TM Invalidation Revocation

Key Legislative Provisions:

  • Section 22 and 23 of the Trade Marks Act
  • Rules 57 - 60 and 72 - 76 of the Trade Mark Rules


1. A person may apply to revoke or invalidate a registered trade mark by filing an application for revocation or declaration of invalidity. The procedure is as follows:

  1. File with us Form TM28 and a statement of grounds (together with payment of S$357 x number of classes for which the revocation or declaration of invalidity is sought).
  2. Send to the proprietor a copy of the same Form TM28 and statement of grounds at the same time that they are filed with us.

2. Within 2 months after the date of receipt of the application for revocation or declaration of invalidity from the applicant, if the proprietor wishes to maintain the registration of the trade mark, he must file a counter-statement in Form HC6 that includes the grounds on which he relies as supporting his registration; and the facts alleged in the application which he admits, if any. The procedure is as follows:

  1. File with us Form HC6 (together with payment of S$360 x number of classes for which the revocation or declaration of invalidity is sought). In the case of an application for revocation based on grounds of non-use, a statutory declaration setting out evidence of the use by the proprietor must also be filed.
  2. Send to the applicant a copy of the same Form HC6 (and evidence of use, where applicable) at the same time that it is filed with us.

If these steps are not complied with, the application for revocation or declaration of invalidity shall be granted.

2a. The proprietor may request for an extension of time to file the counter-statement by filing Form HC3. The procedure is as follows:

  1. Within 2 months after the date of receipt of the application for revocation or declaration of invalidity from the applicant, file with us Form HC3.
  2. Send to the applicant, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.

3. The revocation or invalidation proceedings are suspended from the date that the counter-statement is filed. Parties will be encouraged to engage each other to explore dispute resolution options. Parties will receive the following documents:

  1. A Notification to Registrar form to be completed by each party and returned to us, copying the other party, within 1 month. The form includes a Request for WIPO Mediation form for parties' use if they wish to submit to mediation by the WIPO Arbitration and Mediation Center.
  2. An infosheet and Frequently Asked Questions on the Mediation Promotion Scheme by IPOS.

Parties may request for an extension of time to return the Notification to Registrar form to us by filing Form HC3. The procedure is as follows:

  1. Within 1 month after the date of our letter enclosing the Notification to Registrar form, file with us Form HC3 (together with payment of S$100).
  2. Send to the other party, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.

4. Click here to learn more about the mediation option for IPOS proceedings and the available funding under the Mediation Promotion Scheme. Once parties let us know of their intention to mediate, we will generally suspend the IPOS proceedings for mediation to take its course. The parties may set aside 30, 60 or 90 days for mediation. This period may be extended upon further request and justification by parties.

Notwithstanding the specific incorporation of the mediation option to the procedure after the counter-statement is filed, parties may request for mediation at any time before we decide on the outcome of the case.

4a. Within 2 weeks after the end of the mediation, parties should inform us in writing of the outcome of the mediation. If there are any remaining issues in the dispute to be heard by IPOS, we will give further directions on the conduct of the case in writing or in a Case Management Conference.

5. We will resume conduct of the proceedings. We will specify deadlines for the filing of evidence and raise any issues with the application for revocation or declaration of invalidity and counter-statement, in writing or in a Case Management Conference.

6. The applicant for declaration of invalidity must file a statutory declaration setting out the evidence he wishes to adduce in support of the application. This is optional for the applicant for revocation based on grounds of non-use. The procedure is as follows:

Counter-statement filed on or after 
31 January 2017

Counter-statement filed before 
31 January 2017

  1. Within the specified evidential deadline, file with us a statutory declaration in the Evidence by Initiator Form.
  2. Send to the proprietor a copy of the same statutory declaration at the same time that it is filed with us.
  1. Within 3 months after the date of issuance of evidential timelines, file with us a statutory declaration in the Evidence by Initiator Form.
  2. Send to the proprietor a copy of the same statutory declaration at the same time that it is filed with us.

If these steps are not complied with, the applicant for declaration of invalidity is treated as having withdrawn the application.

6a. The applicant may request for an extension of time to file the statutory declaration by filing Form HC3. The procedure is as follows:

Counter-statement filed on or after 
31 January 2017

Counter-statement filed before 
31 January 2017

  1. Within the specified evidential deadline, file with us Form HC3 (together with payment of S$100 x number of classes for which the revocation or declaration of invalidity is sought).
  2. Send to the proprietor, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.
  1. Send a notice to the proprietor, and each person likely to be affected by the extension stating the intention to request for an extension of time, the amount of time requested for, and reason for the extension. In the same notice, seek the consent of the proprietor (and other person, if any) to the extension.
  2. Within 3 months after the date of issuance of evidential timelines, file with us Form HC3 (together with payment of S$100 x number of classes for which the revocation or declaration of invalidity is sought, if it is not the first request). Attach a copy of the notice sent to the proprietor (and other person, if any), and the consent in writing, if given.

