Singapore introduces new registration rules
The Trademarks (Amendment) Rules 2003 came into force at the end of last year. The new rules impose new restrictions on the following aspects of registration:
- Applicants for a trademark in colour are now requested to file five coloured artwork copies of the mark, even where there is no colour claim or colour limitation. Any amendment of a trademark filed in colour also has to be accompanied by five artwork copies in colour.
- In addition to the translation and/or transliteration of each word requested for marks using non-Latin characters or in a language other than English, a translation of the mark taken as a whole must also be filed.
- Third parties notified of an extension of time have two weeks to either consent to or refuse that extension. Upon the expiry of that deadline, the registrar may grant the extension without having to conduct a hearing.
However, the rules have generally been simplified:
- It is no longer prohibited to register a trademark that consists of, or contains, the words 'patent', 'patented', 'registered', 'registered design', 'registered trademark' or 'copyright', among others, or any abbreviation or foreign equivalent of these words.
- There is no longer a requirement to file a statutory declaration with an application to restore a trademark registration that has been removed from the register when the expiry date has lapsed. An application to restore shall instead be accompanied by a statement of the reasons for the failure to renew the registration on time. The application to renew shall be filed together with the application to restore the trademark registration.
- It is also possible to file an amendment to a trademark application electronically.
- It is possible to file an application to assign a trademark electronically. However, it is not clear from the amended rules whether the filing of the assignment documents is necessary, as the rules only provide that in the case of electronic filing, the application "shall be validated by such means as the registrar considers fit". In previous practice, assignment documents were not normally required, unless there was some irregularity or discrepancy drawn to the notice of the registrar.
Lastly, the Third Schedule of the Trademarks Rules, which governs the classification of goods and services for trademark applications in Singapore, has been amended in an attempt to harmonize the Singapore classification with that used by the UK Patent Office. The only change that does not appear to follow the UK Classification is the substitution of "fruit sauces" for "compotes" in Class 29 ('compote' being the term used in the Nice Classification).
Peter Lo, Shook Lin & Bok, Singapore
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