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Amendments to Trademark Laws

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Nov 18, 2021 (Newsletter Issue 16/21)
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Amendments to Trade Marks Rules Effective

On September 10, 2021, the Intellectual Property Office of Singapore (IPOS) published the Circular No. 5/2021 to introduce the Amendments to Subsidiary Legislation and Electronic Filing and Service of Documents.

IPOS informs that amendments have been made to the Trade Marks Rules (TM Rules) and Trade Marks (International Registration) Rules (TM(IR) Rules) in order to enhance dispute resolution processes, and to streamline trademarks operational processes. These amendments take effect on October 1, 2021.

Key amendments are provided below:
- Registrar may shorten evidential deadlines:
The Registrar may shorten evidential deadlines after giving parties an opportunity to be heard under the new Rule 31(1A) of the TM Rules.
- Registrar may consolidate proceedings on own accord:
The Registrar may consolidate proceedings on own accord after giving parties an opportunity to be heard under the new Rule 81C of the TM Rules.
- Removal of form and fee for Registrar's Certificate of Taxation:
The Registrar is allowed to issue a Certificate of Taxation without the need for the party to file Form HC2 and pay the relevant fee under the amended Rule 76 of the Trade Marks Rules.
- Removal of mandatory provision of translation and/or transliteration:
Rule 20 of the TM Rules is amended to remove the mandatory requirement to provide a translation and/or transliteration for foreign characters in a trademark. However, the Registrar may still require a translation and/or transliteration to be provided, such as in cases where the foreign characters cannot be identified. This amendment follows from the Registry’s easing of translation and/or transliteration requirements, which was highlighted in Trade Marks Circular No. 04 of 2019.
- Clarification of period that a holder of an International Registration designating Singapore is not entitled to damages, account of profits or statutory damages:
Rule 8(5) of the TM(IR) Rules is amended to clarify the period where a person is not entitled to damages, an account of profits or statutory damages in respect of any infringement of the International Registration designating Singapore (IR) when a person becomes the holder of an IR (or protected IR) by virtue of a notifiable transaction made under that Rule.

For further information, please check the full list of amendments made to the TM Rules and TM(IR) Rules here