 

7. After receipt of the applicant’s statutory declaration, the proprietor may file a statutory declaration setting out the evidence he wishes to adduce in support of his case. The procedure is as follows:

Counter-statement filed on or after 
31 January 2017

Counter-statement filed before 
31 January 2017

  1. Within the specified evidential deadline, file with us a statutory declaration in the Evidence by Respondent Form.
  2. Send to the applicant a copy of the same statutory declaration at the same time that it is filed with us.
  1. Within 3 months after the date of receipt of the applicant’s statutory declaration, file with us a statutory declaration in the Evidence by Respondent Form. If the applicant for revocation based on grounds of non-use did not file any statutory declaration, we will notify the proprietor of this and the proprietor may file a statutory declaration within 2 months after the date of our notification.
  2. Send to the applicant a copy of the same statutory declaration at the same time that it is filed with us.

If these steps are not complied with, the proprietor is deemed to have admitted to the facts alleged by the applicant in his application for declaration of invalidity. We will direct parties to inform us in writing how they intend to proceed.

7a. The proprietor may request for an extension of time to file the statutory declaration by filing Form HC3. The procedure is as follows:

Counter-statement filed on or after 
31 January 2017

Counter-statement filed before 
31 January 2017

  1. Within the specified evidential deadline, file with us Form HC3 (together with payment of S$100 x number of classes for which the revocation or declaration of invalidity is sought).
  2. Send to the applicant, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.
  1. Send a notice to the applicant, and each person likely to be affected by the extension stating the intention to request for an extension of time, the amount of time requested for, and reason for the extension. In the same notice, seek the consent of the applicant (and other person, if any) to the extension.
  2. Within 3 months after the date of receipt of the applicant’s statutory declaration, file with us Form HC3 (together with payment of S$100 x number of classes for which the revocation or declaration of invalidity is sought, if it is not the first request). Attach a copy of the notice sent to the applicant (and other person, if any), and the consent in writing, if given.


8.
Optionally, after receipt of the proprietor’s statutory declaration, the applicant may file a statutory declaration setting out the applicant’s evidence in reply to the proprietor’s statutory declaration. The procedure is as follows:

Counter-statement filed on or after 
31 January 2017

Counter-statement filed before 
31 January 2017

  1. Within the specified evidential deadline, file with us a statutory declaration in the Evidence-In-Reply by Initiator Form.
  2. Send to the proprietor a copy of the same statutory declaration at the same time that it is filed with us.
  1. Within 3 months after the date of receipt of the proprietor’s statutory declaration, file with us a statutory declaration in the Evidence-In-Reply by Initiator Form.
  2. Send to the proprietor a copy of the same statutory declaration at the same time that it is filed with us.

After this stage no further evidence may be filed unless we specifically allow.

8a. The applicant may request for an extension of time to file the statutory declaration in reply by filing Form HC3. The procedure is as follows:

Counter-statement filed on or after 
31 January 2017

Counter-statement filed before 
31 January 2017

  1. Within the specified evidential deadline, file with us Form HC3 (together with payment of S$100 x number of classes for which the revocation or declaration of invalidity is sought).
  2. Send to the proprietor, and each person likely to be affected by the extension, a copy of the same Form HC3 at the same time that it is filed with us.
  1. Send a notice to the proprietor, and each person likely to be affected by the extension stating the intention to request for an extension of time, the amount of time requested for, and reason for the extension. In the same notice, seek the consent of the proprietor (and other person, if any) to the extension.
  2. Within 3 months after the date of receipt of the proprietor’s statutory declaration, file with us Form HC3 (together with payment of S$100 x number of classes for which the revocation or declaration of invalidity is sought, if it is not the first request). Attach a copy of the notice sent to the proprietor (and other person, if any), and the consent in writing, if given.

 

9. At any time after the completion of the filing of evidence by the parties, we may direct the parties to attend a pre-hearing review. We may consider any matter including the possibility of settlement of any or all of the issues in the proceedings and may require the parties to furnish us information.

10. We will notify the parties of a date on which we will hear arguments on the case. The parties shall file with us their written submissions and bundles of authorities in the Written Submissions & Bundle of Authorities Form at least 1 month before the date of hearing and shall at the same time exchange with one another their respective written submissions and bundles of authorities. Any party who intends to appear at the hearing shall file with us Form HC1 (together with payment of S$715 x number of classes for which the revocation or declaration of invalidity is sought) before the hearing.

11. After the hearing, we will inform the parties of our grounds of decision as soon as practicable.

12. The parties can appeal our decision within 28 days after the date of our decision. An appeal should be filed at the High Court.

13. After we issue a decision, costs will usually be awarded to the winning party. The parties should try to agree on the sum for these costs between themselves. If the parties cannot agree on the sum to be paid to the winning party, the winning party can apply for a taxation hearing. This is done by filing with us a bill of costs in the Bill of Cost Form within 1 month from the date of our decision. Send to the other party a copy of the same bill of costs at the same that it is filed with us.

The paying party can object to any of the itemised costs by marking the bill of costs with “Agree” or “Disagree” against each itemised cost. This is done by filing with us the Marked Bill of Cost Form within 1 month after receipt of the bill of costs. Send to the other party a copy of the same marked bill of costs at the same time that it is filed with us.

We will then hold a taxation hearing and award costs according to the Scale of Costs in the Fourth Schedule of the Trade Marks Rules, which sets out the range of costs a party may be awarded for each particularised item. It should be noted that the costs awarded are not intended to compensate parties for their expense.

After taxation, the party awarded costs can file Form HC2 (together with payment of S$80 x number of classes for which the revocation or declaration of invalidity is sought) to obtain a taxation certificate which can be enforced in court.