Letter of Consent.

Request for extension of time to respond to IPOS

Form CM5 should be filed with IPOS to request for extension of time in relation to a deficiency/objection letter.

General Note(s) on Extension of Time

• Requests for extension of time should be filed by the deadline to respond to IPOS.

• The third and subsequent requests for extension of time must be accompanied by reason(s) and are subject to the Registry’s approval.

• If the same reason is repeatedly used to request for extension of time, supporting documents may be required to justify the reason provided.

• Please note that a request for extension of time to renew or restore a trade mark registration is not allowed under Rule 77(6)(e) and (f) of the Trade Marks Rules.

Request for continued processing of application

When an applicant fails to respond to IPOS’ examination report within the stipulated deadline, the status of the TM4 application or the objected goods/services (as the case may be) will be regarded as “Treated as Withdrawn (Continued Processing Possible)”.

When this happens, the applicant has another two months to request via Form CM13 for the continued processing of the TM4 application or the objected goods/services (as the case may be). The request for continued processing must be accompanied by a response to IPOS’ examination report.

What happens if no request for continued processing is filed within time:

1. If the application is filed before 26 May 2022, it will become treated as withdrawn.

2. If the application is filed on or after 26 May 2022 AND

   1. If all of the claimed goods/services in the application are being objected, the entire application will become treated as withdrawn and can no longer proceed to registration.

   2. If some of the claimed goods/services in the application are being objected, only the objected goods/services will be treated as withdrawn and can no longer proceed to registration. The remaining non-objectionable goods/services in the application will proceed to the next processing stage.

Note: For application forms whose statuses are regarded as “Treated as Withdrawn (Reinstatable)” before 26 May 2022, they can be reinstated via Form CM13 within a period of six months. The request for reinstatement must be accompanied by a response to the objection/deficiency letter issued under the relevant application form.