SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation A third party has two months upon publication of a trade mark application to oppose the registration of the mark. A one-time extension of two months may be sought by filing a request with the Registry. There is no cooling-off period for parties to reach an amicable resolution. There is no limitation period for filing trade mark rev - ocation actions. The earliest possible date to seek revocation for non-use is five years after the date of completion of the registration procedure. In contrast, an application for invalidity relying on an earlier mark cannot be brought if the earlier proprietor has acquiesced in the knowledge of use of the later mark for a continuous five years. An invalidation action relying on an earlier geographical indication for a wine or spirit or a well-known mark cannot be filed after five years from the date of completion of the later mark’s registration procedure. These limitations, however, do not apply where the later mark was filed in bad faith. 5.2 Legal Grounds for Filing an Opposition or Cancellation The absolute and relative grounds for refusal of regis - tration are grounds upon which an opponent may file an opposition (see 4.6 Consideration of Prior Rights in Registration and 4.10 Refusal of Registration ). A trade mark registration may be revoked on grounds of non-use, genericism as a result of the proprietor’s acts or inactivity, or deception as a result thereof. The non-use period for the first ground is five years from the date of completion of the registration procedure. The grounds for invalidation include the absolute and relative grounds for refusal of registration (see again 4.6 Consideration of Prior Rights in Registration and 4.10 Refusal of Registration ). Additionally, invalida - tion may be ordered where there was fraud in the registration or the registration was obtained by mis - representation.
5.3 Ability to File an Opposition or Revocation/Cancellation
Any person may file an opposition. The opponent does not have to be represented by an agent. How - ever, proceedings can be complex. Thus, parties to proceedings should consider engaging a qualified agent or lawyer. Any person may file a trade mark revocation or invali - dation action. 5.4 Opposition or Revocation/Cancellation Procedure An applicant wishing to contest an opposition must file a counter-statement within two months after the date that it receives a copy of the notice of opposition. This deadline is extendible by two months. After the close of pleadings, the parties will file evi - dence. There are generally three rounds: • the opponent’s evidence in support of the opposi - tion; • the applicant’s evidence in support of the applica - tion; and • the opponent’s evidence in reply. The Registrar may grant longer evidentiary timelines where parties are negotiating or if there are pending court proceedings that may affect the outcome of the opposition. After the evidence has been filed, the Registrar may convene a pre-hearing review to give directions for the disposal of the proceedings. They will set down the matter for hearing, and parties have one month before the hearing date to submit their written submissions. After the hearing, the Registrar will issue a decision as soon as is practicable. Applications for revocation or invalidity may be made to the Registrar or in the General Division of the High Court. Exceptions apply such that: • the action must be brought in Court where pro - ceedings concerning the trade mark in question are pending in the Court; or
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